Twindent AB v. twinkles.com
Claim Number: FA0412000391308
PARTIES
Complainant
is Twindent AB (“Complainant”) represented
by T. Michael Davis, of Scandia-Germania-Davis, PLLC,
P.O. Box 9194, St. Paul, MN 55109. Respondent
is twinkles.com (“Respondent”),
8310 Cheshire Vale Street, Houston, TX 77024.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <twinkles.com>,
registered with Network Solutions, Inc.
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Barry
Schreiber as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on December
23, 2004; the National Arbitration Forum received a hard copy of the Complaint
on December 27, 2004.
On
December 28, 2004, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <twinkles.com>
is registered with Network Solutions, Inc. and that Respondent is the current
registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
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
December 28, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 17, 2005 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@twinkles.com by e-mail.
A
timely Response was received and determined to be complete on January 18, 2005.
On
January 21, 2005, the Forum received a timely Additional Submission from
Complainant pursuant to the Forum’s Supplemental Rule # 7.
A
timely Additional Submission was received from Respondent on January 26, 2005
pursuant to the Forum’s Supplemental Rule #7.
On January 28, 2005, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Barry Schreiber as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Respondent
holder of <twinkles.com> is, upon information and belief, not a
company or business of any form and is, upon information and belief, not
performing business activities of any kind. Ms. Marian Chin is the
administrator and filed the original registration for the domain.
Upon
information and belief, from approximately November 1974 through June 1998, Ms.
Chin and her husband owned a needlepoint store in Houston, Texas known as
“Twinkles”. On June 30, 1998, Ms. Chin closed her former business. In relation
thereto, on June 19, 1998, an article ran in the Houston Chronicle regarding
the closing.
The
newspaper article addressed the history of the one-time business as well as
both the closing and Ms. Chin and her husband’s plans for the future in the
business of currency trading. The newspaper article confirms that the Chins
were to hold a going out of business sale for “Twinkles” and finally ceased all
business activities and closed the doors on June 30, 1998.
Thereafter,
on July 1, 1998 the predecessor to TWINDENT AB, Echodent AB, filed for a
trademark with the United States Patent and Trademark Office (“USPTO”), which
was assigned Serial Number 75/511829. The TWINKLES trademark was eventually
registered with the USPTO and given Registration Number 2435626 on March 13,
2001. The filing of Complainant’s
trademark application, as is general practice, was posted on the USPTO’s
website within approximately one (1) month of its filing, that is in July or
August 1998. After it was eventually registered, the trademark was assigned to
TWINDENT AB by Echodent AB on July 1, 2003. That assignment was filed with the
USPTO on August 10, 2003.
Months
after the filing of Complainant’s trademark application, more specifically on
September 9, 1998, upon information and belief, aware of Complainant’s
trademark filing and business activities and with no intent to use the domain –
having ceased all business operations more than two (2) months earlier –
Respondent proceeded to register the domain name <twinkles.com>. Since that time, upon information and
belief, Respondent has never used the domain in relation to a legitimate
website or in relation to any business or other activities. Nor at any time has
Respondent asked for or been allowed to license rights to use Complainant’s
TWINKLES mark.
On
numerous occasions in the past, Complainant, both on its own and by its
counsel, has attempted to contact Respondent to advise Respondent of
Complainant’s rights in the registered TWINKLES mark and to request Respondent
to stop all use of the TWINKLES mark by transferring the <twinkles.com>
domain name to Complainant. On December 6, 2002, the president of Twindent
AB, Ms. Loberg, sent an e-mail to Ms. Chin asking if the domain were “for
sale”. Ms. Chin responded on January 13, 2003, stating that “…we are open to
entertaining an offer.” On the same day, Ms. Loberg responded asking Ms. Chin
to state “…what kind of offer [she had] in mind.” On January 14, 2003,
admitting that she had ceased using the name, Chin stated, “Twinkle’s was
the name of our business until we retired. It is very difficult to put a
price on those years. I’m not trying to take advantage of you, only to make
letting go worthwhile…. Your
buying the name might be the reason to move past the store idea. Please make
an offer on what the name is worth
to you and your business.” (Emphasis supplied.) Since that time, Ms. Loberg has made offers of $1,000.00 and
$1,500.00.
Here
Ms. Chin has made clear that she is more than willing to sell the domain and in
fact has twice solicited a “worthwhile” offer. Though Ms. Chin could have asked
for the mere costs of transfer, she instead states that any offer made should
be sufficient to make her giving up the domain “worthwhile” and in
accordance with what Ms. Loberg believes the value of the domain is to
Twindent’s business. This is a clear request for a sum in excess of the
transfer costs. Ms. Chin gives no indications at all as to any concrete present
or future plans for use of the domain name other than to state vaguely that she
“…always thinks about reopening one day.” Paradoxically, the retired Ms. Chin
refers to sentimental reasons for registering and continuing to hold a domain
related to a former business, thus admitting she had no present use and no
future plans. Complainant is of the belief that Ms. Chin’s representations
evidence a simple desire to squat on the <twinkles.com> domain in
hopes of attracting a “worthwhile” sum. The self-admittedly retired
Respondent’s inaction over six (6) years confirms all of the above.
Over
this time, Complainant’s counsel also forwarded correspondence via certified
mail return receipt requested to Respondent requesting that Respondent cease
use by transfer of the domain name. Such letters were sent on November 10, 2003
and August 30, 2004. Complainant’s
letter of November 10, 2003 was received by Respondent on November 21,
2003. Despite having received this
letter, Respondent never replied. Thereafter, Respondent apparently moved from
the address provided without apparently ever updating her contact information.
Having received no reply, eventually, on August 30, 2004, Complainant attempted
to contact Respondent again. That letter was returned marked “Forwarding Order
Expired” weeks after being sent.
In
attempting to contact Respondent, Complainant has acted in good faith and used
every available means to contact Respondent, including e-mail and at its given
postal address. Despite all requests and contacts, Respondent has never
communicated with Complainant other than as above and has failed to respect
Complainant’s rights in the TWINKLES mark.
[a.] Respondent’s
Domain Name is Confusingly Similar to Complainant’s Registered TWINKLES
Trademark.
As
presented above, Complainant is the holder of the registered trademark
TWINKLES, which was registered with the USPTO on March 13, 2001. Rulings with
respect to domain name disputes are well settled and hold that a federal
registration creates a presumption that Complainant’s trademark is inherently
distinctive. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO
Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable
presumption that the mark is inherently distinctive. Respondent has the burden
of refuting this assumption); see also Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently distinctive and have acquired
secondary meaning.”). As such, Respondent’s use of Complainant’s TWINKLES mark
creates confusion per se and
significant damage to Complainant’s rights.
Not
only is the domain identical to Complainant’s trademark, confusing similarity
exists with respect to the sound, appearance, meaning, and overall commercial
impression. Respondent’s domain name is, therefore, confusingly similar to
Complainant’s registered mark and <twinkles.net> and <twinkles.org>
domain names. See Oki Data Ams., Inc. v. ASD Inc., D2001-0903 (WIPO Nov.
6, 2001) (“the fact that a domain name incorporates a Complainant’s registered
mark is sufficient to establish identical or confusing similarity for purposes
of the Policy”); see also Nikon, Inc. v. Technilab, Inc., D2000-1774
(WIPO Feb. 26, 2000) (holding that confusing similarity under the Policy is
decided upon the inclusion of a trademark in the domain name); see also
Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that
the top level of the domain name such as “.net” or “.com” does not affect the
domain name for the purpose of determining whether it is identical or
confusingly similar).
Based upon the above facts and
rulings, Complainant has shown a likelihood of confusion. (ICANN Rule
3(b)(ix)(1); ICANN Policy ¶ 4(a)(i)).
[b.] Respondent Has No Rights or Legitimate Interests in Respect of
the Domain Name that is the Subject of the Complaint. (ICANN
Rule 3(b)(ix)(2); ICANN Policy ¶ 4(a)(ii)).
Respondent
has no rights or legitimate interests in the disputed domain name. In order to
have a legitimate interest, Respondent must show rights or a legitimate
interest under any of the following circumstances of UDRP ¶ 4(c). In particular
but without limitation, a respondent may have legitimate rights and interests
in a domain name if: (i) before any notice to respondent of the dispute,
respondent’s use of, or demonstrable preparations to use, the domain name or a
name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) respondent (as an
individual, business, or other organization) has been commonly known by the
domain name, even if respondent has acquired no trademark or service mark
rights; or (iii) respondent is making a legitimate noncommercial or fair use of
the domain name, without intent for commercial gain to misleadingly divert
consumers or to tarnish the trademark or service mark at issue.
Here, though Complainant is required
to show only one (1) of the above, the present facts support a showing of all
three (3) of the above factors.
(i.) Respondent has No Bona Fide Offering of Goods and Services
It
is evident that Respondent is not making any use of the domain name in
connection with a bona fide offering
of goods or services. As a threshold matter, use of a domain name likely to
result in infringement of a trademark is not a bona fide offering of goods or services. See Am. Family Health
Servs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004) (“A
use of a domain name which is likely to constitute a trademark infringement in
the United States is not a bona fide
offering of goods or services.”).
Moreover,
since the very date of registration of the domain on September 9, 1998,
Respondent has made no use of the <twinkles.com> domain name. In
fact, the domain name, since then and even now, leads to a web page for a
web-hosting site. At present, that message presents an advertisement for the
web-hosting company ADDR.COM. Over a period of six (6) years, Respondent has
never developed a website or made any other use of the domain. Nor has
Respondent expressed an intention to do so.
Respondent’s
lack of activity in no way constitutes a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16,
2000) (finding no rights or legitimate interests in the domain name where there
is no proof that Respondent made preparations to use the domain name or one
like it in connection with a bona fide
offering of goods and services before notice of the domain name dispute, the
domain name did not resolve to a website, and Respondent is not commonly known
by the domain name); see also Ziegenfelder Co. v. VMH Enter., Inc.,
D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or
service or develop the site demonstrates that Respondents have not established
any rights or legitimate interests in the domain name).
(ii.) Respondent Has Not Been Commonly Known
by the Domain
Respondent
is not and has not at any time during or for a time prior to registration of
the domain been commonly known by the disputed domain name. Nothing in the
record, including the WHOIS domain name registration information, suggests that
Respondent is commonly known by the domain name pursuant to Policy ¶ 4(c)(ii).
The WHOIS information merely restates the domain. See Tercent Inc. v. Yi,
FA 139720 (Nat. Arb. Forum, Feb. 10, 2003) (stating “nothing in Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not
apply); see also Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also
RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)
(interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been
commonly known by the domain name prior to registration of the domain name to
prevail"). Nor is Respondent authorized or licensed to register or use
domain names that incorporate Complainant’s mark. See Compagnie de Saint
Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no
rights or legitimate interest where Respondent not commonly known by the mark
and never applied for a license or permission from Complainant to use the
trademarked name).
