DECISION

 

Twisted Pair Solutions, Inc. v. Twisted Pair

Claim Number: FA0402000235832

 

PARTIES

Complainant is Twisted Pair Solutions, Inc. (“Complainant”), 1100 Dexter Avenue North, Suite 100, Seattle, WA 98109. Respondent is Twisted Pair (“Respondent”), 859 Orange Avenue, San Carlos, CA 94070.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <twistedpair.com>, registered with Dotster.

 

PANEL

The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflicts in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically February 5, 2004; the Forum received a hard copy of the Complaint February 6, 2004.

 

On February 5, 2004, Dotster confirmed by e-mail to the Forum that the domain name <twistedpair.com> is registered with Dotster and that the Respondent is the current registrant of the name. Dotster verified that Respondent is bound by the Dotster registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On February 16, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 8, 2004, 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@twistedpair.com by e-mail.

 

A timely electronic Response was received and determined to be complete on March 8, 2004. However, the Response was received incomplete in hard copy form, and was thus not in compliance with UDRP Rule 5(a) and (b).

 

On March 17, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

 

Procedural Issue: Deficient Response

 

The Forum received Respondent’s electronic Response timely; however, the hard copy of Respondent’s Response was not complete as required by UDRP Rule 5(a) and (b) and is noncompliant. With a deficient Response, Respondent has the same status of a party in default. See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (holding Respondent’s failure to submit a hard copy of the Response and failure to include evidence to support a finding in its favor placed Respondent in a de facto default posture, permitting the Panel to draw all appropriate inferences stated in the Complaint).

Further, although the Panel favors determination on the merits under principles of due process, the decision to give no weight to the Response does not affect the outcome here. See Strum v. Nordic Net Exchange AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (“Ruling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process.")  A Complainant does not automatically prevail in the event of a default and having reviewed the Complaint and Response, the issue of Respondent’s deficient Response has no effect on the outcome here because Complainant failed to establish the three prongs necessary in order to prevail in this matter. 

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A.     Complainant makes the following allegations in this proceeding:

 

1.      Respondent registered a domain name that is identical to or confusingly similar to a trademark in which Complainant has pending rights and Complainant, by argument, can make a more worthwhile use of that domain name site.

 

2.      Respondent has no rights to or legitimate interests in Complainant’s pending mark and the domain name that incorporates it.

 

3.      Respondent used the domain name in bad faith by holding it passively and by withholding it from Complainant’s use and development.

 

B.     Respondent’s Response was given no weight because it was deficient; however the following was derived from Complainant’s Complaint.

 

1.      Complainant conceded that Respondent used the name Twisted Pair in commerce for many years before Complainant’s use, using the name from 1996 to 2003.

 

2.      Respondent has used the Twisted Pair name since 1996 as a portal to opinion-based sites.

 

3.      Respondent registered and used the name before Complainant’s use.

 

C.     Additional Submissions

 

Correspondence from the Forum suggests that Complainant filed the Complaint first as Bruno Riegle v. Twisted Pair and that the Forum assigned Number FA0402000235821 to it.  Thereafter, Complainant re-filed as Twisted Pair Solutions, Inc., v. Twisted Pair and the Forum assigned Number FA0402000235832 to it.  The Complaint proceeded under the later filing and number.

 

      The Parties filed no additional submissions.

 

FINDINGS

Complainant Twisted Pair Solutions, Inc. is from Seattle, WA, while Respondent Twisted Pair is from San Carlos, CA.  Bruno Riegl is identified as CEO of Twisted Pair Solutions, Inc. Complainant holds provisional patents in good standing and is in the process of filing for a federal trademark for TWISTED PAIR. 

 

Complainant concedes that Respondent registered the disputed domain name, <twistedpair.com>, on March 1, 1996.  Complainant concedes that Respondent uses the domain name site to forward those who access it to opinion-posting sites described as “rant & raves,” and including such names as “Stinky Weenie,” “Ms. Frizzle,” “Bam Diary,” and “Euphoria Lovesoul.” 

 

Complainant urges that these “harangue” sites are unrelated to the industry of radio communications, software development, Land Mobile Radio, or others that are multi-jurisdictional, interoperable or necessary to the public safety. 

