WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cheryl Sousan d/b/a Tidy Mom v. Davonne Parks, Nathan Parks, High Performance Computer Services
Case No. D2017-0216
1. The Parties
The Complainant is Cheryl Sousan d/b/a Tidy Mom of Gray Summit, Mississippi, United States of America, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America ("United States").
The Respondent is Davonne Parks, Nathan Parks, High Performance Computer Services of Ashland, Kentucky, United States, self-represented.
2. The Domain Name and Registrar
The disputed domain names <thetidymom.com>, <thetidymom.net>, and <thetidymom.org> are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 3, 2017. On February 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 6, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 1, 2017. The Response was filed with the Center on March 1, 2017.
The Complainant submitted a Supplemental Filing on March 3, 2017. The Respondent submitted a Supplemental Filing on March 5, 2017.
The Center appointed Evan D. Brown as the sole panelist in this matter on March 20, 2017. 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.
4. Factual Background
The Complainant is the founder and publisher of a website known as "Tidy Mom", which she created in 2008, and for which she registered the domain name <tidymom.net> in December 2009. The website is a lifestyle website that uses easy-to-understand recipes, tutorials, beautiful photography and an inviting writing style to show Internet visitors how to, among other things, clean and organize their homes. The website is popular – it averages approximately 350,000 unique visitors per month. Additionally, the Complainant uses the Tidy Mom moniker to maintain several social media accounts with thousands of fans and followers. There are more than 19,000 email subscribers to the Complainant's content, and the website has been featured in the national media including in O, The Oprah Magazine; Real Simple magazine; and The Huffington Post. The Complainant owns U.S. Trademark Registration No. 5,021,647 for the trademark TIDY MOM for use in connection with "[p]roviding a website featuring blogs and non-downloadable publications in the nature of articles, photographs, tutorials, and videos in the field(s) of recipe development, recipes, cooking, baking, cocktails, ingredients, culinary travel, photography, home, gardening, party planning, decorating, travel, parenting, beauty, family, fashion, and lifestyle." The trademark registration shows the Complainant first used the TIDY MOM mark in interstate commerce at least as early as August 1, 2008.
The Respondent's website (found at the disputed domain name <thetidymom.com>, with the disputed domain names <thetidymom.net> and <thetidymom.org> automatically redirecting to the disputed domain name <thetidymom.com>) is (in the Respondent's words) "an inspirational website that encourages women to create room for life, love, laughter and warm memories by cultivating a haven-like atmosphere within their homes." After blogging on various topics at another domain name for a number of years, Davonne Parks (the apparent operator of the website, see discussion of "Identity of the Respondent" in Section 6.A. below) decided to focus more on homemaking articles. Wanting to use a simple, easy-to-type and easy-to-remember domain name, she searched for available domain names through the Registrar using various "organization" terms (i.e., terms relating to home organization). She selected the disputed domain name <thetidymom.com> and registered it on March 3, 2015. Although the Respondent claims that she "writes for enjoyment, not as a professional business," she provides links on her website to Amazon.com where users may purchase her e-books.
The Complainant attempted to resolve this matter amicably by contacting the Respondent about the disputed domain name <thetidymom.com> via a letter dated October 6, 2016. At that time, the Respondent had not yet registered the other two disputed domain names (<thetidymom.net> and <thetidymom.org>). The Respondent refused to comply with the request set forth in the Complainant's letter. Instead, on November 6, 2016, the Respondent registered the two additional disputed domain names <thetidymom.net> and <thetidymom.org> and began redirecting them to the website found at <thetidymom.com>.
5. Parties' Contentions
The Complainant contends that the disputed domain names are identical or confusingly similar to the Complainant's registered trademark TIDY MOM; that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
The Respondent disputes the Complainant's assertions under each element of the Policy. On the first element, she argues, in essence, that the words "tidy" and "mom" are common dictionary words and thus do not form a "legitimate trademark". And because the parties' websites are so different looking (and, according to the Respondent, have different kinds of content), there is no confusing similarity. On the second element, the Respondent's main arguments are that she has rights and legitimate interests because she was "unfamiliar" with the Complainant before registering the disputed domain names, and because the sites are so different – hers is an "inspirational" site, while the Complainant's site is a "lifestyle" site. As for the third element, namely, bad faith registration and use, the Respondent again makes much of her assertions that the parties' websites are different, and that she had never heard of the Complainant.