Even
so, since registration, Respondent has taken no steps to make legitimate use of
the <twinkles.com> domain name. By way of example only,
Respondent, upon information and belief, has never taken steps to develop a
website or otherwise. The retired Respondent has even admitted a lack of intent
to use the domain by inferring that the registration is of a sentimental
nature. As such, Respondent lacks any rights and legitimate interests in the
domain name pursuant to Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v.
AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate
interests where (1) Respondent is not a licensee of Complainant; (2)
Complainant’s prior rights in the domain name precede Respondent’s
registration; (3) Respondent is not commonly known by the domain name in
question); see also Broadcom Corp. v. Intellifone Corp., FA 96356
(Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests
because Respondent is not commonly known by the disputed domain name or using
the domain name in connection with a legitimate or fair use).
The
record shows on its face that the now retired Respondent was not commonly known
by the domain name at or for a time before it was registered or at any time
thereafter. Respondent, as disclosed by Respondent in the Houston Chronicle
newspaper article, closed its store and ceased all business activities as of
June 30, 1998. Since that time Respondent does no business under the “Twinkles”
name. Importantly, Ms. Chin in her e-mail with Ms. Loberg admitted so much and
that she is now retired and that her holding the domain is due to sentimental
reasons related to a one-time, non-existent business that no longer existed at
the time of registration of the domain.
(iii.) Respondent is Not Making Legitimate
Non-Commercial or Fair Use of Domain
Respondent
is wholly appropriating Complainant’s mark and has passively held the domain
name since the time of registration in 1998. The use of a domain name that is
identical to Complainant’s mark is not a legitimate noncommercial or fair use
of the domain name pursuant to Policy ¶ 4(c)(i) or (iii). See Boeing Co. v.
Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate
interests where Respondent has advanced no basis on which the Panel could
conclude that it has a right or legitimate interest in the domain names, and no
use of the domain names has been established); see also Ritz-Carlton Hotel
v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that prior
to any notice of the dispute, Respondent had not used the domain names in
connection with any type of bona fide
offering of goods and services); see also Melbourne IT Ltd. v. Stafford,
D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in
the domain name where there is no proof that Respondent made preparations to
use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the
domain name dispute, the domain name did not resolve to a website, and
Respondent is not commonly known by the domain name).
Thus,
Respondent has not established rights or legitimate interests in the disputed
domain name. As such, Complainant has met the requirements of and fulfilled
Policy ¶ 4(a)(ii).
[c.] Domain was Registered and is Being Used in Bad Faith. (ICANN Rule 3(b)(ix)(3); ICANN Policy ¶
4(a)(iii)).
Bad
faith here is evident in numerous ways. Most notably, there is ample evidence
that Respondent has registered or acquired the domain for the purpose of
selling or transferring the domain to Complainant or a third-party in violation
of ICANN Policy ¶ 4(b)(i).
Respondent
attempted to profit from registration of the domain name by offering sale of it
to Complainant. The fact that Respondent did not seek out Complainant for the
sale is of no importance. Respondent’s refusal to respond and voluntarily
transfer a contested domain is evidence of bad faith, even when Complainant
initiates first contact. See Alban Vineyards, Inc. v. Alban, FA 235714
(Nat. Arb. Forum Mar. 16, 2004); see also eBay Inc. v. Hong, D2000-1633
(WIPO Jan. 18, 2001) (finding bad faith where it was complainant who sought out
respondent for sale of the domain and respondent’s failure to positively
respond to a complainant’s efforts to make contact provided “strong support for
a determination of ‘bad faith’ registration and use.”).
Aside
from this, it has been found that a general offer to sell a domain, even where
the respondent has not made a specific offer, constitutes evidence of bad
faith. See Bausch & Lomb,
Inc. v. AWIN, FA 114711 (Nat. Arb. Forum Aug. 12, 2002) (general
offers to sell a domain name, even if no specific price is demanded can be evidence
of bad faith.); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web
Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general
offers to sell domain, even if no certain price is demanded, are evidence of
bad faith”); see also Little Six, Inc. v. Domain For Sale, FA 96967
(Nat. Arb. Forum Apr. 30, 2001) (finding respondents offer to sell the domains
was evidence of bad faith). In the present case, Respondent has made two (2)
written offers to sell the domain.
Together
with Respondent’s offers to sell, Respondent’s failure to develop a website
further supports a finding of bad faith. See Universal City Studios, Inc. v.
Meeting Point Co., D2000-1245 (WIPO Dec. 7, 2000) (finding bad faith where
Respondent made no use of the domain names except to offer them for sale to
Complainant); see also Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27,
2000) (finding that a failure to use the domain name in any context other than
to offer it for sale to Complainant amounts to a use of the domain name in bad
faith).
While
each of the four (4) circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration of a domain name, additional factors
can also be used to support findings of bad faith registration and use.
Precedent requires that the Panel look to the totality of the circumstances. 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”). Bad faith, here, is undoubtedly present.
It
has been held many times that a presumption of bad faith arises where a
respondent was aware of a complainant’s mark, whether actually or
constructively, before it registered or used a disputed domain name. See
Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here
is a legal presumption of bad faith, when Respondent reasonably should have
been aware of Complainant’s trademarks, actually or constructively.”). By
Respondent’s closing of her business on June 30, 1998, Respondent gave up her
rights in the name – and has confirmed abandonment by her words and actions
over the last six (6) years. On July 1, 1998 – subsequent to Respondent’s last
use of the name – Complainant placed the world on notice of its use of the
TWINKLES mark by filing an application with the USPTO. For applications filed
after November 16, 1989, the constructive use provisions of the Lanham Act
allow for nationwide rights as of the filing date. 15 U.S.C. § 1057(c). Since
Respondent ceased use prior to Complainant’s filing of the federal trademark
application with the USPTO on July 1, 1998 and from that time has fully
abandoned the name, constructive knowledge applies to Respondent.
Even
so, Respondent’s registration of a domain that incorporates Complainant’s registered
mark in its entirety, suggests that Respondent knew of Complainant’s rights in
the TWINKLES mark at the time of registration. Respondent registered the domain
name over two (2) months after Complainant’s filing of its application for the
TWINKLES mark – and equally as long after Respondent herself went out of
business and ceased use of the name. Thus, Complainant’s federal trademark
application and its posting in the USPTO public database supports that
Respondent chose the domain with and had at minimum constructive knowledge of
Complainant’s rights. See Samsonite Corp. v. Colony Holding, FA 94313
(Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes
actual or constructive knowledge of a commonly known mark at time of registration);
see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24,
2002) (held “there is a legal presumption of bad faith, when Respondent
reasonably should have been aware of Complainant’s trademarks, actually or
constructively”).
Despite
constructive notice, the fact that Complainant’s application for a mark had not
yet been registered at the USPTO is of no consequence. See 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”); see
also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb.
Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution
Policy does not require “that a trademark be registered by a governmental
authority for such rights to exist”). And even Complainant’s earlier use of the
TWINKLES mark in Sweden and on the Internet should have and likely did serve as
constructive if not actual notice to Respondent. See Koninklijke KPN N.V. v.
Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does
not even require that the mark be registered in the country in which Respondent
operates. It is sufficient that Complainant can demonstrate a mark in some
jurisdiction.).
Moreover
Respondent’s passive holding of the domain name is evidence of bad faith. Over
a period of six (6) years, Respondent has not become commonly known by the
domain and has failed to market any bona
fide goods or services since the disputed domain name was registered.
Respondent’s passive holding of a domain name that is identical to
Complainant’s mark evidences bad faith registration and use pursuant to Policy
¶ 4(a)(iii). See State Farm Mutual Auto. Ins. Co. v. Lee, FA 335445
(Nat. Arb. Forum Nov. 3, 2004) (finding bad faith and cybersquatting “[w]hen a
domain name comprised of a genuinely famous mark is registered and then simply
held by the registrant with no use at all…”); see also Telstra Corp. v.
Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000)
(finding that “it is possible, in certain circumstances, for inactivity by the
Respondent to amount to the domain name being used in bad faith”); see also
Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding
that Respondent made no use of the domain name or website that connects with
the domain name, and that passive holding of a domain name permits an inference
of registration and use in bad faith); see also Mondich v. Brown,
D2000-0004 (WIPO Feb. 16, 2000) (holding that Respondent’s failure to develop
its website in a two (2) year period raises the inference of registration in
bad faith).
Here,
there is no evidence to suggest that Respondent made any use of the <twinkles.com>
domain name, which incorporates Complainant’s well-known TWINKLES mark.
Respondent’s passive holding of a domain name confusingly similar to
Complainant’s registered mark for six (6) years is evidence of bad faith use
and registration pursuant to Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group
Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000)
(finding that merely holding an infringing domain name without active use can
constitute use in bad faith); see also DCI S.A. v. Link Commercial Corp.,
D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of
the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). This
bad faith gesture continues to hinder Complainant’s ability to market itself on
the Internet.
As
further evidence of bad faith, Respondent’s behavior has continued as a
sustained threat for over six (6) years causing Complainant fears that it may
have to file a suit and incur substantial costs in an infringement proceeding
in the case Respondent were to transfer the domain to a party that would more
actively use it. See Compagnie Generale des Matieres Nucleaires v.
Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that, despite
Respondent’s passive holding of the disputed domain name, “Respondent has made
its intention clear and the continuing threat hanging over the Complainant’s
head constitutes bad faith use.”).
Finally,
Respondent’s failure to update and maintain current contact information with
the domain registrar and failure to respond to Complainant’s request for
Respondent to cease use and transfer the domain is further evidence of bad
faith. See Seiko Epson Corp. v. JIT Consulting, FA 95476 (Nat. Arb.
Forum, Oct. 20, 2000) (finding that respondent’s provision of inaccurate
contact information and failure to answer numerous cease-and-desist letters as
well as to respond to the complaint was evidence of bad faith); see also
Epson Corp. v. Distribution Purchasing & Logistics Corp., FA 94219
(Nat. Arb. Forum, Apr. 5, 2000) (finding that failure to provide updated
contact information can be evidence of bad faith); see also Cigna Corp. v.
JIT Consulting, AF-00174
(eResolution, June 6, 2000) (finding that failure to respond to cease-and-desist
letters amounts to an "admission-by-silence" and evidence of both
registration and use in bad faith).
Thus,
Respondent has held the domain in bad faith in numerous manners. As such, the
Complainant has met the requirements under Policy ¶ 4(a)(iii) and the UDRP
generally.
B. Respondent
RESPONSE TO FACTUAL AND LEGAL ALLEGATIONS
MADE IN COMPLAINT
This
Response specifically responds to the statements and allegations contained in
the Complaint and includes any and all bases for Respondent to retain registration
and use of the disputed domain name. ICANN Rule 5(b)(i).
