WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Erica Ehm Communications, Ltd. v. Perfect Privacy, LLC / Spyro Vassiliadis
Case No. D2014-2073
1. The Parties
The Complainant is Erica Ehm Communications, Ltd. of Toronto, Canada, represented by Bernstein IP, United States of America (“U.S.”).
The Respondent is Perfect Privacy, LLC of Jacksonville, Florida, U.S. / Spyro Vassiliadis of Montreal, Canada, represented by ROBIC, LLP, Canada.
2. The Domain Names and Registrar
The disputed domain names <yummymummyclothing.com>, <yummymummyclothing.info>, <yummymummyclub.com> and <yummymummyclubusa.com> are registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2014. On November 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 26, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 29, 2014. The Response was filed with the Center on December 29, 2014. The Respondent filed an amended Response on December 30, 2014. The Complainant submitted a supplemental filing on December 31, 2014.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on January 16, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. On January 28, 2015, the Panel issued a Procedural Order informing the parties that it would not consider the Complainant’s supplemental filing.
4. Factual Background
The Complainant’s principal, Erica Ehm, is a well-known Canadian entertainment figure, beginning in the mid-1980’s when she appeared as the first female video jockey on MuchMusic, the Canadian equivalent of MTV. Over the course of her career, Ms. Ehm has hosted national Canadian television shows, including “Nestle Baby and You”, and authored several children’s books. In 2005, the Complainant began using the trademark YUMMY MUMMY in association with a television show to educate mothers to find a balance in their lives while raising their children. Since 2005, the Complainant has expanded the use of the trademark YUMMY MUMMY in association with a club and an online forum to provide articles, reviews, guidance and advice to Canadian mothers about parenting, pregnancy, fashion, family, community, lifestyle, health, and politics. Since 2006, the Complainant has achieved a significant reputation through the operation of a website at “www.yummymummyclub.ca”.
In June 2008, the Complainant acquired by way of assignment the rights to a registered trademark YUMMY MUMMY in Canada, registration no. TMA 561,668.
Registered Canadian rights to the trademark YUMMY MUMMY were originally held by a business called Yummy Mummy Ltd. That trademark was registered on May 9, 2002, based on use since February 22, 2000, in association with maternity clothing and wholesale and retail store services of maternity clothing. The original owner of the YUMMY MUMMY trademark registration made and sold maternity clothing in 24 retail outlets across Canada. On August 17, 2002, the Globe and Mail, a well-known Canadian newspaper, ran an article profiling the Complainant’s predecessor-in-title’s trademark YUMMY MUMMY, its maternity clothing and business.
In September 2012, the Complainant also obtained a Canadian trademark registration for YUMMY MUMMY CLUB & Design (registration no. TMA 832,398).
On August 16, 2002, the Respondent registered the disputed domain name <yummymummyclothing.com>. On August 23, 2002, the Respondent registered the business name Yummy Mummy Clothing in Poughkeepsie, New York, USA. On September 11, 2003, the Respondent registered the disputed domain name <yummymummyclub.com>. On September 21, 2012 the Respondent registered the disputed domain name <yummymummyclubusa.com>. On November 26, 2014, the Respondent registered the disputed domain name <yummymummyclothing.info>. The Complainant has submitted screenshots evidencing that two of the disputed domain names, <yummymummyclothing.com> and <yummymummyclubusa.com> at some point resolved to pay-per-click websites featuring links about pregnancy and parenting, and states that one of the disputed domain names, <yummymummyclub.com>, was passively held at the time of filing.
5. Parties’ Contentions
The Complainant submits that it owns a trademark registration for the trademark YUMMY MUMMY, namely Canadian Trademark Registration No. TMA 561,668, and YUMMY MUMMY CLUB & Design, Canadian Trademark Registration No. TMA 832,398.
The Complainant further contends that the disputed domain names <yummymummyclub.com>, <yummymummyclothing.com>, <yummymummyclubusa.com> and <yummymummyclothing.info> are confusingly similar to the Complainant’s trademarks except for the addition of the descriptive words “club”, “club usa”, and “clothing”. The Complainant submits that the addition of these descriptive words do not serve to distinguish the disputed domain names from the Complainant’s registered trademarks.
Accordingly, the Complainant contends that the disputed domain names are confusingly similar to the Complainant’s registered trademarks.
Rights and Legitimate interests
The Complainant submits that the Respondent does not have any rights or legitimate interests in the disputed domain names. The Respondent is not commonly known by the name “Yummy Mummy” and has never been authorized or licensed by the Complainant. The Complainant further contends that the Respondent has not used the disputed domain names in a bona fide offering of goods or services. The Complainant contends that it is unrealistic to believe that the Respondent was unaware of the Complainant’s reputation in the YUMMY MUMMY trademark, because the Respondent lives in Montreal, Canada, and would have been aware of the Complainant’s predecessor-in-title’s businesses at the time of the earliest registrations.
Registered and Used in Bad Faith
The Complainant submits that the Respondent has registered and is using the disputed domain names in bad faith because (i) the Respondent must have been aware of the Complainant’s predecessor-in-title’s trademark rights in YUMMY MUMMY when the Respondent registered the confusingly similar disputed domain names; and (ii) the Respondent registered and is using confusingly similar domain names to interfere with the Complainant’s business.
The Panel notes that the Complainant believes the Respondent only registered the disputed domain names <yummymummyclothing.com> and <yummymummyclub.com> on July 25, 2005 and February 3, 2007, respectively.
