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,