The
article cited by Complainant in the Complaint refers to the plans of opening
and the operation of a currency trading business after the closing of the
needlepoint store named “Twinkles” run by Respondent. While the currency
business was opened and operated for a period of over two years, it was
controlled and operated entirely by Mr. Charles Chin, Respondent’s husband.
Mrs. Marian Chin began work immediately selling the remaining goods from the
store and contacting and contracting with various companies to create the
online business that was operated as <twinkles.com>.
“Twinkles”
commenced doing business as a retail operation in November 1974 and continued
as a retail operation for a period of approximately twenty-four years in
various locations in Houston, Texas. This store specialized in the sale of
needlework products and various other needlework related services.
The
domain in question was registered on September 9, 1998. This registration and
its subsequent use were for an online business based upon the retail locations
previously owned by Respondent. Respondent used the disputed domain in commerce
from November 1998 to November 1999.
This business was a both an online-catalogue/shop of the merchandise
previously offered by Respondent in their retail location as well as the
expansion of the “Twinkles” business to include other services targeted at a
similar demographic.
In 2003, Mrs.
Chin did receive two unsolicited offers in an e-mail exchange from
Complainant to purchase the <twinkles.com> domain name. Until Ms.
Loberg, President of Twindent AB, chose to contact her regarding the sale of
the domain in question, Mrs. Chin had no thoughts of selling. It is only after
Ms. Loberg contacted Mrs. Chin did she even consider it as an option. Mrs. Chin clearly stated that she was “not
trying to take advantage of [Mrs. Loberg],” when she decided to entertain the
idea of an offer for the sale of the domain. If Mrs. Chin had had intentions of
squatting on <twinkles.com> to sell it for a large sum of money,
it is most likely that she a) would have a past record of doing the same for
other domain names, which she doesn’t (the only domain that she currently owns
is <twinkles.com>) and b) would have actively marketed the domain
for sale, and not let someone make an offer to her.
[a.] The domain name is
not identical or confusingly similar to a trademark or service mark in which
the Complainant has rights.] ICANN Rule 3(b)(ix)(1); ICANN Policy ¶ 4(a)(i).
The
domain is not confusingly similar to the trademark held by Complainant. In
respect to meaning, look and to overall commercial impression, similarities do
not exist. For twenty-four years, Respondent gave meaning to the word
“Twinkles” as representation for their needlework store. In those twenty-four
years, thousands of repeat customers walked though the door of one of
Respondent’s retail locations with their spouses knowing that when they said
they were going to “Twinkles” they meant to Respondent’s needlework store, not
to get jewelry put upon their teeth.
The
logo that Complainant uses is also very different to Respondent’s.
Complainant’s is portrayed in all capital letters, in colors never used by
Respondent, and in distinctly different fonts. The commercial impression of
these two businesses is not similar either. Their headquarters are over 3,000
miles apart and they sell two separate, unrelated products. The homey, store
down the street feel of Respondent’s Twinkles is not reminiscent of the Twindent
AB’s web store in any manner.
[b] The
Respondent Has Rights and Legitimate Interests in Respect of the Domain Name
that is the Subject of the Complaint.
ICANN Rule 3(b)(ix)(2); ICANN Policy ¶ 4(a)(ii).
Respondent has rights and legitimate
interest in the disputed domain name. In order to have a legitimate interest,
Respondent must show rights or a legitimate interest under any of the following
circumstances of UDRP ¶ 4(a)(ii). In particular but without limitation, a
respondent may have legitimate rights and interest in a domain if: (i) before
any notice to respondent of the dispute, respondent’s use of, or demonstrable
preparations to use, the domain name or a name corresponding to the domain name
in connection with a bona fide offering of goods or services; or (ii)
respondent (as an individual, business or other organization) has been commonly
know by the domain name, even if respondent has acquired no trademark or
service mark rights; or (iii) respondent is making a legitimate noncommercial or
fair use of the domain name, without intent for commercial gain to misleadingly
divert customers or to tarnish the trademark or service mark at issue.
In this situation, Respondent can
offer support showing that two of the above three factors have been fulfilled.
(i.)
Respondent
has a bona fide offering of goods and services before any notice of dispute
(ii.)
Whether
Respondent (as an individual, business, or other organization) has been
commonly known by the domain name, even if Respondent has not acquired
trademark or service mark rights
Respondent has been commonly known
by contested domain name, even though service mark rights have not been
acquired. A Harris County DBA was filed on November 20, 1998 for both
Twinkles.com and the Twinkles Needlework Gallery DBA was renewed. In the
preceding month, Respondent established bank accounts using Twinkles.com DBA
papers. These accounts were held at Bank United and company funds were
transferred in and out of these accounts as necessary. Before establishing a
business at <twinkles.com>, Respondent was known for twenty-four
years as Twinkles Needlework Gallery in various retail locations in the
Houston, Texas area. A letter announcing the opening of <twinkles.com>
as a business run by the Respondent was sent to approximately 3,500 people
before the opening took place.
The service mark rights were not
acquired, as Respondent didn’t feel that they were necessary to do business, as
this is how they had operated for twenty-four years prior to opening <twinkles.com>.
This is of no consequence, even though the mark was not acquired, Respondent,
as both a representative of <twinkles.com> as well as the owner of
the company has been commonly known by the domain name.
[c.] Domain Was Not Registered and Being Used
in Bad Faith ICANN Rule 3(b)(ix)(3); ICANN Policy ¶ 4(a)(iii).
(i.)
Respondent
has not registered or has acquired the domain name primarily for the purpose of
selling, renting, or otherwise transferring the domain name registration to the
Complainant who is the owner of the trademark or service mark or to a
competitor of that Complainant, for valuable consideration
It was never the intention of
Respondent to register the domain in question for the primary purpose of
selling, renting or otherwise transferring the domain name registration to
Complainant. If the Panel looks at the “totality of circumstances” surrounding
the registration of the domain in question, it would be undoubtedly clear that
the registration of <twinkles.com> by Respondent was not done in
bad faith.
When this domain was acquired,
Respondent had no knowledge of the trademark held by Complainant and registered
it to open an online business expanded, but reminiscent of the store that they
once owned. The knowledge of the trademark held by Complainant was only
acquired after notice of this dispute claim was filed. The trademark was
granted in 2001, well after the domain had been registered and as New
Zealand v. Virtual Countries, Inc, D2002-0754 (WIPO Nov. 27, 2002), the
Panel rejected New Zealand government’s claims on the domain in question citing
that the New Zealand government did not own any trademark registration in the
name – even though it had applied for registration at the time. This is the
same as in this case; the domain was registered prior to Complainant actually
receiving trademark registration, even though trademark rights had been applied
for.
In addition to above, no knowledge
of Complainant’s desire to open an online presence was had before her initial
contact in December 2002. At this time, Complainant owns and operates a
business at <twinkles.net> as well as opens <twinkles.org> (this
site has a placeholder page, with no intention statement as known by
Respondent). According to the WHOIS information of <twinkles.net> this
site was registered on May 17, 2000. This was well after Respondent had
registered <twinkles.com>. This is the first known use of the
trademark “Twinkles” by Complainant.
While it is true that the retail location of “Twinkles” was
closed on June 30, 1998, all business transactions for this company did not
cease on that day. Transactions applicable to the “Twinkles” business ran far
into 1999 and the DBA for both Twinkles.com and Twinkles, Inc. are still valid.
This supports Respondent’s claim that the registration of <twinkles.com>
in September 1998 was not in bad faith. The trademark registered by
Twindent AB is specific to “tooth jewelry,” and the service mark held by
Respondent is specific to business relating to the offering of needlepoint and
boutique items from all of their previous locations. Respondent, at present
time or in the last thirty years, has not given up rights to the unregistered
service mark of “Twinkles.” DBA papers for the assumed name of both Twinkles
Needlework Gallery and Twinkles.com are in effect in Harris County until 2008.
It is clear that the registration in September 1998 was simply a way to further
the business dealings that were still in effect. As Respondent was operating a
business at the time of the registration of the domain, fair use rules would
apply.
There
is no time restriction upon the creation of a site for after a domain has been
registered. A business offering bona fide products and services was created and
posted to the site when first registered and will be again. This constitutes
fair use of the domain name and rebuts Complainants accusation of registration
in bad faith.
Changes
to the contact information record were submitted on June 27, 2002. This update
included all new contact information and was confirmed by VeriSign, Inc. on
both June 28, 2002 and July 5, 2002. After receiving confirmation, Respondent
believed that all information was updated and correct.
Respondent
both provided a bona fide business selling of goods and services on the domain
in question as well as made herself commonly known by the domain name. Registration
was not done in bad faith and Respondent has met the requirements to keep the
domain in question.
In
the spirit of true entrepreneurship, Respondent is always examining new
business models in anticipation of the next business phase of Twinkles.
C. Additional Submissions
Respondent has failed to provide
sufficient evidence to overcome the facts asserted by Complainant. In fact, the
information provided by Respondent merely serves to confirm the assertions of
Complainant.
[a.] Respondent’s
Domain Name is Confusingly Similar to Complainant’s Registered TWINKLES
Trademark
The
domain name at issue is identical to Complainant’s famous mark. Even addition
of additional words to a trademark does not change their being identical. See
Prudential Ins. Co. of Am. v. Irvine, FA 95768 (Nat. Arb. Forum Nov. 6,
2000) (finding that the domain name is identical to Complainant’s PRUDENTIAL
ONLINE trademark…also the root of the domain name, namely the word
"Prudential," is identical to Complainant’s mark…thus, the domain
name in its entirety is confusingly similar to Complainant’s family of marks).
In the present case, Respondent’s domain contains no additional matter, but is,
in fact, completely identical to Complainant’s registered mark.
[b.] Respondent Has No Rights or Legitimate Interests in Respect of
the Domain Name that is the Subject of the Complaint. (ICANN
Rule 3(b)(ix)(2); ICANN Policy ¶ 4(a)(ii)).
Nothing Respondent has produced
supports any argument that Respondent for the past more than at minimum five (5) years has
made or has been making any bona fide
offering of goods and services, is or has been commonly known by the domain, or
is making any legitimate noncommercial or fair use of the domain. In fact,
Respondent’s documents confirm the absence of such. In addition to the below,
Complainant refers the Panel to Complainant’s arguments made in Section [b.] of
the Complaint.
It
is important to note that as to Policy ¶ 4(c)(ii), at the time Respondent
registered the domain, Respondent had fully given up the “Twinkles” name by
retiring and closing the store. Respondent has not produced a single document
predating September 26, 1998, that shows that it had an intention to use or be
known by the “Twinkles” name again. Accordingly, from June 30, 1998 through the
date of registration on September 9, 1998 and even through late November 1998
when Respondent actually filed for the “Twinkles” related d/b/a’s and allegedly
posted a website, Respondent had not been and was not commonly known as
“Twinkles”. Thus, at the time of registration Respondent was not commonly known
by the name. This, Respondent admits by means of the Harris County d/b/a
filings and the newspaper article.