6. Discussion and Findings
A. Identity of the Respondent
As a preliminary matter, it should be noted that the name of the Respondent – both in the Complaint and in the WhoIs records – is Nathan Parks. But the Response was written from the perspective of Davonne Parks, and bears her electronic signature. Information on the Respondent's website suggests that Nathan Parks may be Davonne Parks' spouse. Ultimately this discrepancy does not matter. The Complainant did not object to this in her supplemental filing, nor would the outcome of the dispute be different if the Panel were to strictly analyze the situation by placing Nathan Parks or his business, High Performance Computer Services, in the position of the Respondent. Accordingly, for the sake of expediency and clarity, references to "the Respondent" herein should be read as references to Davonne Parks and vice-versa.
B. Supplemental Filings
The Complainant and the Respondent have both made supplemental submissions in this proceeding.
The UDRP Rules grant the panel sole discretion to request further statements and determine the admissibility of evidence, including for unsolicited filings. Panels have discretion whether to accept unsolicited supplemental filings, and may typically only allow such in exceptional circumstances when a party was not able to provide the information in the complaint or response, while bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality. See, e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.2.
Taking into account the Complainant's statements regarding the actions before the United States Patent and Trademark Office ("USPTO") subsequent to the filing of the Complaint, and the Respondent's subsequent submission, the Panel accepts the supplemental submissions from both Parties and proceeds to its substantive determination under the Policy.
C. Identical or Confusingly Similar
The Complainant has provided evidence of her U.S. Trademark Registration No. 5,021,647 for the trademark TIDY MOM. The registration certificate shows the mark is registered on the Principal Register of the United States Patent and Trademark Office, which means that the mark is distinctive, either inherently or through acquired distinctiveness. The mark was placed into actual use in interstate commerce (a fact sworn to by the Complainant's attorney in the trademark application process) at least as early as August 1, 2008. On the basis of this registration, the Panel is satisfied that the Complainant has rights in her TIDY MOM mark.
The Panel also finds that the disputed domain names are confusingly similar to the Complainant's TIDY MOM mark. The relevant comparison to be made is with the second-level portions of the disputed domain names only (i.e., "thetidymom"), as it is well-established that the Top-Level Domains (i.e., ".com", ".net" and ".org") may be disregarded for this purpose. See, e.g., WIPO Overview 2.0, paragraph. 1.2 ("[t]he applicable top-level suffix in the domain name (e.g., '.com') would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark").
Each of the disputed domain names contains the TIDY MOM trademark in its entirety, without the space, and with the addition of the word "the". Numerous panels have found that "the fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy." Oki Data Americas, Inc. v. Asdinc.com, WIPO Case No. D2001-0903. See also, e.g., Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249; Advanced Micro Devices, Inc. v. Piere Macena, WIPO Case No. D2005-0652; and RapidShare AG, Christian Schmid v. Private Registrations Aktien Gesellschaft Domain Admin, WIPO Case No. D2010-0591.
With respect to the fact that the Complainant's TIDY MOM trademark contains a space between the two words while the disputed domain names do not: spaces "cannot be reproduced in a domain name" and therefore are irrelevant for purposes of the Policy. Société Air France v. Indra Armansyah, WIPO Case No. D2016-2027. See also, e.g., EMI Records Limited v. Complete Axxcess, WIPO Case No. D2001-1230 ("the lack of a space between the words" in a disputed domain name is a "difference… incapable of differentiating the domain name in dispute from the Complainant's trade marks").
With respect to the addition of the word "the" to the disputed domain names: "The addition of the definitive article 'the' cannot be considered distinctive." Flybe Group PLC v. Robb Dobin, theflybe.com, WIPO Case No. D2011‑1537.