 

These sites, Complainant averred, caused “a considerable amount of angst and confusion” for Complainant’s customer base.  Further, Complainant urges, its customers “must be informed on a daily basis that the domain name does not match the company name, decreasing [the] customer’s confidence in the Complainant’s credibility and denigrating Twisted Pair Solutions, Inc.[’s] reputation.”

 

Twisted Pair Solutions, Inc. Complainant, reports that it was founded in 2000, first as a New Jersey Limited Liability Company and that it was then reincorporated as a Washington State C-Corporation in November 2003.  In April 2003, Twisted Pair Solutions, Inc. released the first commercial version of its trademarked Wide Area Voice Environment, a patent-pending Voice over IP software broadcast mixing system.  Twisted Pair Solutions, Inc. represented that the military and several homeland security agencies have adopted use of its software, including the US Army Special Ops, US Navy War College, US Army, US Forest Service, Navy Research Labs, NASA and the US Coast Guard. Complainant urges that its premiere product is already in use by the US Department of Defense.

 

Complainant reports that after forming its corporate entity in New Jersey, it “made several good-faith attempts to legitimately acquire the domain <twistedpair.com> from Respondent.  Complainant made repeated efforts to contact Respondent via email and telephone messages about selling or transferring the domain of <twistedpair.com> to Twisted Pair Solutions, Inc., but has yet to receive a response either written or verbal from Respondent.  To date, Respondent has not returned any correspondence from Complainant regarding the offer to purchase the domain or have it transferred.”  Yet, Complainant also urges that Respondent offered to sell the domain name for $2,000.

 

Complainant urges that Respondent “is not using the domain name <twistedpair.com> to sell, solicit or market any products and services under any trade name likened to Twisted Pair or any variation of the name in relationship to selling goods or services.  In addition, Respondent is not using the domain name <twistedpair.com> for any purpose other than ownership.  Respondent appears to have no real interest in the domain other than keeping it from being used for legitimate business.”

 

In support of allegations of bad faith, Complainant urges that Respondent is not using the domain to “advertise, promote, market, sell goods and services, or use the domain as a foundation for establishing a business, non-profit or trade.”  Complainant accuses Respondent of “harboring” the domain to prevent Complainant “from expanding business and increasing visibility to the suite of products.”  Further, Complainant urges that the “domain is legally identical to the Complainant’s highly recognized corporate name and mark.”  Respondent has done so without license or permission from Complainant.

 

Complainant alleges that it has “spent a great deal of resources in advertising, workforce expansion and marketing promotion to give ‘Twisted Pair’ [Solutions, Inc.] a unique identity within the software, telecommunications and [I]nternet industries.  The future progress of the Complainant is largely based upon the ability to promote the Internet domain identity as <twistedpair.com> and establishing credibility through the [formal top-down domain <twistedpair.com>.]”

 

Complainant supported its submission with Xerox copies of its application but produced no extrinsic proof of its activities and expenditures for development or the business associations that Complainant outlined above for federal or state authorities.

 

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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(2)    Respondent has no rights to or legitimate interests in respect of the domain name; and

(3)    the domain name has been registered and is being used in bad faith.

 

Identical to and/or Confusingly Similar

 

Complainant maintains that it has established rights in the TWISTED PAIR mark through its foundation as “Twisted Pair Solutions, Inc.” in 2000 and by its use of the service mark TWISTED PAIR in connection with its services since that time.  Some support exists for Complainant’s contention that such a showing meets the UDRP’s requirements but it is specific to those entities that have established legal or common law rights in a mark prior to Respondent’s use and development. See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).

 

Complainant further alleges that the <twistedpair.com> domain name is confusingly similar to its TWISTED PAIR mark.  Some support exists for Complainant’s contention in this regard as well where a Complainant can actually show such rights at a point earlier in time to Respondent’s alleged infringement. See Bank of Am. Corp. v. domain chronicle, FA 178817 (Nat. Arb. Forum Sept. 22, 2003) (finding that the removal of the spaces between the words of Complainant’s mark was a “cosmetic and inconsequential change” that rendered the disputed domain name confusingly similar to Complainant’s mark); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (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”).