And
in the present case, even accepting arguendo,
that Respondent actually posted a website and conducted business for one year
from November 1998 to November 1999, the last more than five (5) years of not
making any bona fide offering of
goods and services, not being commonly known by the domain (and clearly
abandoning all trademark rights), and not making any legitimate noncommercial
or fair use of the domain, should not be deemed by the Panel to constitute
rights or legitimate interest under Policy ¶¶ 4(c)(i), (ii), or (iii).
[c.] Domain was Registered and is Being Used in Bad Faith. (ICANN Rule 3(b)(ix)(3); ICANN Policy ¶
4(a)(iii)).
Respondent has registered and is
presently using/holding the domain in bad faith. Bad faith in this case is
evidenced in numerous ways set forth in the Complaint. Even assuming arguendo, that Respondent posted a
website from November 1998 through November 1999, bad faith exists by means of
Respondent’s offer to sell for a “worthwhile” amount (exceeding $1,500.00), by
its passive holding of the domain, by its having had actual and constructive
notice at the time of registration, by the threat presented to Complainant by
Respondent’s continued holding of the domain, and by Respondent’s failure to
maintain up to date contact information – and, in fact, changing information
for the purpose of misleading. The Panel is, therefore, referred to
Complainant’s earlier arguments, which together with the below, clearly support
Complainant’s arguments of bad faith.
As
to bad faith, the facts presented by Respondent actually show that, at the time
she admittedly went out of business, on June 30, 1998, Respondent had no intention whatsoever of
opening an online store. At that time, the facts support, that she had not even
considered such an idea. If Respondent had truly had an intention to open an
online business, the first thing she would have done would have been to secure
the domain. Without such, it could easily have been taken by another and, thus,
become impossible to develop an e-commerce site. The simple truth is that when
one knows one definitely desires to post a website, one does not hesitate to
register the domain name one alleges it intends to use. In addition, the
newspaper article itself is evidence that an e-commerce site was thought of
long after Respondent’s going out of business. Had an e-commerce site been on
Respondent’s mind prior to closing, the newspaper article would have been a
very opportune time to publicize such, as the Chins did so well for their
currency trading business. The fact is, however, an e-commerce website was not
in their thoughts.
This is important because if
Respondent had no intention to use the “Twinkles” name any longer after June
30, 1998, Respondent, thus, clearly had the intention to abandon the mark,
which in fact it did. As such, this would make Respondent subject to any notice
requirements any other potential user would be subject to if Respondent later
decided to use the mark for something other than in a trademark class meant for
retail businesses relating to needlepoint. Here, as Respondent’s “Placeholder
Page” shows, Respondent’s first thoughts on posting the website appeared not to
include anything related to needlepoint, but instead was to be a website for a
“specialty gift shop” for “unusual specialty items and great gift ideas.” This
would be a new and different trademark use by Respondent.
Tellingly,
if at all, Respondent appears not to have conceived of its e-commerce site or
secure the domain until nearly a
quarter (¼) of a year after she both closed the doors of her former
business and abandoned “Twinkles”. Then she waited an equally long period of
time again to post a website. One would think the possibility of losing a trade
name to which Respondent claims it was allegedly so greatly attached – if in fact
she had had the intention to continue using the name in any manner, especially
in an online business – would have certainly caused Respondent to secure the
domain and post a site long before the passing of nearly a half (½) of a year.
These
are important points since they go to the fact that once Respondent had ceased
all use, the issue of actual and/or constructive notice becomes a key issue. If
Respondent had actual or constructive notice of the Complainant’s use of the
TWINKLES mark, the registration of the domain should be considered to have been
made in bad faith. Here Respondent clearly had both actual and constructive
notice of Complainant’s mark.
The
facts show that Respondent ceased all business activities on June 30, 1998 and,
coincidentally, the next day, Complainant filed for its now registered federal
trademark for TWINKLES on July 1, 1998. As discussed above, Respondent fully
abandoned “Twinkles” and had never thought of nor was even considering
registering a domain, least of all <twinkles.com>. Their thoughts
were on retirement and part time currency trading. Respondent fails to provide
any document whatsoever that shows the website was conceived of in its alleged
form prior to November 1998. As such, and even more importantly, there is not one
single document provided, dated before the June 30, 1998 closing or even before
the September 9, 1998 registration, that clearly shows that the November 1998
e-commerce site was the reason for the September registration of the domain.
Accordingly, the registration should be questioned and a finding of
registration in bad faith cannot be
ruled out on the documents provided.
Complainant,
on the other hand, filed its trademark application on July 1, 1998. Prior to
that time, from as early as February 1998, and between July 1, 1998 and
September 9, 1998, Complainant had used the TWINKLES mark in various manners
both under the common law, on the Internet, and otherwise. As stated in
Complainant’s trademark registration, Complainant’s first use anywhere was in
February 1998. Complainant had begun making common law Internet use of TWINKLES
in the beginning of March 1998. It was at that time that Complainant posted its
webpage bearing the TWINKLES mark. That webpage, personally created by Ms.
Lotta Loberg, used “TWINKLES” as both metatags and keywords. At the time the
<echodent.com> domain was purchased, Complainant simultaneously created
the website and then submitted these pages to search engines such as AltaVista,
Yahoo!, etc. These pages would have been, thereby, as is normally the case,
carried into still other major search engines and this use was generally
available to the world via the Internet.
Thus,
it is inconceivable that Respondent did not know of Complainant’s website and
Complainant’s use of the TWINKLES mark. Even well prior to going out of
business on June 30, 1998, any search of the Internet for “Twinkles” would have
been sure to – and quite certainly had to have – provided Respondent with
actual notice of Complainant’s TWINKLES products at Complainant’s
<echodent.com> website, a domain which was originally registered on March
3, 1998. Thus, Respondent surely had actual notice of Complainant’s use after
March 1998. Upon information and belief, this was the true reason for
Respondent’s initial interest and registration of the domain; to keep it from
Complainant and later sell it at a good profit. The fact that Ms. Chin has can
not document prior to registration of the domain her desire to use “Twinkles”
on an e-commerce site, has requested a “worthwhile” offer from Complainant, and
has passively sat on the mark now for somewhere between five to six (5 - 6)
years, supports such an interpretation of the facts.
Regardless,
once Complainant filed its federal application, Respondent also had
constructive notice under federal trademark law. For applications filed after
November 16, 1989, the constructive use provisions of the Lanham Act allow for
nationwide rights as of the application’s filing date. 15 U.S.C. § 1057(c).
These rights are conditional solely upon the mark eventually being registered,
which occurred for Complainant on March 13, 2001. This mark was duly assigned
to Complainant by its predecessor company on July 1, 2003 which was, in turn,
duly recorded with the U.S. Trademark Office on August 10, 2003.
Prior decisions state that
registration of a domain name with actual or constructive notice of another’s
trademark, whether common law or federally registered, is evidence of bad
faith. It has been held many times that a presumption of bad faith arises where
a respondent was aware of a complainant’s mark, whether actually or
constructively, before it registered or used a disputed domain name. See
Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here
is a legal presumption of bad faith, when Respondent reasonably should have
been aware of Complainant’s trademarks, actually or constructively.”)
(emphasis supplied). Based upon these facts, Respondent had clearly abandoned
all intention to continue use of “Twinkles” and, when it registered or,
alternatively, used the domain, must be considered to have been fully on
notice, both actually and constructively, of Complainant’s use of TWINKLES at
the time of registration on September 9, 1998. Accordingly, bad faith is clear.
Factually
speaking, Respondent further has not provided any actual Internet printouts
from that time showing that the website actually existed nor does she ever
allege that actual sales were ever made nor offer any amounts of such nor state
in which months sales were made, if any. From the information provided by
Respondent the most for which she provides actual evidence is that she may have
developed and may have considered posting a website at one time, and in such
case, well after Complainant’s first use of the trademark on the Internet in
March 1998 and long after Complainant’s application for federal trademark
protection on July 1, 1998. Accordingly she did so subsequent to abandoning her
use and after having constructive if not also actual notice of Complainant’s trademark
use and rights.
The
most we see from Respondent are “E-mail Exchange, 2coolweb.com and Marian Chin”
regarding “Hosting Setup Talks” dated in mid to late November 1998. We are provided a “screenshot” of a
“properties folder” allegedly showing a date of September 26, 1999 though the
date on the actual CD file is September 27, 1999. We are provided with various
.html files which are alleged to be from the website as operated by Respondent.
The only Internet printout she offers is that of a “Placeholder Page” (which is
dated “1/17/2005”) and was allegedly posted at the domain from September to
November 1998.
Assuming, arguendo, that Respondent actually posted and ran a website – and
recalling that such would have been posted after her having abandoned use of
the mark and after the domain was registered with notice of Complainant’s mark
– Respondent’s allegedly still existing Harris County filings for “Twinkles
Needlework Gallery” and “Twinkles.com” are of no consequence. The general time
limit suggested in the actual application for a Harris County d/b/a filing is
ten (10) years. The fact that these may still be in the Harris County database
does not mean Respondent ever used the businesses or that they continue to be
used today. In fact, Respondent is clear that neither has been in use for an
extensive period of time. That notwithstanding, even if one were to accept
Respondent’s assertions, Respondent admits that any use on her part related to
the name or the domain ended in November 1999. Thus, Respondent admits non-use
for a period, at minimum, exceeding
five (5) years. Even a search of the Texas database confirms no
corporate existence, showing that no business filings for either “Twinkles
Needlework Gallery” or “Twinkles.com” are registered as corporations with the
Texas Comptroller of Public Accounts.
Aside from the above, bad faith is
evident in Respondent’s providing or maintaining false or misleading contact
information with the registrar. Respondent has stated that her most recent
amendment to her contact information record was on June 27, 2002. In fact,
after receiving the undersigned’s letter dated August 30, 2004, Respondent
apparently changed information to make it more difficult for Complainant’s
counsel to locate her. When one compares the WHOIS search performed on December
22, 2004 with the WHOIS search performed on August 25, 2004, one sees that the
“Administrative Contact” information was removed, which contained her name,
“Chin, M”. In doing so, she, upon information and belief, also removed her old
phone number and her former number at her Cheshire Vale Street address. Despite
removing that old phone number, an old, no longer valid residential address was
left present. Since this address exists in more than one place, one can only
assume that this was done on purpose.
This
occurred at some point subsequent to Respondent’s receipt of counsel for
Complainant’s letter dated August 30, 2004. Respondent, in bad faith, has
purposely mislead by providing false and/or omitting correct contact information
with respect to maintaining her registration. See IndyMac Bank F.S.B. v.
