Complainant is Playa Vista Moms Group, Inc., United States of America (“United States”), represented by Winterfeldt IP Group PLLC, United States.
Respondent is Gabrielle D’Addario, United States, represented by Hunton Andrews Kurth LLP, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2020. On March 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 24, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 24, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 25, 2020. The Center verified that the Complaint, together with the amended 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 Respondent of the Complaint, and the proceedings commenced on April 1, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 21, 2020. On April 18, 2020, Respondent contacted the Center requesting a 30-day extension due to circumstances relating to the COVID-19 conditions. On April 20, 2020, the Center notified the Parties that the due date for the Response would be extended by ten days, until May 1, 2020. On April 30, 2020, Respondent contacted the Center requesting an additional extension to the Response due date. On May 4, 2020, the Center notified the Parties that the Response due date would be extended for an additional 10 days, until May 15, 2020. On May 14, 2020, Respondent contacted the Center requesting an additional extension to the Response filing period. In response to Respondent, the Center informed the Parties that it would proceed to panel appointment after May 15, 2020, as previously indicated, and that any late Response would be at the discretion of the Panel to consider. On May 14, 2020, the Complainant contacted the Center in regards to Respondent’s additional extension request. The Response was filed with the Center on May 16, 2020. On May 16, 2020, the Center notified the Parties, pursuant to paragraph 6 of the Rules, that it would proceed to panel appointment. On May 22, 2020, Complainant filed an unsolicited supplemental filing in reply to the Response. On June 5, 2020, Respondent filed an unsolicited supplemental filing in response to Complainant’s May 22, 2020 supplemental filing. The Center appointed Georges Nahitchevansky as the sole panelist in this matter on May 27, 2020. 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 Complainant, Playa Vista Mom’s Group Inc., is a United States non-profit organization that organizes educational and charitable events for families that reside in Playa Vista, California. Complainant has been in operation since 2013 and owns a registration in the United States for a stylized version of the mark PLAYA VISTA MOMS GROUP PVMG that was filed on September 20, 2018, and issued to registration on November 12, 2019 (Registration No. 5,906,528). Complainant also owns the domain names Respondent is an individual residing in Playa Vista, California. Respondent was previously a Board Member of Complainant, but ceased to be involved with Complainant in or about 2016. The Parties appear to have had a falling out at that time. Respondent along with other parents in Playa Vista then formed an informal group in August 2016 known as the “Silicon Beach Parents Group”. Respondent registered the disputed domain name in October 29, 2017. At some point thereafter, the disputed domain name redirected to a webpage at “www.discovercaliforniatv.com/sbpg” that was related to the “Silicon Beach Parents Group”. The disputed domain name currently resolves to a parked page generated by Wix.com. 5. Preliminary Considerations In this proceeding, the Parties have each filed unsolicited supplemental submissions. In its supplemental submission, Complainant has objected to the Response as being untimely submitted, and has requested that the Panel consider the dispute solely based on the Complaint. In addition, Complainant also filed arguments and additional evidence in reply to Respondent’s contentions in its Response. Respondent’s supplemental submission consists of a response to Complainant’s request that the Panel not consider the Response and additional arguments and evidence against contentions made by Complainant in its supplemental submission. Consequently, the Panel preliminarily considers whether to accept the unsolicited supplemental filings of the Parties and whether to grant Complainant’s request to consider the dispute solely based on the Complaint. A. The Parties’ Supplemental Filings Neither the Policy nor the Rules provide a party with an automatic right to submit additional arguments or evidence. Under paragraph 10 of the Rules, panels enjoy broad powers for conducting administrative proceedings, provided that the parties are treated fairly and the proceedings are conducted expeditiously. Within this framework, a panel can determine within its sole discretion whether to admit or reject supplemental submissions. In exercising this discretion, many panels have made clear that additional evidence or submissions should only be admitted in exceptional circumstances, such as, by way of example, where new pertinent facts arise after the submission of the complaint or where a party could not have reasonably known of the existence, relevance or veracity of further material when it made its primary submission. See, e.g., Office Club, Ltd. v. John Adem,WIPO Case No. D2000-1480; Gordon Sumner, p/k/a Sting v. Michael Urvan,WIPO Case No. D2000-0596; The E.W. Scripps Company v. Sinologic Industries,WIPO Case No. D2003-0447; Cerulean Studios, LLC v. Hexuan Cai,WIPO Case No. D2013-0902. The Panel agrees with this position and adds that further material should only be admitted