TWLOHA, Inc. d/b/a To Write Love On Her Arms v. Ide Co.
Claim Number: FA1207001456035
Complainant is TWLOHA, Inc. d/b/a To Write Love On Her Arms (“Complainant”), represented by Peter E. Nussbaum of Wolff & Samson PC, New Jersey, USA. Respondent is Ide Co. (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <towriteloveonherarms.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr., (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 31, 2012; the National Arbitration Forum received payment on July 31, 2012.
On July 31, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <towriteloveonherarms.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 1, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 21, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@towriteloveonherarms.com. Also on August 1, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 24, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr., (Ret.), as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant , TWLOHA, Inc. d/b/a To Write Love On Her Arms, uses the TO WRITE LOVE ON HER ARMS mark in connection with its non-profit services promoting public awareness of depression, addiction, self-injury, and suicide, as well as its non-profit apparel and accessories line. Complainant owns trademark registrations with the United States Patent and Trademark and Office (“USPTO”) for the TO WRITE LOVE ON HER ARMS mark (e.g., Reg. No. 3,893,898 filed May 10, 2010; registered December 21, 2010). Complainant was founded by Jamie Tworkowski in March of 2006, with a corresponding MySpace profile created on March 11, 2006. Complainant has used the mark in commerce since at least as early as April 1, 2006, and the goods and services provided under its TO WRITE LOVE ON HER ARMS are now available globally. Complainant has “expended substantial sums of money promoting, marketing and advertising its good and services provided under the TO WRITE LOVE ON HER ARMS name and mark.”
Respondent, Ide Co., registered the disputed domain name on April 17, 2006. Respondent uses the <towriteloveonherarms.com> domain name to operate a Japanese-language blog on the topic of prostitution and “red light districts” in various locations throughout the world.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant owns trademark registrations of the TO WRITE LOVE ON HER ARMS mark with the USPTO (e.g., Reg. No. 3,893,898 filed May 10, 2010; registered December 21, 2010). Registration of a mark with the USPTO is sufficient to establish rights in a mark under Policy ¶ 4(a)(i), dating back to the filing date of the registration. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date). The Panel finds that Complainant has established rights in the TO WRITE LOVE ON HER ARMS mark under Policy ¶ 4(a)(i), dating back to May 10, 2010.
A complainant may establish common law rights in a mark that predate the complainant’s registration of that mark. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established). Complainant was founded by Jamie Tworkowski in March of 2006, with a corresponding MySpace profile created on March 11, 2006. Attention and notoriety were quickly drawn to its organization when prominent musicians immediately began to wear Complainant’s TO WRITE LOVE ON HER ARMS-branded apparel onstage and off, beginning with the lead singer of the group Switchfoot on March 30, 2006. Complainant has used the mark in commerce since at least as early as April 1, 2006 and the goods and services provided under its TO WRITE LOVE ON HER ARMS are now available globally. Complainant has achieved significant public exposure, operating an informational booth at the Vans Warped Tour for each of the last several years and reaching over 1,000,000 “likes” on its Facebook page. Additionally, Complainant has “expended substantial sums of money promoting, marketing and advertising its good and services provided under the TO WRITE LOVE ON HER ARMS name and mark.” Based on the evidence presented, the Panel finds that Complainant has established secondary meaning in the TO WRITE LOVE ON HER ARMS mark sufficient to confer common law rights in the mark under Policy ¶ 4(a)(i), dating back to Complainant’s first alleged use on April 1, 2006. See Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning).
Complainant contends that the <towriteloveonherarms.com> domain name is identical to Complainant’s TO WRITE LOVE ON HER ARMS mark pursuant to Policy ¶ 4(a)(i). The disputed domain name wholly includes Complainant’s TO WRITE LOVE ON HER ARMS mark, deleting the spaces between words in Complainant’s mark and adding the generic top-level domain (“gTLD”) “.com.” Neither of these changes can distinguish a disputed domain name under Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). Accordingly, the Panel finds that Respondent’s <towriteloveonherarms.com> domain name is identical to Complainant’s TO WRITE LOVE ON HER ARMS mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
In alleging that Respondent is not commonly known by the disputed domain name, Complainant states that it has never approved, sponsored, or been affiliated with Respondent in any way. The relevant WHOIS information identifies the domain name registrant as “Ide Co.,” which bears no resemblance to the <towriteloveonherarms.com> domain name. The Panel finds that Respondent is not commonly known by the disputed domain name for the purposes of Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Moreover, Respondent’s resolution of the <towriteloveonherarms.com> domain name to a blog featuring information about prostitution and “red light districts” is evidence that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Complainant also alleges that Respondent’s use of the <towriteloveonherarms.com> domain name cannot be considered a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant alleges that Respondent uses the <towriteloveonherarms.com> domain name to operate a Japanese-language blog on the topic of prostitution and “red light districts” in various locations throughout the world. Complainant further alleges that Respondent’s use of a disputed domain name that is identical to Complainant’s mark wrongfully tarnishes Complainant’s mark and allows Respondent to generate income by redirecting Internet users searching for Complainant’s website. The Panel finds that Respondent’s appropriation of the disputed domain name in order to redirect users to its site for Respondent’s own benefit is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Furthermore, Respondent’s use of the disputed domain name to resolve to websites featuring adult-oriented material is not a use in accordance with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to an adult-oriented website did not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)).
The four factors listed in Policy ¶ 4(b)(i)-(iv) are not an exhaustive list of all bad faith behavior, but rather are illustrative of the type of activity that constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”). Circumstances falling outside the explicit parameters of Policy ¶ 4(b) can provide persuasive evidence for a finding of bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant contends that Respondent’s registration and use of the <towriteloveonherarms.com> domain name is likely to misleadingly divert Internet users who are trying to locate Complainant’s website, thus tarnishing and disparaging Complainant’s goodwill when these users land at a site which some might consider inappropriate. The Panel finds that Respondent’s use of the <towriteloveonherarms.com> domain name to display information regarding prostitution and “red light districts” constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (finding that the respondent registered the <holidayinnakron.com> domain name and linked it to an adult-oriented website, the panel stated, “[W]hatever the motivation of Respondent, the diversion of the domain names to [an adult-oriented] site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <towriteloveonherarms.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 7, 2012
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