Fristch, FA 133762 (Nat. Arb. Forum Jan.13, 2003) (false or misleading
information with respect to a domain registration is evidence of bad faith); see
also Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000)
(finding that the residual bases provided by the preamble of Policy paragraph
4(b), includes a respondent’s submission of false or misleading contact
information in connection with registration of a domain name).
Finally, a National Arbitration
Forum decision exists which is instructive in the instant case. That decision, Touch
Indus., Inc. v. Info Touch Corp., FA 99658 (Nat. Arb. Forum Oct. 4, 2001)
involved a complainant with a federally registered trademark and a respondent
that registered its former trade name – later complainant’s exact trademark –
as a domain name. Complainant was named Touch Industries, Inc., Respondent
named Info Touch Corporation d/b/a Homestore.com, and the domain in dispute was
<infotouch.com>.
In Touch Indus., Respondent
had previously been known as Info Touch, Inc.
Respondent subsequently, it appears, became known as Info Touch
Corporation d/b/a “Homestore.com”. Thus, it apparently continued its formal
registered business name as “Info Touch Corporation”. At some point thereafter,
which is unclear in the decision, it continued with the registered name Info
Touch, but began doing business as “Homestore.com”. Despite such, on February
9, 1996, Respondent, Info Touch Corporation d/b/a the Homestore.com, registered
the domain name <infotouch.com>. Six (6) months thereafter, Complainant’s
trademark INFOTOUCH was registered with the U.S. Trademark Office on May 7,
1996. Prior to that, like Complainant here, Complainant had made common law use
of the mark as early as February 1992.
Here the facts are rather similar to the
present case. In the case at bar, Complainant had first use as early as
February 1998 and had begun common law Internet use in the beginning of March
1998. It was at that time that Complainant posted its webpage bearing the
TWINKLES mark, which contained metatags and keywords for “Twinkles”, and
Complainant simultaneously submitted these pages to search engines such as
AltaVista, Yahoo!, etc.
Respondent
subsequently and admittedly went out of business and ceased use of “Twinkles”
on June 30, 1998, with no proven plans of any continued use, evidenced by its
failure to register the domain for a significant time after going out of
business. Complainant then filed its federal trademark application on July 1,
1998 which, in turn, was eventually registered on March 13, 2001.
The
main difference between the present case and Touch Indus. is that
Respondent there never responded to the Complaint filed with the National
Arbitration Forum. Accordingly it is alleged, but not known what type of use
Respondent in that case might or might not have alleged.
Regardless,
as in the present case, Respondent in Touch Indus., passively held the
domain, there for a period of six (6) years. During that time, the decision in Touch
Indus. makes clear, that Complainant there had developed both common law
and later federal trademark rights in the name. Most importantly, despite
Respondent’s having been previously known by that very mark and, in fact, being
registered as a corporation by that very name and served under that name at the
time of the filing of the domain complaint (e.g., Touch
Indus., Inc. v. Info Touch Corp.) – Info Touch Corporation’s registration of
the domain six (6) years before was deemed by the Panel to have been made in
bad faith.
The
reading of this decision raises a pair of important points that relate to the
instant case. First, even if Respondent was, even at the time of the dispute,
formally registered and known by a name exactly the same as the domain name in
dispute, but doing business under a different d/b/a, such continued use or
registration as a business name was not sufficient to find that Respondent was
using the domain with bona fide offering of goods or services, was commonly
known by the domain, was making a legitimate noncommercial or fair use of the
domain, or had registered the domain name in good faith.
Most
surprising was the finding that Respondent was not or had not been “commonly
known” by the name, “Infotouch”, when in fact Respondent was named in the
Complaint as “Info Touch Corporation”. That is, despite Respondent, Info Touch
Corporation’s apparent continued registered status under that name, its earlier
having been known as “Info Touch, Inc.”, and the fact that it was served with
the Complaint under that very same name, the Panel found that Respondent had
not been “commonly known as” Info Touch.
Second,
despite Complainant’s having borne that name at the time it registered the
domain <infotouch.com>, the Panel found that the domain had been
registered in bad faith. Bad faith was based upon Complainant’s long-term
passive holding of the domain and Respondent’s knowledge of Complainant’s
trademark (whether actual or constructive is not clearly stated).
Based
upon all of the above, even accepting arguendo,
that Respondent actually posted a website and conducted business for one year
from November 1998 to November 1999, Respondent’s actions and inaction over a
period of more than five (5) years should be deemed by the Panel to constitute
bad faith registration and use under ICANN Rule 3(b)(ix)(3); ICANN Policy ¶¶
4(a)(iii).
Finally,
as stated in the Complaint, precedent requires that the Panel look to the
totality of the circumstances in finding bad faith. 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”)). Bad faith, here, is undoubtedly present. Thus, while each of the
four (4) circumstances listed under Policy ¶ 4(b), if proven, evidences bad
faith use and registration of a domain name, additional factors can also be
used to support findings of bad faith registration and use.
Based
upon the Complaint, all of Complainant’s exhibits, and the cases and argument
submitted by Complainant herein, Complainant requests that the Panel issue a
decision transferring registration of the domain-name in dispute to the
Complainant. (ICANN Rule 3(b)(x); ICANN Policy ¶ 4(i)).
Respondent has proved by exhibits
that Respondent has been known as “Twinkles” since 1974; although closing a
retail store in 1998, Respondent’s intention to open an online store are
evidenced by registration of the domain name, communications with 2coolweb as
the host, and subsequent posting of the online store late 1998. Respondent did
not or will not relinquish Respondent’s service mark.
[a.] Respondent’s
Domain Name is NOT Confusingly Similar to Complainant’s Registered TWINKLES
Trademark
There can be no confusion between
needlework and dental jewelry. Claimant’s trademark is for dental jewelry as
evidenced by her January 13, 2003 e-mail. Also the trademark seems to be for
the certain style of letters used in Complainant’s mark.
The TWINKLES mark may be
famous in the dental jewelry world, however the twinkles word is used among
various other entities and uses, such as:
1.
Clown http://www.twinklestheclown.com/
2. Bear http://www.bundlesofjoyonline.com/product_info.php/products_id/150
3. Cookie
http://www.cooksrecipes.com/cookie/raspberry_twinkles_recipe.html
4. Ghost
http://iparenting.com/stories/twinkles.htm
5. Fish
http://www.evanovich.com/bbs/profiles/profile17.html
6. Flying Horse http://www.petitetica.com/sparkles.asp
7. Doll Kit http://www.corlissann.com/twinkles.htm
8. Flower
http://www.lilybulb.com/l7057.html
Also note that Gund Inc. has
a Twinkles™ Bear as displayed in http://www.bundlesofjoyonline.com/product_info.php/products_id/150
Claimant states that she has
a trademark for Twinkles dental jewelry in her January 13, 2003 e-mail:
“We hold in the us trademark for Twinkles
dentaljewelry” (emphasis
added)
A Google search on January 23, 2005 for “Twinkles” retrieved
93,600 pages.
[b.] Respondent Has All Rights and Legitimate Interests in Respect
of the Domain Name that is the Subject of the Complaint
Complainant Twindent AB is a dental jewelry firm that sells
jewelry that is applied to the teeth through a network of dentists and other
outlets. It is doing business as
Twindent AB, beginning date unknown, and has been the owner of U.S. Trademark
Registrations for TWINKLES since March 13, 2001.
Respondent
registered <twinkles.com> because it was a name used by Respondent
for the previous twenty-four years and believed that no party had exclusive
rights to it. Respondent
owned other Internet domain names, but Respondent is no cyber squatter. Respondent registered <boom50.com>,
<worshipchoice.com>, and <goldenoak.com>. <boom50.com> was to
be a web site for the over 50 year group; <worshipchoice.com> was
envisioned as a site for religious groups/churches to post agendas, events,
services, calendars and more; <goldenoak.com> was a site selling Beanie
Babies™ accessories. These were registered in the planning stages for new
ideas. These registrations have lapsed and were not sold.
Respondent is a serious entrepreneur and
is not a cyber squatter.
Respondent did not register the disputed
domain to sell to Complainant or to any other party. Respondent did not register the disputed domain to disrupt
Complainant’s business. Respondent did
not register the disputed domain to prevent Complainant from reflecting its
trademark in a domain name. Respondent
is not using the disputed domain to derive commercial benefit by confusing
users seeking Complainant’s website. It
is true, as alleged in the Complaint that Respondent indicated it may sell the
disputed domain to Complainant for something “worthwhile”. However, it is undisputed this was in
response to Complainant’s unsolicited inquiry to purchase the domain
name. As alleged in the Complaint, “Ms.
Loberg, sent an e-mail to Ms. Chin asking if the domain were ‘for sale’ ”
(emphasis added). Respondent,
otherwise, never offered to sell the domain name to Complainant or to any
party.
Complainant alleges that Respondent
never developed a website. Respondent did develop a site that was published
November 1998 as evidenced by the communications with the host 2coolweb, the
e-mail referencing the additional extensions needed for credit card
transactions and a copy of the website on CD. Registration with Network
Solutions is current through September 2005.
Also as evidence, the link to <archives.org> shows a posted page
as of October 4, 2000 that notes the closing of the site and welcoming all
customers to contact Respondent by e-mail. Complainant also mentions a “5 year
rule”. This page was still current as of October 4, 2000.
http://web.archive.org/web/*/http://twinkles.com :
Due to time
constraints, we are currently unable to effectively maintain this web-site.
However, we are still very committed to the friendships and relationships of
many years. As we have always said, it was your commitment to us and our shops
that we owe the 24 years that brought us to where we are today. We have heard
comments from "congratulations" to "how could you have left
us!" The second comment was most difficult for us because we knew that it
was time for us to move on, yet we felt the strong ties of time and loyalty that
bound us together. Never was it our intention to abandon you, that is why we
invite you to contact us if you feel we can be helpful in pointing you in the
right direction of having your questions addressed. As always, are hearts are
warmed when we hear from you and when we can be helpful.
Best regards,
Charlie &
Marian
Charlie@twinkles.com
& Marian@twinkles.com
Additionally, in Claimant’s January 13, 2002 email Claimant
acknowledges previously viewing the site:
“I remember your original site and I believe you were a small
business just like me.”
(emphasis added)
Basis for
Respondent to Retain Registration and Use of Disputed Name
Under the Policy, to prevail on its
claim to obtain the rights to the disputed domain, Complainant must demonstrate
three things:
1.
that the disputed domain name is identical or
confusingly similar to its trademark;
2.
that respondent has no rights or legitimate
interest in the domain name; and
3.
the domain name was registered and is being used in
bad faith.
