URS FINAL DETERMINATION


Twilio Inc. v. Privacy Guardian / See PrivacyGuardian.org et al.
Claim Number: FA2201001980368


DOMAIN NAME

<twilio.one>


PARTIES


   Complainant: Twilio Inc. of San Francisco, CA, United States of America
  
Complainant Representative: The GigaLaw Firm, Douglas M Isenberg, Attorney at Law, LLC Douglas M Isenberg of Atlanta, GA, United States of America

   Respondent: Twilio.one MD UDOY HASAN ORKO of Pabna Sadar, Bangladesh
  

REGISTRIES and REGISTRARS


   Registries: One.com A/S
   Registrars: NameSilo, LLC

EXAMINER


   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 Examiner in this proceeding.
   Saravanan Dhandapani, as Examiner

PROCEDURAL HISTORY


   Complainant Submitted: January 13, 2022
   Commencement: January 14, 2022
   Response Date: January 31, 2022
   Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").

RELIEF SOUGHT


   Complainant requests that the domain name be suspended for the life of the registration.

STANDARD OF REVIEW


   Clear and convincing evidence.

FINDINGS and DISCUSSION


   Procedural Findings:  
      Multiple Complainants: Multiple Complainants: No multiple Complainants are involved in this proceeding. This Complaint and findings relate to the domain name “twilio.one”. No domain name is dismissed from this Complaint.
      Multiple Respondents: Multiple Respondents: No multiple Respondents are involved in this proceeding. This Complaint and findings relate to the domain name “twilio.one”. No domain name is dismissed from this Complaint.

   Findings of Fact: The case of the Complainant is as follows: Complainant, a leading cloud communications platform listed on the New York Stock Exchange (symbol: TWLO), had 250,000 active customer accounts as of September 30, 2021; generated revenue of $740.2 million for the third quarter of 2021, up 65% year-over-year; and employs about 7,381 people. Complainant is the registrant of the domain name (created October 26, 2007), which it uses in connection with its primary website. Complainant owns 166 registrations worldwide for trademarks consisting of or including “TWILIO”, including U.S. Reg. No. 4,024,988 (registered September 13, 2011), for use in connection with computerized telephony services. The TWILIO trademark is registered with the Trademark Clearinghouse and is protected via registrations in at least 48 jurisdictions, as set forth in the attached Annex of Rights. Registrant is using the disputed domain name in connection with a website advertising it for sale for $10,000. As shown by the attached trademark documents (including the SMD file from TMCH) and printouts from Complainant’s website, it is obvious that Complainant “holds a valid national or regional registration and that [it] is in current use.” Further, the disputed domain name “is identical or confusingly similar” to the TWILIO Trademark, because the disputed domain name contains this trademark (and only this trademark) in its entirety. WIPO Overview 3.0, section 1.7 (“in cases where a domain name incorporates the entirety of a trademark…, the domain name will normally be considered confusingly similar to that mark”). The Registrant has no legitimate right or interest to the disputed domain name. The Registrant has made no demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services (given Registrant’s public offer to sell the disputed domain name); Registrant is not commonly known by the disputed domain name (given that the Whois record does not identify Registrant as “Twilio”) ; And, by offering the domain name for sale for $10,000, Registrant is obviously not making a legitimate noncommercial or fair use of the disputed domain name. By using the disputed domain name in connection with a website advertising it for sale for $10,000, Registrant has acted in bad faith. 3S­Smart Software Solution GmbH v. et al., Forum 1930566 (offering domain for sale “is clear evidence of bad faith”) ; and DR. SEUSS ENTERPRISES, L.P. v. Daniel L. Devoe, Forum 1927077 (“offering it for sale [is] clearly intended to take predatory advantage of the goodwill belonging to Complainant for his/her own profit” and “general offer for sale to the public prove[s] on the balance of probabilities that the disputed domain name was intentionally chosen and registered and is being used in bad faith”). This is especially true given the strength of the TWILIO trademark (protected by 166 registrations in 48 jurisdictions worldwide, since at least September 13, 2011 – more than 10 years before creation of the disputed domain name). WIPO Overview 3.0, section 3.1.1 (“distinctiveness of the complainant’s mark” is relevant to bad faith where domain name is offered for sale). The Respondent has submitted specific responses to the Complainant’s allegation. To the allegation that the registered domain name(s) is/are identical or confusingly similar to a word mark, the Respondent has stated that they are a student and is unaware of the Trademark and other processes like URS. The Respondent further submits that they are willing to give back the domain to Twilio. To the allegation that the Registrant has no legitimate right or interest to the domain name, the Respondent has admitted that they have no legitimate right or interest to the domain name. To the allegation that domain name was registered and is being used in bad faith, the Respondent has said that they do not want to keep the domain and want to give back the domain to the rightful owner. The Respondent further submits that prior to the acquisition of the domain, they had contacted Twilio via its community forum to find out if Twilio has any claim to the domain being sold. There was no response and the Respondent was subsequently blocked. The Respondent has later asked Twilio three times via its support chat if they could purchase the “.one” domain to which there was no response. After five days, the Respondent has acquired the domain. The Respondent states that if Twilio had replied to the communications, then they would not have purchased and wasted their time on the disputed domain name as they have exams and need to study for it.

