National Arbitration Forum

 

DECISION

 

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

 

FACTUAL AND LEGAL GROUNDS

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

 

Since the registration of the domain in question on September 9, 1998, Respondent has made use of the domain in offering both an online-catalogue of merchandise from the “Brick and Mortar” store as well as offering other services targeted to the same demographic. Immediately after registration, a placeholder page citing the intention to create and have a fully operational online business before November 1, 1998 was posted to the domain in question, as well as a letter sent announcing the intention to open a business at <twinkles.com> to approximately 3,500 previous retail customers. This activity on the contested domain name was within Respondent’s rights and provides a bona fide offering of goods or services.

 

(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

 

COMPLAINANT’S REPLY MEMORANDUM TO THE RESPONSE OF RESPONDENT

 

            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’S REPLY MEMORANDUM TO THE COMPLAINANT’S RESPONSE OF RESPONDENT’S RESPONSE

 

            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.

 

  1. Respondent Registered Common Words and Descriptive Terms to Which No Party Can Claim Exclusive Rights

 

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.

 

  1. There is No Evidence the Disputed Domain Was Registered With Complainant in Mind and, thus, Bad Faith Registration Cannot be Established

 

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.

 

Identical and/or Confusingly Similar

 

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).

 

Rights or Legitimate Interests

 

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).

 

Registration and Use in Bad Faith

 

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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