A. Complainant’s
Trademark is Identical to the Disputed Domain
Respondent does not dispute
this element of the Policy. However,
because Complainant has not proven the other elements of the Policy, this is of
no consequence.
B.
Respondent Has Rights And A Legitimate
Interest In The Domain Name
The second element
Complainant must prove is that Respondent has no rights or legitimate interest
in the name. The Complaint fails here.
Paragraph 4(c) of the Policy lists three circumstances that can
demonstrate a registrant’s rights or legitimate interest in the disputed domain
name:
(i)
before
any notice to you of the dispute, your use of, or demonstrable preparations to
use, the domain name or a name corresponding to the domain name in connection
with a bona fide offering of goods or services;
(ii)
you
(as an individual, business or other organization) have been commonly known by
the domain name, even if you have acquired no trademark or service mark rights;
(iii)
You
are making a legitimate noncommercial or fair use of the domain name, without
intent for commercial gain to misleadingly divert consumers or to tarnish the
trademark or service mark.
“Twinkles”
is simply a word to which Complainant does not have exclusive rights. From Twinkles the Clown to Raspberry
Twinkles Cookie, there are literally hundreds, if not thousands, of entities
and individuals all over the world that use “Twinkles” in their names. A January 23, 2005 search on the Internet
search engine <google.com> for “Twinkles” yielded over 93,000 web pages
containing “Twinkles.” This substantial
third-party use is evidence that Complainant does not have exclusive rights to
the term “Twinkles” and, thus, supports Respondent’s legitimate interest in the
disputed domain. See Energy Source Inc. v. Your Energy Source,
FA 96364 (Nat. Arb. Forum Feb. 19, 2001)(“energy source” “not exclusively
associated with Complainant’s business”).
Complainant alleges that Respondent
does not have a legitimate interest because it is not known as “Twinkles”.
However, a domain owner does not have to be known by a domain name to establish
a legitimate interest. It is
well-established that, like common words, anyone is entitled to register a
domain name and the respondents’ legitimate interest is established per se at
the point of registration, since no other party can claim exclusive rights to a
domain name. See Tenenhaus v. Telepathy, Inc., FA 94355 (Nat. Arb. Forum
May 17, 2000) (complainant not entitled to “exclusive use of the domain name
DAF”); see also Trans Continental Records, Inc. v. Compana LLC,
D2002-0105 (WIPO Apr. 30, 2002) (“use
of [LFO.com] . . . even for sale, is a legitimate business; see also Kis
v. Anything.com Ltd., D2000-0770 (WIPO Nov. 20, 2000) (registration of 2 and 3-letter domain
names found to be legitimate.).
As the Panel noted in Kis
v. Anything.com: The Domain Name at issue here is a
second-level domain within the popular ".com" top-level domain.
Respondent chose the name “Twinkles” because it was
a name that Respondent had used for most of the previous twenty-four years,
rather than because it corresponds to Complainant's trademark -- indeed, it
seems unlikely that Respondent was even aware of Complainant's trademark when
it selected the domain name.
Under appropriate circumstances the offering for
sale of a domain name can itself constitute a bona fide offering of goods or
services for purposes of Policy ¶ 4(c)(i).
Complainant alleges that bad faith is shown by
registering the disputed domain seventy days after closing Respondent’s retail
store of twenty-four years. Respondent
conceived the idea of going online prior to June 1998, however preparations for
the store closing consumed all actions up to and even after that date. There
were months of inventorying prior to and after June, paying accounts that
trusted us for many years, and delivering goods to those customers that failed
to come in before the end of June. The time between closing and registering the
domain name was a short seventy days, a very short time span in relation to the
almost twenty-four years in business. Respondent also built her own site.
Respondent researched the available programs, purchased MS FrontPage and
learned-by-doing.
Complainant
alleges abandoning the service mark by closing the retail store. As an
entrepreneur, merely closing a retail store is not abandoning an idea or
service mark. Years of developing and nurturing a name is not so lightly thrown
away. Business models have been examined, however none thus far have surfaced
as ideal. Ideas are in the mind, not always on paper to be recorded for events like
this one. Had Respondent known that some person in the future would be
questioning her integrity and motives, Respondent would have recorded all of
her notes and thoughts. Respondent lived in a simpler time.
Complainant
cites the newspaper article as proof that we did not have the intention to open
a website. The columnist that interviewed my husband and I was enamored of the
seemingly unthinkable change from selling needlework to “little old ladies” to
the high powered world of currency exchange. This was his whole thesis. We
mentioned that we would never be far away from needlework and that we may
evolve into another phase of the business, but his thoughts were on the
differences between our businesses. Respondent discussed an Internet store as a
possible extension of “Twinkles”, but he chose to ignore this in his article.
As you can understand, Respondent had no control: he took his notes and wrote
his article. Newspaper columnist write what they wish not what you wish.
Complainant
alleges bad faith due to erroneous information in Network Solution’s WHOIS
page. Respondent has shown that Respondent updated the information after moving
in the summer 2002. The WHOIS search shows the correct e-mail address and phone
number under the Technical Contact. Why the other correct data is not there,
Respondent does not know. The correct data is shown on the confirmation e-mail.
Complainant
alleges that Respondent was not considering an online site by stating - “If
Respondent had truly had an intention to open an online business, the first
thing she would have done would have been to secure the domain. Without such,
it could easily have been taken by another and, thus, become impossible to
develop an e-commerce site. The simple truth is that when one knows one definitely
desires to post a website, one does not hesitate to register the domain name
one alleges it intends to use.”
The
above is another interesting accusation. Claimant’s timeline is that she
started using the domain name in early 1998 (Respondent has used “Twinkles”
since November 1974) and applied for trademark in summer 1998. Why did the
Claimant fail to act to secure the domain name, why did the Claimant “hesitate
to register the domain name one alleges it intends to use?” “Without such, it
could easily have been taken by another and, thus, become impossible to develop
an e-commerce site.” Is the Claimant guilty of her own accusation?
To
give our site broader appeal, we did solicit gift items from boutique type
entrepreneurs. The thought was our clients could only complete one or three
projects per year, thereby limiting sales. But they could buy gifts anytime
that occasions arise, hence more sales per customer. This page was designed to
attract the attention of those businesses that we did not know. We had all our
needlework suppliers, but wanted to add to the mix. This was still a needlework
site directed towards needlework customers.
Accordingly,
because Respondent has a legitimate interest in the disputed domain, the
Complaint should be denied.
C.
Complainant
Has Not Demonstrated That The Domain Name Was Registered and Is Being Used In
Bad Faith
The third element that Complainant
must show is Respondent’s bad faith registration and use. The Complaint fails on this count as
well. The Policy identifies four
circumstances that may constitute evidence of bad faith registration and use:
(i) circumstances indicating that you
have registered or you have acquired the domain name primarily for the purpose
of selling, renting, or otherwise transferring the domain name registration to
the complainant who is the owner of the trademark or service mark or to a
competitor of that complainant, for valuable consideration in excess of your
documented out-of-pocket costs directly related to the domain name; or
(ii)
you have registered the domain name in order to prevent the owner of the
trademark or service mark from reflecting the mark in a corresponding domain
name, provided that you have engaged in a pattern of such conduct; or
(iii)
you have registered the domain name primarily for the purpose of disrupting the
business of a competitor; or
(iv) by using the domain name, you
have intentionally attempted to attract, for commercial gain, Internet users to
your web site or other on-line location, by creating a likelihood of confusion
with the complainant's mark as to the source, sponsorship, affiliation, or
endorsement of your web site or location or of a product or service on your web
site or location. (Policy ¶¶4(b)(i) -
(iv).)
There
is absolutely no evidence that Respondent registered the disputed domain to
sell to Complainant. Nor is there any
evidence that Respondent had even heard of Complainant or its purported
trademark when it registered the disputed domain. Absent evidence such knowledge of Complainant’s trademark when
Respondent registered the disputed domain, it is impossible for Respondent to
have registered the disputed domain in bad faith. Accordingly, the Complaint must be dismissed for this reason
alone.
It is further well-established that absent
direct proof that a common term domain name was registered or acquired solely
for the purpose of profiting from Complainant’s trademark rights, there can be
no finding of bad faith registration and use.
See Ultrafem, Inc. v. Royal, supra. There, the 3-member panel, in ruling in favor of the owner of the
common term domain name <instead.com> held:
A
bad faith showing would require the Complainant to prove that the Respondent
registered instead.com specifically to sell to the Complainant, or that
the value of "instead" as a domain derived exclusively from
the fame of its trademark. Neither has
been proven in this case. In the
absence of an intent to capitalize on the Complainant’s trademark interest, the
Complainant cannot assert an exclusive right over a domain name that is a
common, generic term. (emphasis added).
Here, the undeniable fact is that
“Twinkles” is an extremely common word, appearing on over 93,000 third-party
web pages unrelated to Complainant.
This extensive worldwide third party use is overwhelming evidence that
Complainant does not enjoy exclusive use of the disputed domain, thus it cannot
be concluded that Respondent selected the disputed domain with Complainant in
mind. It did not. There can be no bad faith registration where
there is no evidence that a respondent had knowledge of a complainant or its
mark. See Kis v. Anything.com
Ltd., supra (“the Administrative Panel finds that there are no
indications that Respondent knew of Complainant or its trademark when
registering the Domain Name.”). As set
forth, Respondent certainly has used the disputed domain in connection with the
bona fide retailing of needlework products and supplies to its customer
database and will again in the near future – a use expressly acknowledged as
constituting a legitimate interest by another UDRP panel. This is obviously not bad faith use.
There is no evidence Respondent had
knowledge of Complainant or its mark when it registered the disputed
domain. As recently held in the
3-member decision in The Landmark Group v. DigiMedia.com, L.P., FA
285459 (Nat. Arb. Forum Aug. 6, 2004),
“Respondent cannot be found to have engaged in bad faith registration of
Complainant’s mark if it had never heard of Complainant’s mark at the time of
the registration.” See also DK Bellevue, Inc. v. Landers, D2003-0780 (WIPO Nov.
24, 2003) (no bad faith registration if respondent had not heard of
complainant’s mark at time of registration); see also Intermap Techns. Corp. v. Salvage
Elec. Inc., FA
203130 (Nat. Arb. Forum Dec.
12, 2003); see also Experimental Aircraft Ass’n (EAA) v.
EAA.COM, FA 206309 (Nat. Arb. Forum Dec. 16, 2003). Accordingly, bad faith
registration cannot be established.