Finally, "the overall impression of the designation" of each of the disputed domain names is one of "being connected to the trademark of Complainant". L'OREAL v. Lewis Cheng, WIPO Case No. D2008-0437. See also SANOFI-AVENTIS v. Health Care Marketing Company, WIPO Case No. D2007-0475 (differences between the disputed domain name and the complainant's trademark are "not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of the Complainant"); and Bellsouth Intellectual Property Corporation v. Netsolutions Proxy Services, WIPO Case No. D2005-0169 (the addition of a word "does not change the overall impression of the designation").
Accordingly, each of the disputed domain names is confusingly similar to the Complainant's TIDY MOM trademark. The Complainant has met this first element of the UDRP.
D. Rights or Legitimate Interests
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names. The Panel credits the Complainant's assertions that it has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the TIDY MOM trademark in any manner. "Th[is] fact, on its own, can be sufficient to prove the second criterion [of the Policy]." Six Continents Hotels, Inc. v. IQ Management Corporation, WIPO Case No. D2004-0272.
Despite the Respondent's assertions to the contrary, and attempts to distinguish the websites of the parties, the Panel finds the two to be similar and overlapping to the extent that the Respondent cannot reasonably assert that her use of the disputed domain names for such content is a bona fide offering of goods or services under the Policy. Nor can she say that she is engaged in a legitimate noncommercial or fair use of the disputed domain names. Her sale of e-books eliminates any basis to say her site is noncommercial, and she does not assert – nor could she truthfully – that the use of the disputed domain names is a fair use.
Finally, whether the Panel considers the Respondent to be Nathan Parks or Davonne Parks (see Section 5.B. above), the Respondent cannot claim that it has been commonly known by the disputed domain names.
The Complainant has made a prima facie showing under this second element, and the Respondent's arguments and evidence do not overcome this showing. Accordingly, the Complainant has succeeded on this second element of the UDRP.
E. Registered and Used in Bad Faith
The Policy requires the Complainant to establish that the disputed domain names were registered and are being used in bad faith. The Complainant makes a number of arguments in support of bad faith use and registration, but the argument most persuasive to this Panel is that the Respondent knew or should have known about the existence of the Complainant's TIDY MOM mark prior to registration of the disputed domain names. By incorporating a well-known mark used for similar services (the distinction between "lifestyle" and "inspiration," in the Panel's mind in these circumstances, is not sufficient enough), the Respondent is able to unfairly attract Internet users to her website, where, in addition to providing a lot of free information, she sells e-books. This registration and use under the circumstances of this case violates the Policy.
The Panel is painfully aware, and gives due respect to the Respondent's strenuous assertions that she was previously "unfamiliar" with the Complainant. In a situation like this, where the parties are asserting contrary facts, the Panel is called upon to weigh the evidence each side has put forward.
The general standard of proof under the UDRP is "on balance" - often expressed as the "balance of probabilities" or "preponderance of the evidence" standard. Under this standard, an asserting party would typically need to establish that it is more likely than not that the claimed fact is true. WIPO Overview 2.0, paragraph 1.2.
In this situation, the Panel finds it difficult to believe that the Respondent did not know of the Complainant and her services prior to the registration and use of the disputed domain names. Davonne Parks is clearly a sophisticated and savvy publisher of web content, utilizing several modes of online communication – blogging, video, social media, email. And Nathan Parks owns a computer service company and regularly purchases domain names under his company's GoDaddy account for his clients as part of the services provided. The Respondent relies heavily on the results of web searches using Google to support her arguments. On balance, the Panel respectfully finds the Respondent's assertions of unfamiliarity improbable.
The finding is much less difficult concerning the disputed domain names <thetidymom.org> and <thetidymom.net>. Because the Respondent registered these domain names after receiving the initial correspondence from counsel for the Complainant, there is absolutely no basis on which to conclude that these disputed domain names were registered with no awareness of the Complainant.
Taking these conclusions into account, the Panel finds that the purpose therefore of the Respondent was to target the Complainant's pre-existing and well-known mark and to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark.
For these reasons, the Complainant has succeeded on this third element of the UDRP.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <thetidymom.com>, <thetidymom.net>, and <thetidymom.org> be transferred to the Complainant.
Evan D. Brown
Date: April 10, 2017