 

However, Complainant here concedes that Respondent registered the <twistedpair.com> domain name on March 1, 1996, a date some four years earlier than Complainant urges that it acquired alleged rights in the TWISTED PAIR mark.  This concession rebuts Complainant’s claim that it “has rights” in the mark that were prior to Respondent’s use pursuant to Policy ¶ 4(a)(i). See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (finding that Policy ¶ 4(a)(i) “necessarily implies that Complainant’s rights predate Respondent’s registration . . . of the domain name”); see also Intermark Media, Inc. v. Wang Logic Corp., FA 139660 (Nat. Arb. Forum Feb. 19, 2003) (finding that any enforceable interest that Complainant may have in its common law mark did not predate Respondent’s domain name registration, therefore finding that Policy ¶ 4(a)(i) had not been satisfied); see also Razorbox, Inc. v. Skjodt, FA 150795 (Nat. Arb. Forum May 9, 2003) (noting that as Respondent’s registration of the <razorbox.com> domain name predated Complainant’s alleged rights (Respondent registered the disputed domain name more than two years prior to Complainant’s stated first use in commerce) Complainant did not have standing to bring a claim under the UDRP).

 

Further, Complainant produced no evidence of any use of the TWISTED PAIR mark as a trade name or in business that would, through Complainant’s use of it, produce secondary meaning sufficient to establish Complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (holding that a finding of common law rights in a mark required a level of supporting evidence, statements or proof such as business sales figures, revenues, advertising expenditures, number of consumers served, trademark applications or intent-to-use applications); see also Front Range Internet, Inc. v. Murphy, FA 145231 (Nat. Arb. Forum Apr. 4, 2003) (finding that Complainant’s use of a trade name, without any showing of secondary meaning associated with the name, was an insufficient demonstration that Complainant “had rights” under the Policy).  While Complainant stated that it expended funds and efforts to develop the mark, it produced no evidence to support such claims.

 

Complainant did not meet the requirements of UDRP Policy ¶ 4(a)(i) to show that Respondent registered a name that was identical to or confusingly similar to a mark in which Complainant had legal or common law rights at the time Respondent used the mark.

 

Rights to or Legitimate Interests

 

Complainant alleges that Respondent’s use of Complainant’s mark in the disputed domain name as a forwarding address to the <new.blogger.com> domain name, which is an opinion posting website for “inflammatory diaries and controversial publishing,” is evidence that Respondent lacks rights and legitimate interests in the disputed domain name. Some support exists for this position; but it has been found in cases where the Complainant had a prior right to the mark infringed upon in the domain name.  See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the "use of complainant’s entire mark in infringing domain names makes it difficult to infer a legitimate use"); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”). 

 

However necessary and worthwhile to the future of mankind that Complainant’s intended use of the domain name might be, Complainant conceded that Respondent made a use of the disputed domain name, and while it might not be as worthwhile a use as Complainant proposed for the domain name, public opinion sites and portals to public opinion sites are an appropriate use for Internet development. 

 

The Panel does not address Respondent’s contention that the term “Twisted Pair” is a generic or descriptive term commonly used to refer to the electrical cable that connects computer networks although some holdings would support such a contention. See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) (“Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also CRS Tech. Corp. v. Condenet, Inc., FA 93547 (Nat. Arb. Forum Mar. 28, 2000) (“[C]oncierge is not so associated with just one source that only that source could claim a legitimate use of the mark in connection with a website.”); see also Seaway Bolt & Specials Corp. v. Digital Income Inc., FA 114672 (Nat. Arb Forum Aug. 5, 2002) (finding that because the domain name was a generic term and there was no evidence that Respondent knew or should have known of Complainant at registration, Respondent’s use of the domain name gave rise to rights and legitimate interests). However, the Panel gave no weight to Respondent’s inadequate deficient Response.

 

