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UDRP Complainant with Nothing to Complain About

A UDRP complainant has to have something to complain about that states an actionable claim. Unhappiness does not state a claim. The parties in Elizabeth Blair & Jennifer Miner & Kara Williams v. Shannon Lane, FA0909001285345 (Nat. Arb. Forum November 13, 2009) are a team of women who style themselves as the “traveling mamas.” They jointly and severally registered TRAVELING MAMAS as a service mark on the Supplemental Register for the purpose of “[p]roviding an on-line computer database in the field of travel information services; [p]roviding information, news and commentary in the field of travel; [p]roviding links to web sites of others featuring travel; [p]roviding reviews of travel service providers; Travel information.”

Registering a domain name in one’s own name incorporating the service mark – in this case <travelingmamas.com> – and excluding one’s “partners” in its ownership may be regarded as an act of disloyalty toward one’s friends but is not a basis for removing the domain name from the respondent. In this case, the Respondent has a divisible right in the service mark equal to her “partners.” In arguing for a “constructive trust” the Complainants produced no evidence of, for example, any agreement in writing that the registration of a domain name identical or confusingly similar to the service mark was the property of their joint venture. The Panel held that

Respondent participates in these scant rights, as a co-registrant of the USPO Registration, as indicated by Exhibit B to Complainant’s Complaint. However, as a joint owner of the mark, Respondent cannot infringe upon any co-owner’s rights in the service mark, merely by exercising her own right of use.

Registration on the Supplemental Register “carries little, if any legal weight under federal law” and reciting a first use in commerce earlier than the registration of the domain name “is not probative of actual use.” The Complainants in Traveling Mamas acting in their corporate capacity – they had formed a Colorado limited liability company – have the burden of proving that the mark was distinctive prior to the registration of the domain name. However, in this case they provided no evidence “of accumulated advertising or consumer surveys, such as would constitute evidence of the distinctive character of the mark required to prove the secondary meaning necessary to establish common law usage.” The Respondent’s evidence included the text of an e-mail in which she invited the others to participate: “I’m going to start a blog: Travel Writing Mamas…If you guys are interested, I can set you up where you can make posts.”

The case raises a threshold issue, Whether or not the Panel has jurisdiction over a dispute concerning ownership of a domain name incorporating a service mark jointly owned by the parties. It determined that it had because “the Complaint has alleged bad faith registration and use of a domain name, and the parties have provided sufficient evidence for the Panel to make a determination, in these regards.” The frequently applied alternative is for the Panel to take the position that the matter raises triable issues – here, the equitable claim of “constructive trust” – that are ordinarily outside the scope of the Policy. The Complainants’ grievance is more a question of alleged abusive conduct by a co-owner than abusive registration of a domain name. Evidently, the “Traveling Mamas” had no agreement addressing registration of a domain name even though the description for the service mark – “[p]roviding an on-line computer database” etc. – obviously anticipated that they would have a web based presence. Unhappiness, yes, but abusive registration no.

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