to the extent necessary in a proceeding and when such is essential in reaching a fair decision on the facts of the matter. In the instant case, and after reviewing the Complaint, the Response, and the Parties’ communications with the Center, the Panel is willing to accept those portions of the Parties’ supplemental submissions that concern Complainant’s request that the Panel deem the Response as untimely and proceed to make a determination solely based on the Complaint. As for the rest of the Parties’ supplemental filings, the Panel does not believe there are exceptional circumstances in this matter that warrant the acceptance of these supplemental filings. The Panel therefore declines to accept the remainder of the Parties’ supplemental filings and has disregarded such in reaching its decision. B. Respondent’s Response Under Paragraph 10(a) of the Rules, a panel is provided the general power to “conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules”. In considering whether or not to accept a late filed Response, a panel is mindful that proceedings should be conducted expeditiously and that the parties should be treated fairly. Here, Complainant asserts that Respondent has received multiple extensions under false pretenses to unduly delay the proceedings and then made an untimely filing of its Response and exhibits. Respondent rejects Complainant’s assertions and contends that it timely filed its Response on May 15, 2020, just before the midnight deadline for doing so, and had problems with its email service when sending the exhibits which resulted in the exhibits being fully transmitted two or three days later The Panel has reviewed the email correspondence provided by the Center regarding the extensions granted to Respondent and the filing of the Response. The email that accompanied the Response has a date of May 16, 2020, at 3:02 am. It is not clear to the Panel whether this reflects the actual time when the email and response were sent by Respondent’s counsel in the United States or if the noted time is the time in Switzerland when the Center received the email, which would then make the Respondent’s submission timely in light of the time difference. Given the Parties’ contentions and the ambiguity in the emails, the relatively brief time span at issue, and the lack of any noted prejudice to Complainant resulting from the alleged brief delay, the Panel does not believe that rejecting the Response would be equitable under the circumstances. Consequently, the Panel accepts the Response. 6. Parties’ Contentions A. Complainant Complainant contends that it has well established rights in the name and mark PLAYA VISTA MOMS GROUP that predate the registration of the disputed domain name by Respondent. Complainant asserts that the disputed domain name is identical to Complainant’s PLAYA VISTA MOMS Group mark, as it fully and solely consists of the PLAYA VISTA MOMS GROUP mark with the irrelevant Top-Level Domain (“TLD”) extension”.com”. Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name as Respondent (i) has never been authorized by Complainant to use the PLAYA VISTA MOMS GROUP mark, (ii) is not commonly known by the disputed domain name, (iii) registered the disputed domain name after Complainant had established rights in the PLAYA VISTA MOMS GROUP mark and did so with an intent to disrupt Complainant’s business, and (iv) has not made a legitimate use of the disputed domain name but has instead used the disputed domain name to redirect web users to a competitor’s website. Lastly, Complainant contends that Respondent has registered and used the disputed domain name in bad faith as Respondent, who was former member of the Board of Directors of Complainant, had prior notice of Complainant’s rights in the PLAYA VISTA MOMS GROUP name and mark and registered the disputed domain name after Complainant had made widespread use of the PLAYA VISTA MOMS GROUP mark in commerce. Complainant further contends that Respondent acted in bad faith by registering the disputed domain name that is identical to Complainant’s PLAYA VISTA MOMS GROUP mark in order to disrupt Complainant’s business by redirecting web users to a domain name owned by a competing organization. B. Respondent Respondent rejects Complainant’s contentions. Respondent maintains that she is a well-respected mother and activist in Playa Vista, which is also commonly referred to as Silicon Beach. Respondent contends that throughout the years she has informally adopted the moniker “The Playa Vista Mom” on her social media pages and that she hosts a local television show about Playa Vista called “Silicon Beach Living”, in which she highlights local events and businesses. Respondent notes that she was a former member of the Board of Directors of Complainant, but resigned at some point on account of some concerns she had about “leadership and poor management of the organization”. After Respondent resigned, Complainant excluded Respondent from Complainant’s Facebook Group and membership at large. In August 2016, Respondent and some other parents formed a Facebook Group called “Silicon Parents Group” (“SBPG”). Respondent contends that SBPG does not compete with Complainant and is an informal and unincorporated collection of parents with no commercial purpose. Respondent asserts that she redirected the disputed domain name to the website at “www.discovercaliforniatv.com/sbpg” for a brief period of time for informational purposes to highlight events and announcements for parents in Playa Vista and that she did not profit from, or seek to