Respondent
did not solicit a sale from the Claimant
Complainant
attempts to establish bad faith based on the reply by Respondent to the
unsolicited inquiry to purchase the disputed domain. It is undisputed, however, as alleged in the Complaint, that “ On
December 6, 2002, the president of Twindent AB, Ms. Loberg, sent an e-mail to
Ms.Chin asking if the domain were ‘for sale’ ”. There is no evidence that Respondent sought to sell the disputed
domain to Complainant. Respondent’s
reply to this inquiry is not evidence that Respondent registered
the disputed domain with the intent to sell it to Complainant. There is not even any evidence that
Respondent had knowledge of Complainant when it registered the disputed
domain. Respondent stating a
“worthwhile” price to sell the disputed domain in response to Complainant’s
purchase inquiry does not constitute bad faith under the Policy. Respondent did use the term “worthwhile.”
“Worthwhile” to Respondent means taking all things into consideration, where
Respondent’s family and herself are at that moment, and her best options.
Dollars are a consideration but not the only one. As the Panel held in Pocatello
Idaho Auditorium District v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb.
Forum Feb. 21, 2002), Respondent did not solicit a sale from Complainant. This
case was held for Respondent based upon this fact.
There
are numerous ICANN decisions which have recognized that the owner of a domain
name has a legal right to sell a domain name when asked if he or she will
transfer or sell it. Panels have noted
that "there is nothing inherently wrongful in the offer or sale of domain
names, without more, such as to justify a finding of bad faith under the
Policy." See N.C.P. Mktg. Group v. Entredomains, D2000-0387 (WIPO
July 5, 2000); see also General Machine Prods Co. v. Prime Domains, supra
(Complainant “solicited the offer to sell…These facts do not indicate any bad
faith.”); see also The New Piper Aircraft, Inc. v. Piper.com, No.FA94367 (Nat. Arb. Forum May 2, 2000)
(Complainant made unsolicited offer to purchase). Accordingly, Respondent’s reply to Complainant’s inquiry to
purchase the disputed domain does not establish bad faith.
There simply is no evidence of bad faith registration or
use. Respondent registered the disputed
domain for the simple reason that it was available to which no party had exclusive
rights. That does not constitute bad
faith registration of a domain name, which is required to be proven by a
complainant seeking transfer of a domain name under the UDRP.
Accordingly, for all the above
reasons, Complainant has failed to meet its burden of proving bad faith
registration and use and, the Complaint must, therefore, be dismissed.
While Complainant has attacked the
legitimacy of Respondent’s use of the disputed domain and claims its
registration and use have been bad faith, these allegations are not borne out
by the undisputed facts.
1. Respondent
is Not a Cyber squatter
Respondent
operated a business for twenty-four years recognized by the name “Twinkles”.
One website was built by Respondent and then was hosted by 2coolweb. Respondent
is considering various business models in anticipation of re-entering the
retail needlework arena. There is no evidence that Respondent engages in
abusive domain name registration to profit from the sale of domain names or to
confuse users based on third-party trademark rights. The decision in Kur-und Verkehrsverein St. Moritz v. Domain
Finance Ltd., D2004-0158 (WIPO June 14, 2004) – a 3-member panel decision
which not only ruled in Respondent’s favor but found that Complainant had
engaged in Reverse Domain Name Hijacking – is compelling for recognition of the
legitimacy of Respondent’s operation.
Respondent
registered <twinkles.com> because it was a name that Respondent
used for twenty-four years as well as it was a common word. It is well-established that anyone is
entitled to register such domain names for any purpose. Like other common words and descriptive
terms to which no party can claim exclusive rights, “Twinkles” was fair game
for anyone to register. Respondent registered <twinkles.com> to
use in connection with its needlework business. Accordingly, Respondent has rights and a legitimate interest in
the disputed domain.
Respondent
had no knowledge of Complainant or its mark when it registered the disputed
domain, or of its purported connection to dental jewelry. Respondent registered the disputed domain on
September 9, 1998 – more than 6 years before the initiation of this
dispute. Complainant admits in the
Complaint that its first contact with Respondent was in December 2002, when she
asked “Please advise if the domain twinkles.com is for sale”.
Complainant has offered no evidence that Respondent had knowledge
of its mark when it registered the disputed domain and/or that Respondent
registered the disputed domain with Complainant’s mark in mind. Accordingly, bad faith registration cannot
be proven. See Village Resorts Ltd. v. Lieberman, D2001-0814 (WIPO Aug. 29, 2001) (proof of bad
faith requires “evidence of bad faith at the time of initial registration”); see
also Futureworld Consultancy Pty Ltd. v. Online Advice, D2003-0297 (WIPO
July 18, 2003) (“there is no evidence to show that the disputed domain was
registered with the Complainant in mind…”).
Complainant’s argument that
“constructive knowledge” of its mark is enough to establish bad faith is
inapplicable in this case. Where the
mark is a common term, specific evidence of bad faith is required because it
cannot be concluded that Complainant was a target of the registration. See Canned Foods, Inc. v Ult. Search Inc.,
FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (“There are dozens of other
enterprises that use the term "Grocery Outlet," therefore one cannot
conclude that Complainant must necessarily be the special target); see also
Lumena s-ka zo.o. v. Express Ventures LTD, FA 94375 (NAF May 11, 2000).
In a similar arbitration case, the
panel found for Respondent. See RMT, Inc. v. Domain Finance Ltd., FA 313843 (Nat. Arb. Forum Nov. 3,
2004). Complainant, RMT, Inc., is an environmental engineering and
consulting firm that provides services throughout the world under the RMT mark
and is a subsidiary of Alliant Energy Corporation. Respondent, Domain Finance
Ltd., registered the <rmt.com> domain name, which directed Internet users
to an oil and gas news site. Complainant alleged that this use was not a bona
fide use because the only connection between the letter combination “rmt” and
the oil and gas industry is Complainant’s use of the mark in the oil and gas
industry. However, Respondent argued that Complainant could not have rights in
a three-letter combination and that its use of the <rmt.com> domain name
to connect to an oil and gas news website was legitimate. Ultimately, the Panel
was satisfied that Complainant had rights in the three-letter combination, but
it determined that Respondent did, in fact, have rights and legitimate
interests in the disputed domain name because Respondent had been using the
domain name since 1997 in connection with a bona fide offering of services
prior to being notified of any dispute by Complainant.
Accordingly, because Respondent
registered the disputed domain without knowledge of Complainant or its mark,
and because there is no evidence that Respondent registered the disputed domain
with such knowledge, bad faith registration cannot be proven and the Complaint
must, therefore, be denied.
4. Domain
is Registered by Respondent and is current
Respondent has registered and is
presently using/holding the domain for future business. Respondent has provided e-mails from
2coolweb detailing the start of the hosting site; another e-mail discussing the
additional extensions to front page that allows credit card transactions, and a
copy of the website on CD. Registration with Network Solutions is current
through September 2005.
The
above facts clearly prove that Respondent has acted in good faith in
registering the domain name and using the domain to further her business.
Respondent is not squatting on the domain name and intends to use in the near
future to further her business goals.
Based upon the above facts, all of
Respondent’s exhibits, and the argument submitted by Respondent herein,
Respondent requests that the Panel issue a decision allowing registration of
the domain-name in dispute to reside with Respondent.
FINDINGS
The Panelist feels compelled to state for the
record, that the case as presented was not an easy one to decide. To the contrary, the Panelist found it
necessary to read and re-read all the documents and exhibits presented by the
parties a number of times. At the close
of the Complainant’s initial argument, the Panelist understood the elements of
the dispute and leaned towards the Complainant. Respondent’s reply, to some degree balanced Complainant’s
case. The parties’ additional responses
were exceptionally enlightening and afforded the Panelist a full and total
insight into the issues. The Panelist
would like to highly commend both parties for presenting their respective
positions professionally and in a manner which allowed this Panelist to totally
grasp and obtain a thorough insight into the issues and into the diverse
positions of the parties relating to the facts of the case.
After much thought, the Panelist focused on the
facts of the case as presented by the parties.
In this regard, the Respondent’s version of the facts became dispositive
of how the Panelist ultimately saw the facts and hence the interpretation of
the law in light of the facts. The
Panelist quotes for the record, some of the more cogent facts as presented by
Respondent and as accepted by the Panelist, which led the Panelist to the
findings and to the final decision in this matter.
From the Respondents’ Response to the Complaint:
“It
was never the intention of the Respondent to register the domain in question
for the primary purpose of selling, renting or otherwise transferring the
domain name registration to the Complainant. If the panel looks at the
“totality of circumstance” surrounding the registration of the domain in
question, it would be undoubtedly clear that the registration of Twinkles.com
by Respondent was not done in bad faith.”
“While
it is true that the retail location of “Twinkles” was closed on June 30, 1998,
all business transactions for this company did not cease on that day.
Transactions applicable to the “Twinkles” business ran far into 1999 and the DBA
for both Twinkles.com and Twinkles, Inc. are still valid. This supports
Respondent’s claim that the registration of Twinkles.com in September of 1998
was not in bad faith. The trademark registered by Twindent AB is specific to
“tooth jewelry,” and the service mark held by Respondent is specific to
business relating to the offering of needlepoint and boutique items from all of
their previous locations. Respondent, at present time or in the last 30 years,
has not given up rights to the unregistered service mark of “Twinkles.” DBA
papers for the assumed name of both Twinkles Needlework Gallery and
Twinkles.com are in effect in Harris County until 2008. It is clear that the
registration in September 1998 was simply a way to further the business
dealings that were still in effect. As Respondent was operating a business at
the time of the registration of the domain, fair use rules would apply.”
From
Respondent’s Reply Memorandum to the Complainants’ Response of Respondent’s
Response:
“A Google search on
January 23, 2005 for “twinkles” retrieved 93,600 pages.”
“Complainant alleges that bad faith is
shown by registering the Disputed Domain 70 days after closing Respondent’s
retail store of 24 years. Respondent conceived the idea of
going online prior to June 1998, however preparations for the store closing
consumed all actions up to and even after that date. There were months of
inventorying prior to and after June, paying accounts that trusted us for many
years, and delivering goods to those customers that failed to come in before
the end of June. The time between closing and registering the domain name was a
short 70 days, a very short time span in relation to the almost 24 years in
business. Respondent also built her own site. Respondent researched the available
programs, purchased MS FrontPage and learned-by-doing.”
“Complainant
cites the newspaper article as proof that we did not have the intention to open
a web site. The columnist that interviewed my husband and I was enamored of the
seemingly unthinkable change from selling needlework to “little old ladies” to
the high powered world of currency exchange. This was his whole thesis. We
mentioned that we would never be far away from needlework and that we may
evolve into another phase of the business, but his thoughts were on the
differences between our businesses. Respondent discussed an Internet store as a
possible extension of twinkles, but he chose to ignore this in his article. As
you can understand, Respondent had no control: he took his notes and wrote his
article. Newspaper columnist write what
they wish not what you wish.”(Emphasis supplied)
The Panel therefore has made the following findings:
(1)
The domain
name registered by Respondent is not identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
Respondent
has rights or legitimate interests in respect of the domain name; and
(3)
The domain
name had not been registered or being used in bad faith.