The Respondent submits that he was not aware of the Complainant or the Complainant’s rights in the trademark YUMMY MUMMY when the disputed domain name <yummymummyclothing.com> was registered on August 16, 2002, and when the disputed domain name <yummymummyclub.com> was registered on September 11, 2003. These dates are significantly earlier than the dates alleged by the Complainant. He claims that he intended to operate an adult clothing business in the U.S. using the disputed domain names, offering as proof a notarized business name registration from New York, U.S., dated August 23, 2002, stating that the Respondent was “conducting or transacting business under the name or designation of Yummy Mummy Clothing” as of that date. The Respondent submits that personal and financial reasons prevented the Respondent from actually starting the business.
The Respondent submits that he had a legitimate right and interest in the disputed domain names, supported by the business plan he had developed.
The Respondent further submits that he registered the additional two disputed domain names in 2012 and 2014, because they were related domain names which were consistent with his existing business plans.
The Respondent submits that he has never offered the disputed domain names for sale to the Complainant, but has simply refused the Complainant’s offer to purchase the disputed domain names when presented with its proposals, in light of the Respondent’s own plans to eventually enter the “adult industry market” selling “apparel and lingerie” via the disputed domain names. The Respondent has never attempted to sell the disputed domain names for an amount higher than the Respondent’s expenses. The Respondent states that he only became aware of the Complainant “[on] or around February 16, 2011”, when he received the Complainant’s first offer for the disputed domain name <yummymummyclub.com>.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain names are identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant does have registered trademark rights in the mark YUMMY MUMMY by virtue of its Canadian Trademark Registration No. TMA 561,668, dating back to May 9, 2002 in association with maternity clothing and retail store services for the sale of maternity clothing. The Complainant also holds registered rights to YUMMY MUMMY CLUB & Design (Canadian Trademark Registration No. TMA 832,398).
The Panel further finds that the disputed domain names <yummymummyclothing.com>, <yummymummyclub.com>, <yummymummyclubusa.com> and <yummymummyclothing.info> are confusingly similar to the Complainant’s registered trademarks YUMMY MUMMY and YUMMY MUMMY CLUB & Design. The addition of the descriptive words “clothing”, “club” and “club usa” do not serve to distinguish the disputed domain names from the Complainant’s registered trademarks.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
In terms of chronology, it is clear that the Complainant does have rights in the registered trademark for YUMMY MUMMY (acquired by way of assignment in June, 2008) that date back to May 9, 2002, with a date of first use of February 22, 2000. These registered trademark rights pre-date the Respondent’s registration of his first domain name <yummymummyclothing.com>, which was registered on August 16, 2002.
However, the Respondent now alleges that he has rights and legitimate interests to the disputed domain names because:
(1) he had no knowledge of the Complainant or its predecessor’s rights when he registered the first two disputed domain names in 2002 and 2003; and
(2) he had independently developed a business plan in connection with the sales of adult clothing (lingerie, etc.), at the time he registered the earliest of the disputed domain names.
By way of evidence, the Respondent has filed submissions to the effect that he had no such awareness at the material time, and he has put forward a single document in the form of a business name registration issued by the State of New York on August 23, 2002.
The Panel acknowledges that the summary procedures mandated by the Policy do not permit an indepth analysis of disputed evidence. In this case, if it were litigated in a full adversarial process, it is likely that cross-examination of the Respondent would reveal significant additional information. In this proceeding the Panel does not have the benefit of this sort of challenge to submissions and documents advanced by the parties. In the absence of indicators to the contrary, documentary evidence must generally be assessed at face value. Here, the Respondent has proffered a business name registration which shows that he certified as of August 23, 2002, that he was “conducting or transacting business under the name or designation of Yummy Mummy Clothing” in the city of Poughkeepsie, New York. The document appears to have been properly notarized at the time of execution. Consistent with this business registration, the Respondent had registered the domain name <yummymummyclothing.com> on August 16, 2002, seven days earlier. He then registered <yummymummyclub.com> approximately one year later on September 11, 2003. At the time of this second registration, the Complainant’s own evidence shows that Ms. Ehm’s Yummy Mummy Club concept had not yet been developed.
It appears that Ms. Ehm first used the YUMMY MUMMY CLUB mark no earlier than December, 2005, when her Yummy Mummy TV Show was first broadcast. That was more than 2 years after the Respondent’s registration of the two disputed domain names discussed in the previous paragraph.
In these circumstances, in the context of these summary proceedings, the Respondent has put forward sufficient evidence to prevent the Complainant from establishing the absence of rights or legitimate interests. The Respondent’s registration of the business name “Yummy Mummy Clothing” roughly contemporaneously with his registration of the first of the “Yummy Mummy” disputed domain names gives rise to a colorable claim that, before notice of this dispute, the Respondent had made demonstrable preparations to use the disputed domain names for a bona fide offering of goods or services. Paragraph 4(c)(i) of the Policy. Accordingly, the Panel finds that the Complainant has not satisfied the requirement under paragraph 4(a)(ii) of the Policy.
The Panel wishes to make it clear that this decision is not intended to serve as a comprehensive analysis of the facts at issue, since the evidentiary record is not fully developed, and the Policy does not permit the testing of evidence in the manner typically encountered in a full adversarial procedure.
C. Registered and Used in Bad Faith
In view of the findings with respect to rights or legitimate interests, the Panel need not make a finding with respect to bad faith registration and use.
Reverse Domain Name Hijacking
The Respondent has alleged that the Complainant has engaged in reverse domain name hijacking, in that it has used “the UDRP in bad faith to deprive Respondent of his domain names”. In all the circumstances, and in the absence of a full evidentiary record, the Panel is not satisfied that this Complaint was brought in bad faith.
For the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Date: February 9, 2015