Generic Top Level Domain Name (gTLD) Decisions

Patricia Cobe & Ellen Parlapiano v. SHE.E.O. and B Aware Nation

Claim Number: FA0011000096103

The Complainant is Patricia Cobe, Scarsdale, NY, USA ("Complainant"), represented by Mark G. McCreary, Fox, Rothschild, OíBrien & Frankel, LLP. The Respondent is SHE.E.O. and B AWARE NATION, Calabasas, CA, USA ("Respondent"), represented by Rod S. Berman, Jeffer, Magels, Butler & Marmaro, LLP.

The domain names at issue are "mompreneur.com", "mompreneur.net", "mompreneur.org", "mompreneurs.com", "mompreneurs.net" and "mompreneurs.org", registered with Network Solutions, Inc.

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as the panelist in this proceeding.

Howard C. Buschman III has been appointed as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on November 21, 2000; The Forum received a hard copy of the Complaint on November 20, 2000.

On December 8, 2000, Network Solutions, Inc. confirmed by e-mail to The Forum that the domain names "mompreneur.com", "mompreneur.net", "mompreneur.org", "mompreneurs.com", "mompreneurs.net" and "mompreneurs.org" are registered with Network Solutions and that the Respondent is the current registrant of the names. Network Solutions has verified that Respondent is bound by the Network Solutions, Inc. 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís Uniform Domain Name Dispute Resolution Policy (the "Policy").

On December 28, 2000, pursuant to the Complainantís request to have the dispute decided by a One Member panel, the Forum appointed Howard C. Buschman III as Panelist.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

Complainants have registered the service mark MOMPRENEURS (the "Mark"), U.S. Registration No. 2,098,244 for use in connection with work at home career consulting and related services. The application was filed on February 20, 1996 and the Mark was registered on September 16, 1997. They offer career consulting services and have published a book, Mompreneurs: A Motherís Practical Step-By-Step Guide to Work-At-Home Success.

Respondents registered the domain names in October 1998. There is no evidence that they use the domain names in providing goods and services.

Respondents assert that they have been active in encouraging entrepreneurship, particularly by young people. To that end, they have obtained a trademark for "entrepreneurator" and have registered many domain names with "preneur" as a suffix. They claim to have been unaware of Complainantsí trademark, book and activities.

By letter dated April 20, 2000 to Respondents, Complainants requested that the domain names be transferred to them. Respondents refused, and did not offer to sell the domain names to Complainants.

Complainantsí Complaint and Respondentsí Response.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable."

Paragraph 4(a) of Policy requires that the Complainant must prove each of the following three elements in order to obtain an order that a domain name should be cancelled or transferred:

Section 4(b) provides:

The principal issue in this case is whether bad faith is to be found where the registrant registers domain names as part of an overall business concept where the names may violate a registered trade or service mark.

Here, the domain names are identical to the Mark. Although Respondent contends that the domain names are generic, the term "Mompreneurs" is hardly one of universal or group descriptive application that define generic terms. It may be that "entrepreneur" is a generic term. But that does not mean that every coined derivative is generic so as to preclude exclusivity. It is also clear that Respondents have done nothing to utilize the domain names - not even as a link to a web site offering goods and services. But the use of the variation of "... preneur" may give rise to a legitimate interest in light of Respondentsí use of both the concept and numerous derivatives.

As to bad faith, Section 4(b) of the Rules, by use of the words "without limitation", makes clear that the conduct set forth in Sections 4(b)(i), (ii), (iii) and (iv) are not exclusive and that the Panel is to consider all relevant circumstances. Here, those circumstances include registration of domain names identical to a registered mark with the apparent purpose of reserving variants of ".... preneur" and the undisputed registration of numerous names. But the Respondentsí attempt to develop entrepreneurship for several years indicates an absence of bad faith which Complainants have not sufficiently rebutted in order to sustain their burden of proof. In particular, Respondentsí attempts to developing entrepreneurship require Complainants to produce some evidence of purpose in registration of the name as provided in Rule 4(b)(ii) and 4(b)(iii) or purposeful use as provided in Rule 4(b)(iv). Complainants have the burden of proof and have not satisfied that burden on this record.

Accordingly, it is decided that the Complaint should be dismissed.

Honorable Howard C. Buschman, III

U.S. Bankruptcy Judge (Ret.)

Arbitrator