profit from, the use of the disputed domain name. Respondent also asserts that while she was on the Board of Directors of Complainant she “was never witness, or party to Complainant’s claim of ownership or assertion of trademark rights in the phrase [‘Playa Vista moms group’]”. Respondent also maintains that Complainant has been aware of Respondent’s registration of the disputed domain name since January 2018, but never made any claim that Complainant owned any trademark rights in PLAYA VISTA MOMS GROUP. Respondent notes that the only rights Complainant can plausibly claim is for “a stylized logo that incorporates the term ‘[P]laya [V]ista moms group PVMG’”. Respondent argues that Complainant fraudulently obtained its trademark registration for this stylized logo by misrepresenting the date of first use of the stylized logo mark in commerce in 2014. Respondent contends that the disputed domain name is not confusingly similar to any trademarks that Complainant might have rights in. Respondent argues that Complainant does not have exclusive rights in the descriptive and generic phrase “Playa Vista moms group,” which merely describes a parent group that happens to live in Playa Vista. Respondent asserts that she has legitimate interest in the disputed domain name, which consists of a geographically descriptive term with the generic phrase “mom’s group”, particularly as Respondent has long referred to herself as “The Playa Vista Mom” on social media. Respondent further asserts that Complainant has failed to prove that it owns trademark rights in the phase “Playa Vista moms group”, as Complainant’s 2019 trademark registration at issue in this matter is a logo in which Complainant is claiming rights in a literal textual element for without proof that Complainant owns common law trademark rights in the descriptive textual element “Playa Vista moms group”. Lastly, Respondent contends that she registered the disputed domain name in the good faith belief that “Playa Vista mom’s group” was a descriptive phrase that does not function as a trademark, and did so before Complainant ever asserted it owned trademark rights in PLAYA VISTA MOMS GROUP. 7. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Complainant’s Rights in the Name and Mark PLAYA VISTA MOMS GROUP Complainant has provided evidence that it owns a trademark registration in the United States for a stylized version of the logo PVMG that includes the words “Playa Vista Mom’s Group”, which issued to registration in November 2019 (“Complainant’s Registration”). Respondent contends that the phrase “Playa Vista mom’s group”, which is merely a textual element in Complainant’s PVMG logo mark registration is descriptive and that Complainant has failed to prove that it had common law rights in PLAYA VISTA MOMS GROUP prior to when Respondent registered and used the disputed domain name In the Complaint, Complainant asserts that it has used the PLAYA VISTA MOMS GROUP mark since 2013. Notably, though, Complainant has not provided any evidence showing use of Complainant’s alleged PLAYA VISTA MOMS GROUP mark in 2013. Complainant, however, has provided proof that it registered the domain name Given the Parties’ respective claims and the lack of a dispute that Complainant had a website prior to when Respondent registered the disputed domain name in October 2017, the Panel in its discretion under its general powers pursuant to paragraphs 10 and 12 of the UDRP Rules has for the benefit of the Parties reviewed archival website pages for the Further confirmation that Complainant developed some common law rights in the mark PLAYA VISTA MOMS GROUP is also found in Complainant’s Registration. Although Complainant’s Registration issued on November 12, 2019, a date after the disputed domain name was registered, the registration includes a claim of acquired distinctiveness under United States trademark law for the words “Playa Vista Mom’s Group”. As the claim of acquired distinctiveness was accepted by the United States Patent and Trademark office in 2019, it reflects a presumption of continuous use of PLAYA VISTA MOMS GROUP as a trademark for the five years prior to making the claim of acquired distinctiveness, which would take the use of that mark to at least 2014, a date prior to when Respondent registered the disputed domain name. That Complainant has some rights in PLAYA VISTA MOMS GROUP is in fact confirmed by Respondent’s own statements. Respondent’s LinkedIn page, a copy of which was submitted by Complainant, includes a list of “Volunteer Experience” for Respondent. That list specifically notes that Respondent was a Board Member of “Playa Vista Mom’s Group, Inc.” Such reference to Complainant implicitly confirms that the name “Playa Vista Moms Group” refers to a source of services that are associated with Complainant. Simply put, it is clear that Respondent is aware that PLAYA VISTA MOMS GROUP is likely viewed by at least some consumers in the geographic area of Playa Vista, California as referring to Complainant and not some other entity. It should be noted that although Respondent challenges that Complainant’s Registration was fraudulently obtained, such a claim is beyond the scope of a UDRP proceeding. The Panel is not in a position to assess the merits of such a claim, and if pursued by Respondent should be done in a different forum, such as the United States Trademark Trial and Appeal Board. B. Identical or Confusingly Similar With Complainant’s rights in the PLAYA VISTA MOM’S GROUP mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain such as “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold. In the instant proceeding, the disputed domain name is identical to Complainant’s PLAYA VISTA MOMS GROUP mark as it fully and solely consists of the PLAYA VISTA MOMS GROUP mark. