WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION Jelique Products Inc. v. cybarcafe Case No. D2008-1255
1. The Parties
The Complainant is Jelique Products Inc. of Odessa, Florida, United States of America, represented by Mason Law, P.L., United States of America.
The Respondent is cybarcafe of Quebec, Canada.
2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with GoD, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 2008. On August 18, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 18, 2008, the Registrar transmitted by email to the Center its verification response indicating that the Respondent was not the named registrant of the Domain Name.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 22, 2008. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 27, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 16, 2008. The Response was filed with the Center on September 14, 2008.
The Center appointed Tony Willoughby as the sole panelist in this matter on September 29, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is the registered proprietor of US trade mark registration no. 2713149 TASTY TWIST (device) in class 3 for body creams and lotions. The registration came through on May 6, 2003.
The Complainant uses its TASTY TWIST trade mark in relation to products designed to enhance sexual performance/pleasure.
The Domain Name was registered on June 27, 2006.
On May 29, 2008, the Complainant's representative wrote to the Respondent drawing the latter's attention to the Complainant's trade mark rights and seeking transfer of the Domain Name.
On July 29, 2008, not having received a reply to that letter, the Complainant's representative sent a ‘chaser' to the Respondent by email.
On July 30, 2008, the Respondent replied by email, claiming that the term ‘tasty twist' is generic and denying that the Complainant's rights extended to the Domain Name. The Respondent indicated that if the Complainant wished to have the Domain Name it could have it for Canadian $10,000.
The Domain Name is connected to a Sedo parking page featuring a variety of advertising links, which, in the version available to the Panel in the United Kingdom, are not targeted at the Complainant's business area. [NB the Panel has not been provided with a print-out from the version available in North America].
5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to its TASTY TWIST trade mark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant recites the examples of what shall constitute rights or legitimate interests for the purpose of paragraph 4(a)(ii) of the Policy as set out in paragraph 4(c) of the Policy and contends that none of them is applicable.
The Complainant contends that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(i) of the Policy and in support of that contention points to the email exchange referred to above. B. Respondent
The Respondent denies the Complainant's contentions. The Respondent asserts that he registered the Domain Name for an ice-cream related invention of his and produces a copy of an email, which he says he sent his brothers on January 4, 2008. The email makes reference to the term ‘tasty twist' in an ice-cream context.
The Respondent asserts that his family has been involved in the ice-cream business since 1953 and produces in support:
(a) A webpage from the website of Eagle Equipment Company claiming “our family has been involved in the Dairy Bar & Ice Cream Store industry since 1953.”
(b) A photograph from the same website featuring a group of people at an ice cream exhibition on which the Respondent has written (next to an arrow targeting one of the members of the group) “My father Elmar Kane.”
(c) A directory webpage featuring a reference to Wadden Systems Inc. claiming “Our family has been involved in the dairy bar industry for over 45 years”.
Accordingly, the Respondent's basic answer to the Complaint is that he selected the Domain Name for an ice-cream related invention associated with his family business (es).
Additionally, the Respondent contends that the name, ‘tasty twist', is very widely used in a generic sense in many industries including the ice cream industry and that it is not open to the Complainant to claim exclusivity to the term.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following elements:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith. B. Identical or Confusingly Similar
The Domain Name comprises (a) the most prominent element of the Complainant's United States TASTY TWIST device trade mark registration, namely the textual element, ‘Tasty Twist', and (b) the generic domain suffix, which may be ignored when assessing identity and confusing similarity for the purposes of paragraph 4(a)(i) of the Policy.
The Respondent contends that the term, ‘tasty twist', is so generic that the Complainant should not be entitled to claim exclusivity in relation to it.
Nonetheless, the fact is that the Complainant is indeed the proprietor of the trade mark registration and while it is not for the words Tasty Twist (per se), they are the most prominent feature of the mark.