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 the Complainant has rights;
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.
The Panel finds
that Complainant has failed to establish common law rights in the TWINKLES
mark. See Weatherford
Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (holding
that prior UDRP precedent
did not support a finding of common law rights in a mark in lieu of any
supporting evidence, statements or proof, e.g., business sales figures,
revenues, advertising expenditures, number of consumers served, trademark
applications or intent-to-use applications); see also Molecular Nutrition,
Inc. v. Network News and Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003)
(approving of and applying the principals outlined in prior decisions that
recognized “common law” trademark rights as appropriate for protection under
the Policy “if the complainant can establish that it has done business using
the name in question in a sufficient manner to cause a secondary meaning
identifiable to Complainant's goods or services”); see also
Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11,
2001) (finding that Complainant failed to prove trademark rights at common law
because it did not prove the CYBERIMPRINTS.COM mark was used to identify the
source or sponsorship of goods or services or that there was strong customer
identification of the mark as indicating the source of such goods or services).
Respondent
contends that it registered the disputed domain name on September 9, 1998 well
before Complainant’s predecessor acquired the registration for the TWINKLES
mark in 2001. The Panel has determined
that, while Complainant’s predecessor registered the TWINKLES mark on March 13,
2001, which it filed on July 1, 1998, the registration of the <twinkles.com>
domain name predates Complainant’s rights in the mark. See
Johnny Blastoff, Inc. v. Los Angeles Rams Football Co., 188 F.3d 427, 435
(7th Cir. 1999) (finding that the filing of trademark application
alone did not give priority over previous common law users); see also 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 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”).
Respondent
argues that the <twinkles.com> domain name is not confusingly
similar to Complainant’s mark because Respondent gave meaning to the generic
word “Twinkles” as representation of its needlework for a period of twenty-four
years. In addition, Complainant’s logo
is very different as are the colors used to identify Complainant’s
business. See Entrepreneur Media, Inc.
v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002) ("Similarity of
marks or lack thereof are context-specific concepts. In the Internet context,
consumers are aware that domain names for different Web sites are quite often
similar, because of the need for language economy, and that very small
differences matter."); see also Copart,
Inc. v. SalvageNow, D2000-0417 (WIPO June 28, 2000) (finding that the
domain name at issue <copart.net> is not identical to nor substantially
similar to the mark registered and used by Complainant, "CI Copart Inc.
Salvage Auto Auctions").
In
its Additional Submission, Respondent contends that Complainant has failed to
provide evidence of Internet confusion and therefore has failed to fulfill its
burden of proof. In this Submission,
Respondent has attached examples of other companies using the word “twinkles”
in their domain names and trademarks. See B2BWorks,
Inc. v. Venture Direct Worldwide, Inc., FA 97119 (Nat. Arb. Forum June 5, 2001)
(holding that Complainant did not have exclusive rights to use of the terms
“B2B” and “Works” in association with other words, even with a registered
trademark for B2BWORKS).
The Panel has found that Respondent has a bona fide
interest in the disputed domain name because Respondent registered the disputed
domain name in 1998. See
Bankinter S.A. v. BI Fin. Inc.,
D2000-0460 (WIPO Sept. 5, 2000) (“[B]y 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.’"); see also Burke Inc. v. Leader
Techns. LLC, FA 102822 (Nat. Arb. Forum Mar. 29, 2002) (finding that
Respondent’s use of the disputed domain name to offer non-competing goods and
services in commerce, starting twelve months prior to Complainant’s
registration, was evidence that Respondent had rights or legitimate interests
in the disputed domain name); see also Verkaik v. Crownonlinemedia.com,
D2001-1502 (WIPO Mar.19, 2002) (finding that Respondent’s use of the disputed
domain name to make a bona fide offering of services bestowed rights and
legitimate interests in the domain name).
Respondent argues that it is commonly known by the
disputed domain name because it has been trading underneath that name since
1974. See VeriSign
Inc. v. VeneSign C.A.,
D2000-0303 (WIPO June 28, 2000) (finding that Respondent has rights and a
legitimate interest in the domain name since the domain name reflects
Respondent’s company name); see also Kryton Mktg. Div., Inc. v. Patton Gen.
Contracting, FA 123868 (Nat. Arb. Forum Oct. 21, 2002) (holding that
Respondent had rights and legitimate interests in the disputed domain name as
it had been commonly known by the domain name and has been using the name
"liquid siding" in marketing its goods and services since the 1990s);
see also Always On UPS Sys. Inc. v. Always-On, Inc., FA 114467 (Nat.
Arb. Forum Aug. 22, 2002) (finding that as Respondent submitted evidence, via a
press release and product information, that it used Complainant’s alleged
common-law mark to identify the Respondent and its business, it had rights or
legitimate interests in the disputed domain names).
The
Panel further finds that since Complainant has taken no action in the last six
years concerning the disputed domain name this is perhaps an indication of the
fact that Complainant did not seriously believe that Respondent’s operation of
the website was intended to attract internet users away from Complainant and
towards Respondent’s website. See
Bosco Prod., Inc. v. Bosco email Servs., FA 94828 (Nat. Arb. Forum June 29,
2000) (“Without determining if the
passage of considerable time would alone bar Complainant from relief in this
proceeding, the Panel notes that Complainant does not explain why it has waited
nearly four years to try and resolve [the domain name dispute].”); see
also Meat and Livestock Comm’n v. Pearce, D2003-0645 (WIPO Oct. 27, 2003) ("Although laches is
not a defense in itself under the Policy (see WIPO Case No. D2003-0447,
<commercialappeal.com>), the absence of any complaint over a long period
of time in which domain names are in active use can suggest that such use does
not give rise to a serious problem."); see also Citigroup Inc.
v. Parvin, D2002-0969 (WIPO May 26, 2001) (alluding to the possible
defense of laches by stating "[t]here is also a possible laches argument
because Citi sat on this claim for nearly 5 years in the case of some of these
<cititravel> domains, before doing anything to protect its marks").
In
its Additional Submission, Respondent contends that it has rights and
legitimate interests in the <twinkles.com> domain name because the domain name
reflects Respondent’s twenty-four year old business. The Panel has determined and therefore finds that Respondent
demonstrated preparations to use the domain name, and hence the Panel
determines that Respondent’s business is a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i). See SFX
Entm’t, Inc. v. Cushway, D2000-0356 (WIPO July 10, 2000) (finding
that Respondent had rights and legitimate interests in the domain name where he
began demonstrable preparations to use the domain name in connection with a
bona fide offering of goods or services); see also Puky GmbH v. Agnello,
D2001-1345 (WIPO Jan. 3, 2002) (holding that Respondent’s submission of an
invoice demonstrating that Respondent has been planning to trade under the name
PURKHON KI YADEN since at least as early as January 28, 2000, was evidence that
Respondent had rights or legitimate interests in the disputed domain name).
The Panel finds that Complainant’s inaction
for over six years since Respondent registered the disputed domain name in July
1998 implies that Respondent does not have the requisite bad faith intent
pursuant to Policy ¶ 4(a)(iii). See
New Piper Aircraft, Inc. v. Piper.com,
FA 94367 (Nat. Arb. Forum May 2, 2000) (stating that Complainant’s failure to
initiate a suit in over two years indicated that Complainant did not believe
that Respondent intended to attract customers through confusion); see also Square Peg Interactive Inc. v. Naim Interactive Inc., FA 209572 (Nat. Arb. Forum Dec. 29, 2003)
("Although laches by itself is not a defense to a complaint brought
under the Policy, Complainant's delay in seeking relief is relevant to a
determination of whether Respondent has been able to build up legitimate rights
in the Domain Name in the interim, and whether it is using the Domain name in
bad faith. If a trademark owner accuses another party of infringement but then
fails to pursue the matter diligently, it may in some cases be concluded that
the trademark owner has abandoned its claim and the accused infringer may be
able to build up trademark rights.")
Respondent
contends that Complainant has failed to meet its burden in proving bad faith
registration and use because Complainant has failed to point to particular
facts and circumstances supporting its allegations. See Graman USA Inc. v. Shenzhen Graman Indus. Co. FA
133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad
faith without supporting facts or specific examples do not supply a sufficient
basis upon which the Panel may conclude that Respondent acted in bad faith); see
also White Pine Software, Inc. v.
Desktop Consulting, Inc., D2000-0539 (WIPO Aug. 31, 2000) (declining to
transfer the domain name where a full factual record has not been presented to
the Panel such that a conclusive determination can be made regarding the
parties’ respective claims to the contested domain name).
The Panel has
determined that Respondent’s domain name is comprised of a generic term. If Respondent’s domain name is generic, then
Respondent has not registered or used the <twinkles.com>
domain name in bad faith. See Successful Money Mgmt. Seminars, Inc. v.
Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001) (finding the domain
name <seminarsuccess.com> to be generic and that Respondent registered
and used the domain name in good faith “because Respondent selected the name in
good faith for its web site, and was offering services under the domain name
prior to the initiation of the dispute”); see also 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”); see also Lumena s-ka zo.o. v. Express Ventures LTD,
FA 94375 (Nat. Arb. Forum May 11, 2000) (finding no bad faith where the domain
name involves a generic term, and there is no direct evidence that Respondent
registered the domain name with the intent of capitalizing on Complainant’s
trademark interest).
Respondent argues that Complainant initiated negotiations to purchase the
disputed domain name. The Panel clearly
determines that Respondent had, and has, absolutely no duty to transfer the
domain name for an amount acceptable to Complainant, or for any amount
whatsoever. See PRIMEDIA Special
Interest Publ’n Inc. v. Treadway,
D2000-0752 (WIPO Aug. 21, 2000) (finding that Respondent did not register the
domain names in bad faith where there is no evidence that Respondent intended
to sell the domain name or disrupt Complainant’s business); see also The
Coca-Cola Co. v. Svensson, FA0 103933 (Nat. Arb. Forum Feb. 27, 2002)
(finding that Respondent was not acting in bad faith when it engaged in
discussions to sell its domain name registration to Complainant after
Complainant initiated the discussion); see also General Mach. Prod. Co. v. Prime Domains, FA 92531 (Nat. Arb. Forum
Mar. 16, 2000) (finding it significant that Complainant, and not Respondent had
initiated contact, inquiring about purchasing the domain name
<craftwork.com>, and that this fact tended to weigh against a finding of
bad faith).
DECISION
Having
failed to establish all three elements required under the ICANN Policy, the
Panel concludes that relief sought by Complainant shall be DENIED.
Accordingly, it is Ordered that the <twinkles.com> domain name, remain as
presently registered with full rights to the subject domain name residing with
the Respondent.
Barry Schreiber Panelist
Dated: February 11, 2005
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