Complainant concedes that Respondent registered the disputed domain name four years before Complainant could have begun to establish rights in a TWISTED PAIR mark under any evidence before the Panel; and, Complainant concedes that Respondent used the domain name as a public opinion site, a manner that has not been found to be inappropriate for Internet development. See Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000) (finding that Respondent does have a legitimate interest in the domain name where Complainant applied for registration of the mark after Respondent registered the domain name and Complainant has not proven any earlier use of the mark); see also Warm Things, Inc., Inc. v. Weiss, D2002-0085 (WIPO Apr. 18, 2002) (finding that Respondent had rights or legitimate interests in a domain name when its registration of that domain name occurred before Complainant had established rights in its alleged mark).  Further, Complainant concedes that it contacted Respondent by e-mail and made an offer to purchase the domain name and that Respondent responded to the e-mail, in which Respondent set a price for the domain name at $2,000.  This concession rebuts Complainant’s claim that Respondent has held the domain name passively, holding it solely for sale to Complainant.  See Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (finding that Respondent’s operation of a bona fide business of online prop rentals for over two years was evidence that Respondent had rights or legitimate interests in the disputed domain name); see also Bankinter S.A. v. BI Fin. Inc., D2000-0460 (WIPO Sept. 5, 2000) (“By September 1999, when first approached by the Complainant, the Respondent or its predecessors had used the <bankinternet.com> website for almost 4 years, thus demonstrating "a bona fide offering of goods and services.").

 

Complainant did not satisfy the burden of showing that it has rights to and legitimate interests in the disputed domain name and that Respondent has no such rights under UDRP Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent acted in bad faith because Respondent is not making a legitimate use of the infringing domain name and that Respondent’s domain name prevents Complainant from reflecting its mark online. Complainant does not address the reality that Respondent made this filing four years before Complainant first organized its business in the State of New Jersey, and thus four years before Respondent could have had any notice—even constructive—that Complainant intended to develop a business under that name.

 

The Panel does not address Respondent’s contention that it could not have registered the disputed domain name in bad faith, as it is made up of a phrase that is generic or descriptive in the computer field, although there would be some support for such a contention. See Canned Foods Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (holding that where the domain name is a generic term, it is difficult to conclude that there was a deliberate attempt to confuse on behalf of Respondent, and stating that “[i]t is precisely because generic words are incapable of distinguishing one provider from another that trademark protection is denied them.”).

 

Complainant did not produce evidence of use in time prior to the date that Respondent registered and started using the disputed domain name.  While Complainant could have begun to establish such rights at an earlier time, it produced no evidence to support any such claim. See Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) (“We are of the unanimous view that the trademark must predate the domain name.”); see also Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO October 5, 2001) (finding that it is impossible for Respondent to register a disputed domain name in bad faith if Complainant's company did not exist at the time of registration); see also Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where Respondent registered the domain prior to Complainant’s use of the mark).

 

Looking at the totality of the circumstances, the Panel finds that Complainant failed to show that Respondent acted in bad faith in registering and using the domain name in this dispute. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that Respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with Complainant, and thus is the equivalent to bad faith use).

 

Complainant did not make the necessary showing under UDRP Policy ¶ 4(a)(iii).

 

Reverse Domain Name Hijacking

 

In its deficient Response, Respondent argued that pursuant to UDRP Rule 15(e),

Complainant was aware that it had no rights to the TWISTED PAIR mark at the time that Respondent registered the disputed domain name, and that this shows that the Complaint was brought in bad faith. See Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that Respondent's registration of the <aspengrove.com> domain name two years before Complainant's incorporation justified a Reverse Domain Name Hijacking ruling).

 

While the evidence establishes that Complainant knew of Respondent’s use of the domain name at a point in time four years earlier to its initial claim of rights, the Panel is limited to the papers before it in making a determination of reverse domain name hijacking.  Respondent had the burden of proof in establishing reverse domain name hijacking by making a showing of “unassailable right or legitimate interest in a disputed domain name,” a burden of proof that is almost impossible to make in a deficient Response that cannot be given weight. See Verkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (holding that the burden of proof rests with the domain name registrant to show that it has an unassailable right or legitimate interest in a disputed domain name when a claim of reverse domain name hijacking is made); see also Credit Suisse Group v. Leu Enters. Unlimited, FA 102972 (Nat. Arb. Forum Feb. 23, 2002) (finding no Reverse Domain Name Hijacking where “the Panel consider[ed] the Complaint to have been misconceived rather than brought in bad faith”).

 

The Panel is without the necessary documentation to make such a finding.

 

DECISION

Having failed to establish all three elements required under the UDRP Policy, the Panel concludes that relief shall be DENIED.  Accordingly, it is Ordered that the <twistedpair.com> domain name NOT BE TRANSFERRED from Respondent to Complainant.  The Panel ORDERS that this Complaint be DISMISSED.

 

 

Hon. Carolyn Marks Johnson, Panelist
Dated: March 30, 2004

 

 

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