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant recites all the examples of what shall constitute rights or legitimate interests for the purpose of paragraph 4(a)(ii) of the Policy as set out in paragraph 4(c) of the Policy and contends that none of them is applicable.
The Respondent seeks to demonstrate that he has plans to use the Domain Name for an invention he has come up with concerning ice-cream. He produces an email, which he sent his brothers on January 4, 2008, which is consistent with his explanation and he has produced copies of webpages (described in section 5B above), which he produces to show that his family has been engaged in the ice-cream industry for several decades.
However, the email is the only document mentioning the name, ‘Tasty Twist', and it emanates from the Respondent. There is no document from any independent source and there is nothing to indicate how (if at all) the Respondent has developed or proposes to develop his plan for the name. Additionally, as will be seen below, there are aspects of the Respondent's explanation, which the Panel finds unsatisfactory.
The Panel finds that the Respondent's explanation is insufficient to demonstrate rights or legitimate interests in respect of the Domain Name and so finds. D. Registered and Used in Bad Faith
For this Complaint to succeed the Complainant must now prove that the Respondent registered the Domain Name with the Complaint's trade mark rights in mind and with an abusive intent. For this purpose, the Complainant relies upon (a) its trade mark registration, (b) the fact that the Domain Name is substantially identical to the Complainant's trade mark and (c) the fact that the Respondent offered to sell the Domain Name to the Complainant for Canadian $10,000, on receipt of the Complainant's representative's email of July 29, 2008 seeking transfer of the Domain Name (discussed further below).
The Complainant has an uphill struggle in that, as the Respondent points out, the term ‘tasty twist' is widely used on the Internet in a number of different contexts, only a tiny proportion of which appears to relate to the Complainant's products. Additionally, the Complainant does not claim a very substantial business (sales of US$760,000 over a 7 year period) and most of it appears to have been in Florida and elsewhere in the United States. Accordingly, there is no particular reason to assume that the Respondent registered the Domain Name with the Complainant in mind and the Complainant does not suggest one.
However, there are aspects of the Respondent's story, which raise more questions than they answer.
As indicated above, the Respondent says that he registered the Domain Name having come up with an invention relating to ice cream. His email to his brothers of January 4, 2008 contains the passage: “Eureka!!! I'm sure of a viable way to gradually and evenly inject the pwdrd flvr (sic) into the product as it goes through the disposable tasty twist mixer”.
Had the Respondent registered the Domain Name when he came up with the invention, his story would perhaps have carried greater weight with the Panel. However, according to the Whois record put in by the Complainant, the Domain Name was registered on June 27, 2006.
Another cause for concern about the Respondent's story is that none of the material put in by the Respondent to support his claims that he and his family have been involved in the ice-cream business for over 40 years, mentions any member of his family by name. There is nothing in the papers to link any member of his family with the businesses he identifies.
However, the fact is that it is for the Complainant to prove that the Respondent was targeting the Complainant when he registered the Domain Name, not for the Respondent to prove his innocence and there is nothing of sufficient weight before the Panel to justify the Panel drawing inferences adverse to the Respondent.
The Complainant bases its case primarily on the offer by the Respondent to sell the Domain Name to the Complainant for Canadian $10,000. However, this ‘offer' was not an unsolicited approach from the Respondent; it was in response to a demand for transfer of the Domain Name made by the Complainant's representative. While it is of course possible that the Respondent had been sitting back waiting for such an approach ever since he registered the Domain Name, the Panel would have found it easier to draw that inference if there was any evidence that the Respondent had a track record in this regard and/or the links on his website connected to the Domain Name were targeted at the Complainant's field of activity. But there was no such evidence provided, and ultimately it is for the Complainant to prove its case.
On balance, the Panel is not satisfied on the record before it that the Complainant has shown that the Respondent registered the Domain Name in bad faith and for that reason the Complaint must fail.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Tony Willoughby
Sole Panelist
Dated: October 13, 2008
Full & Egal Universal Law Academy