  

URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.


[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
  (i) for which the Complainant holds a valid national or regional registration and that is in current use; or
  (ii) that has been validated through court proceedings; or
  (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.

Determined: Finding for Complainant 


The Complainant has proved by documentary evidences that they are the registered owner of trademark “Twilio” under various classifications. As noted, the disputed domain name <Twilio.one> composes “Twilio” and “.one”. Thus the word “Twilio” in disputed domain name is identical to Complainant’s registered trademark “Twilio”. The “.one” in disputed domain name is a generic code top-level domain name (gTLD) suffix. It is non-distinctive and is incapable of differentiating the disputed domain name from the Complainant’s registered trademark. Based on the “Twilio” being a registered trademark of the Complainant, the Examiner determines that URS 1.2.6.1(i) covers the domain name at issue in this Complaint.


[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.

Determined: Finding for Complainant 


The Complainant owns trademark “Twilio” under various classifications. The Complainant’s adoption and first use of the registered trademark is for more than a decade. In such case, the burden lies on the Respondent to prove that he/she has legitimate rights and/or interests in the disputed domain name. The Respondent submits that, “They are currently a student and that they were unaware of the Trademark ‘Twilio’ and all other processes such as URS. They further submit that they will give the domain acquired back to Twilio and Twilio will reimburse them for the costs spent on the domain.” It proves that the Respondent has completely disowned any right over the disputed domain name. In view of the above, the Complainant has established a prima facie case of lack of rights and legitimate interest. Based on the record, admittedly the Respondent has no rights or legitimate interests in the disputed domain name. Hence, the Examiner determines that URS 1.2.6.2 covers the domain name at issue in this Complaint and that the Respondent has no legitimate right or interest to the domain name.


[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
  a. Registrant has registered or 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 documented out-of pocket costs directly related to the domain name; or
  b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
  c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
  d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant's 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 Registrant's web site or location or of a product or service on that web site or location.

Determined: Finding for Complainant 


The Respondent is not affiliated with Complainant in any manner and never authorized the Respondent to register or use any domain name incorporating “Twilio”. The Complainant alleges that the Respondent is using the disputed domain name in connection with a website advertising it for sale for $10,000. The same was not denied by the respondent. Hence, it is well established that the registration and use of the disputed domain name must involve malafide where the registration and use of it was continues to be made in full knowledge of the Complainant’s prior rights in the “Twilio” registered trademark. It has been submitted by the Respondent that, “They contacted Twilio via the community forum with respect to the domain name and were blocked from further contact. Upon them reaching out to the support chat multiple times regarding the usage of the “.one” domain, there was no response from Twilio, still they went ahead and acquired the domain twilio.one.” However, the Respondent has not substantiated the same by means of any evidence. In any event, as held above, the Complainant is the registered owner of the trademark and has never authorized the Respondent for registration of such domain name. It can be inferred that the Respondent was cognizant of the fact that there could be legal implications in using the domain “Twilio” and still proceeded with the acquisition of the domain. Thus the Panel Examiner comes to irresistible determination that (i) the disputed domain name is identical to the Complainant’s “Twilio” trademark; (ii) the Respondent’s name does not correspond to the disputed domain name; (iii) the Respondent was aware of the Complainant and its trademark when it registered the disputed the domain name; (iv) there is no indication of any authorization to use the Complainant’s mark. Hence, it is lawful to conclude that the disputed domain name was registered in bad faith. Thus the Examiner determines that URS 1.2.6.3 (a) and (d) covers the domain name at issue in this Complaint and the domain name was registered and is being used in bad faith.


FINDING OF ABUSE or MATERIAL FALSEHOOD


The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

Respondent has alleged that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods. 

The Examiner finds as follows:


  1. The Complaint was neither abusive nor contained material falsehoods. 

DETERMINATION


After reviewing the parties submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for the duration of the registration:

  1. twilio.one

 


Saravanan Dhandapani
Examiner
Dated: February 1, 2022

 

 

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