Lesley Lawson a/k/a Twiggy
and Twiggy Limited v. Denny Hammerton
Claim Number: FA0711001108659
PARTIES
Complainant is Lesley Lawson a/k/a Twiggy and Twiggy Limited (“Complainant”), represented by Howard
C. Miskin, of Stoll Miskin & Badie,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <twiggy.com>, registered with Enom, Inc.
PANEL
The undersigned certifies that she has acted independently and impartially
and to the best of her knowledge has no known conflict in serving as Panelist
in this proceeding.
Sally M. Abel as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 12, 2007; the
National Arbitration Forum received a hard copy of the Complaint on November 16, 2007. Complainant submitted an Amended Complaint to
the National Arbitration Forum electronically on November 26, 2007 as required
to rectify certain formal deficiencies in the original Complaint.
On November 14, 2007, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <twiggy.com> domain name is
registered with Enom, Inc. and that the
Respondent is the current registrant of the name. Enom, Inc.
has verified that Respondent is bound by the Enom,
Inc. registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 28, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 18, 2007 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@twiggy.com by e-mail.
A timely Response was received and determined to be complete on December 7, 2007.
A timely Additional Submission submitted by Complainant was received on
December 12, 2007 and determined to be complete pursuant to Supplemental Rule
7.
A timely Additional Submission submitted by Respondent was received on
December 14, 2007 and determined to be complete pursuant to Supplemental Rule
7.
On December 14, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Sally M. Abel as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that the domain name is identical to both common
law and registered TWIGGY marks owned by Complainant, Lesley Lawson, an
internationally renowned model, actress and performer known since 1966 as
“Twiggy.” Respondent has no rights or
legitimate interests in the domain because he has not used it in any commercial
or noncommercial or fair use way, is not known as “TWIGGY” and does not own any
federal registrations for the same.
Respondent registered the domain “primarily for the purpose of selling
the domain name registration to Complainant…”
The domain has been registered and is being used in bad faith “to
prevent Complainant, the owner of the mark TWIGGY, from reflecting the mark in
a corresponding domain name, and to sell it at a profit.” Respondent also has engaged in a pattern of similar
conduct with respect to numerous domains he obtained containing celebrities’
names, including several that have been the subject of UDRP actions: <mickjagger.com> (Jagger v. Hammerton, FA
95261 (Nat. Arb. Forum Sept. 11, 2000));
<linda-mccartney.net>, <lindamccartney.com> and <paulmccartney.com>
(MPL Commc’ns v. Hammerton, FA 95633
(Nat. Arb. Forum Oct. 25, 2000));
<jethrotull.com> and <jethro-tull.com> (Ian Anderson Group of Cos. Ltd. v. Hammerton, D2000-0475 (WIPO July
26, 2000)); and <jimihendrix.com> (Experience
Hendrix LLC v. Hammerton, D2000-0364 (WIPO Aug. 4, 2000)).
Respondent has “intentionally attempted to attract, for commercial
gain, internet users to his website <twiggy.com>,
with webpages offering for sale his domain name registrations and DVDs of television
shows.” Specifically, links for
“Domains” and “Vintage TV” are provided on the main page for <twiggy.com>. “The ‘Domains’ page is a listing of various
domain names registered by Respondent, which he is offering for sale.” “The ‘Vintage TV’ page is a listing of
classic and contemporary television shows, which Respondent is offering for
sale on DVD.”
B. Respondent
Respondent contends that TWIGGY is a generic word and, therefore,
Respondent’s registration and use of
<twiggy.com> does not infringe Complainant’s rights. Respondent cites multiple
Respondent contends that the sale of domain names is permissible: “I
registered many domain names in 1996 in the same manner that the Europeans
invaded
Respondent alleges his childhood nickname was “twiggy.”
C. Additional Submissions
Complainant disputes Respondent’s contention that TWIGGY is generic based upon registration of TWIGGY by both the United States Patent and Trademark Office and the United Kingdom Patent and Trademark Office.
Complainant contends that the existence of additional trademark registrations for TWIGGY for various goods does not prove Respondent’s allegations that TWIGGY is generic. Further Complainant’s rights should not be impacted by her failure to register a TWIGGY domain name. Nor is Complainant under any obligation to bring action against all who infringe TWIGGY in order to preserve Complainant’s right to bring this action.
“The dictionary definitions and literary passages cited by Respondent are irrelevant to this action, because these citations only illustrate descriptive use” of TWIGGY.