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s PLAYA VISTA MOMS GROUP mark and in showing that the disputed domain name is identical to that trademark. C. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. Based on the evidence submitted in this proceeding, it appears that Respondent’s only use of the disputed domain name to date has been as a redirect to a web page for Respondent’s “Silicon Beach Parents Group”. That web page provided a list of upcoming events as well as what looks to be a link to a page with information regarding the “Silicon Beach Parents Group”. The web page also included advertisements for food products, clothes, strollers, and other items. While Respondent maintains that the disputed domain name redirected to the web page for the “Silicon Beach Parents Group” for only a brief period of time and that Respondent did not profit from the page, the fact remains that Respondent registered the disputed domain name and then used it to redirect web traffic to a web page that promoted Respondent’s informal organization and which had advertisements that may have generated some revenue for Respondent or her organization. Respondent’s contention that “Playa Vista moms group” is a descriptive phrase and that up until recently Complainant never claimed trademark rights in the mark PLAYA VISTA MOMS GROUP appears to be pretextual to the Panel. Respondent was a member of the Board of Directors of Complainant in 2016 and was well aware that Complainant had adopted the name “Playa Vista Moms Group, Inc.” to identify itself. Respondent was also well aware that the acronym PVMG specifically referred to “Play Vista Moms Group”. That Respondent registered the disputed domain that is identical to Complainant’s name because she believed it was a descriptive phrase rings hollow when viewed in the context of the past history and relationship of the Parties, particularly in light of Respondent’s only use of the disputed domain name as a redirect to a webpage promoting events and activities involving her “Silicon Beach Parents Group”. While Respondent has used the moniker “The Playa Vista Mom” or "@ThePlayaVistaMom” on her social media pages this does not give her rights in and to Complainant’s exact name. Notably, Respondent’s evidence in that regard consists of copies of social media pages from 2020. There is no evidence of when Respondent began using that moniker. Indeed, in the LinkedIn and Instagram pages submitted to the Panel by Respondent it appears, based on Respondent’s own statements therein, that Respondent moved into Playa Vista in 2016. Consequently, the moniker was likely adopted by Respondent after Complainant had been using the name and mark PLAYA VISTA MOMS GROUP for its organization and services. From what is before the Panel, it is clear that Respondent was well aware that she was registering the disputed domain name that is identical to Complainant’s name and mark and then used it to promote her own organization and its events. Such actions do not support a claim of having a legitimate interest in the disputed domain name. Given that Complainant has established with sufficient evidence that it owns rights in the PLAYA VISTA MOMS GROUP mark, and given Respondent’s above noted actions, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case. D. Registered and Used in Bad Faith Given Respondent’s actions as noted above, the Panel concludes that Respondent’s registration and use of the disputed domain name which solely consists of Complainant’s PLAYA VISTA MOMS GROUP mark to attract and redirect consumers to a web page for Respondent’s “Silicon Beach Parents Group” was done opportunistically and in bad faith. While the disputed domain name currently resolves to a parked page generated by Wix.com, Respondent’s prior use of the disputed domain name reveals much about Respondent’s decision to register the disputed domain name. Respondent was well aware that “Playa Vista Moms Group” was being used by Complainant as the name of its organization. The fact that no one at Complainant specifically advised Respondent that Complainant was claiming trademark rights in PLAYA VISTA MOMS GROUP does not mean that Complainant had no trademark rights or that Complainant believed that its name could be used by anyone at any time. Put another way, Complainant used the name “Playa Vista Moms Group” and the short form identifier PVMG to identify itself and its services. Respondent was well aware of that fact as a member of the Board of Directors. While Respondent’s registration and use of the disputed domain name may have been misguided, such does not absolve Respondent from copying and using the exact name of Complainant for her own benefit. It is worth noting that while Respondent may have a legitimate gripe against Complainant and its activities, registering and using a disputed domain name as Respondent has done here in what appears to be more likely than not either for retaliatory purposes or for personal gain is not legitimate and is, in and of itself, an act of bad faith registration and use. Accordingly, the Panel finds that Complainant succeeds under this element of the Policy. 8. Decision 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 name Georges Nahitchevansky
Sole Panelist
Date: June 16, 2020
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