Respondent maintains his contention that TWIGGY is a generic word.
FINDINGS
Complainant is a well-known model, actress and performer, who first became known as TWIGGY in 1966.
Complainant owns a
Respondent registered the domain name <twiggy.com> on or before February 26, 1999.
The website
accessible at <twiggy.com>
currently appears to contain an eclectic mix of content loosely related to the
1960’s. The main page displays the
following definition from Webster’s dictionary:
“Twiggy, adj. Of, pertaining to,
like, or suggesting, a twig or twigs; as: A, Slight as a twig; thin and
delicate. B, Full of or abounding in twigs.”
The main page contains a link to a page containing additional links,
titled “Domains” and “Vintage TV.” It
appears that the domains listed under the “Domains” link may be available for
sale, as the term “offers” appears after each suggesting Respondent owns, and
is willing to sell, the domains.
Respondent is offering DVDs featuring 1960’s era television shows and
musical performances for sale under the “Vintage TV” link.
Respondent has been involved in domain name disputes before the National Arbitration Forum and World Intellectual Property Organization involving his registration of domain names containing the names of famous individuals, including: Jagger v. Hammerton, FA 95261 (Nat. Arb. Forum Sept. 11, 2000) (<mickjagger.com>), MPL Commc’ns v. Hammerton, FA 95633 (Nat. Arb. Forum Oct. 25, 2000) (<linda-mccartney.net>, <lindamccartney.com>, <paulmccartney.com>), Ian Anderson Group of Cos. Ltd. v. Hammerton, D2000-0475 (WIPO July 26, 2000) (<jethrotull.com>, <jethro-tull.com>) and Experience Hendrix LLC v. Hammerton, D2000-0364 (WIPO Aug. 4, 2000) (<jimihendrix.com>). In each instance, Respondent was ordered to transfer the domain name at issue.
DISCUSSION
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, these Rules and any rules and principles of law that it deems
applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1) the domain name registered by the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and is being
used in bad faith.
In order to satisfy the first prong
under the Policy, the domain name registered by the Respondent must be
identical or confusingly similar to a trademark in which the Complainant had rights at the time the Respondent obtained the domain name registration. Complainant’s
It is well established that a Complainant need not have a trademark registration in order to establish rights under the Policy. A Complainant can rely on common law rights in a mark that is identical or confusingly similar to the domain name at issue. However, as stated above, those rights must exist at the time the respondent obtains the domain name at issue. It is clear from the record that Complainant had common law trademark rights in the TWIGGY mark beginning in 1966 and likely extending through the remainder of the 1960’s and the 1970s, and that Complainant likely has common law trademark rights in the TWIGGY mark today. However, it is not clear that Complainant possessed any common law rights in TWIGGY in 1996 or 1999, the two alleged registration dates for the domain at issue.
Complainant’s licensing of her name
and mark TWIGGY for use on various goods in 1967 likely constitutes evidence of
common law trademark rights at that time; however, there is no evidence in the
record that these licenses are still in effect, nor is there any evidence that
they or any other licenses were in effect at the time Respondent obtained the <twiggy.com> registration. Similarly, Complainant contends that clothing
bearing the mark TWIGGY can be purchased online and is available in retail
stores in
While Complainant may have had trademark rights at the time Respondent registered <twiggy.com>, Complainant failed to produce sufficient evidence to demonstrate such rights. Accordingly, the Panel finds Complainant has not satisfied its burden under the first prong.
Given that the Panel has found Complainant failed to satisfy its burden under the first prong, it is not necessary to address the second or third prong under the Policy. However, the Panel would like to point out as to this prong that Respondent claims to have been known as “Twiggy” for several years during his childhood (1952-1967). Respondent’s claim suffers from the same evidentiary failure as does Complainant’s claim as to the existence of common law rights in the relevant time period. There is no evidence in the record to support Respondent’s claim that “Twiggy” was or is his nickname other than his self-serving claim to that moniker.
As the Panel has found Complainant failed to
satisfy its burden under the first prong, it is not necessary to address the
remaining prongs. The Panel wishes to
point out, however, that Respondent’s pattern of registering domain names
containing the mark of other famous celebrities would be sufficient to
establish registration and use of the domain name in bad faith.
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Accordingly, the Complaint is DISMISSED.
Sally M. Abel, Panelist
Dated: December 28, 2007
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