WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hershey Chocolate & confectionery Corporation v. Raymond Mah

Case No. D2010-1151

1. The Parties

The Complainant is Hershey Chocolate & Confectionery Corporation of United States of America represented by Kaye Scholer, LLP of United States of America.

The Respondent is Raymond Mah of Canada, represented by Boughton Law Corporation of Canada.

2. The Domain Name and Registrar

The disputed domain name <twizzler.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2010. On July 13, 2010, the Center transmitted by email to Network Solutions, LLC. a request for registrar verification in connection with the disputed domain name. On July 13, 2010, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 July 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 11, 2010. The Response was filed with the Center on August 11, 2010.

The Center appointed David Perkins as the sole panelist in this matter on August 17, 2010. 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

4.A. The Complainant

4.A.1. The Complainant is a wholly owned subsidiary of The Hershey Company which sells (under license from the Complainant) numerous well-known brands of chocolate and confectionery products. Those products include candy twists which have been sold under the TWIZZLERS trademark since 1928 and currently comprise sales in excess of US$150 million per annum

4.A.2. The Complainant is the registered proprietor of the following US and Canadian trademarks.

4.A.3. The Complainant owns the domain name <twizzlers.com> which is used to host a website to

communicate with the public about Twizzlers products.

4.B. Respondent

4.B.1. The Respondent registered the disputed domain name on April 25, 1999.

4.B.2. The Respondent says in his Affidavit that he registered the disputed domain name with the intention to use it personally, enter into a partnership or sell the name to a party to develop a Internet based game in the style of a brain teaser, logic puzzle or other similar style of game. Exhibited to the Response is an archived print of the webpage to which the disputed domain name resolved on September 26, 2001 entitled “TWIZZLER GAMES PEOPLE PLAY” depicting a 3 cog wheel design and the text “New Developments possibilities!!” “Queries welcomed” with the Respondent’s email address. The cogwheels are said to symbolize the inner workings of the human brain in relation to the puzzle or brain-teaser game that the Respondent envisioned developing. Also exhibited to the Response is a screenshot of the full history of the website to which the disputed domain name resolves.

4.B.3. The Respondent says that it remains his intention to use the disputed domain name in relation to Internet based games.

5. Parties’ Contentions

5.A. Complainant

5.A.1. Identical or Confusingly Similar

5.A.1.1. The Complainant claims rights in the TWIZZLERS registered trademark which date back to first use in the United States in 1928 and in Canada in 1929.

5.A.1.2. The disputed domain name is the singular version of that trademark. The Complaint cites three cases decided under the Policy where using the singular form of a plural form trademark was held to be confusingly similar for the purposes of paragraph 4(a)(i) of the Policy.

5.A.2. Rights or Legitimate Interests

5.A.2.1. The Complainant has not licensed or otherwise authorized the Respondent to use the TWIZZLERS trademark.

5.A.2.2. The Complainant is unaware of the Respondent being commonly known by the disputed domain name,

5.A.2.3. According to the Complainant, the Respondent is not making a legitimate non-commercial fair use of the domain name Annexed to the Complaint is a print out of the website to which the disputed domain name resolved on June 30, 2010. That website contained for-profit advertising and for-profit links to other commercial websites, including sites selling products which compete with Hersheys chocolate and confectionery products, specifically licorice candy products.

5.A.2.4. The Complaint cites a number of decisions under the Policy where such use of a disputed domain name has been held not to constitute a bona fide offering of goods and services under paragraph 4(c)(i) of the Policy. The Complaint also cites a number of decisions under the Policy where such use has been held not to be a legitimate non-commercial or fair use of the disputed domain name under paragraph 4(c)(iii) of the Policy.

5.A.2.5. In the circumstances, the Complainant’s case is that the Respondent has no rights or legitimate interests in the disputed domain name.

5.A.3. Registration and Use in Bad Faith

5.A.3.1. Given the well-known status of the TWIZZLERS trademark and the confusing similarity of the disputed domain name with that trademark, the Complainant says that the disputed domain name cannot have been registered in good faith. The TWIZZLERS brand had been in use for 70 years and was very well-known by the time the Respondent registered the disputed domain name in 1999.

5.A.3.2. Further, since the Respondent cannot demonstrate any rights or legitimate interests in the disputed domain name, bad faith registration and use follow. Additionally, given the well-known status of the TWIZZLERS trademark and taking all the circumstances into account, bad faith registration and use also follows, citing Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

5.A.3.3. Finally, the Complainant says that the circumstances of paragraph 4(b)(iv) of the Policy are plainly demonstrated on the facts of this case. In that respect, the Complaint cites a number of decisions under the Policy finding bad faith registration and use where the disputed domain name has been used to direct users to for-profit sponsored commercial websites, particularly where – as in this case – such website diverts Internet users to products which compete with those of the Complainant trademark owner.

5.B. Respondent

5.B.1. Identical or Confusingly Similar

5.B.1.1. Respondent says that TWIZZLE is a noun defined in the Oxford English Dictionary meaning “a twisting or spinning movement”.

5.B.1.2. The Respondent points to other users of TWIZZLE and TWIZZLER by, for example, Apple’s iPhone “Brain Twizzler”; a children’s toy with the name “Spring Swings Twizzler Fun Ride”; in a footwear commercial broadcast on YouTube “Spike Jonze’s Twizzler – Lakai Commercial” where a skateboarder watches his skateboard twist and spin around while he is airborne; a puzzle game called TWIZZLE advertised on the “www.bobblebropok.com” website; another Twizzle puzzle game on the “www.neoos.ch” website; and the results from a Google search for “twizzle” which refers, inter alia, to a sailing yacht, figure skating fashion designs, a hair studio and a music blog.

5.B.1.3. The Respondent says there can be no likelihood of confusion between use of the disputed domain name for a game or puzzle website and the Complainant’s well-known Twizzlers candy twists.

5.B.1.4. The Respondent seeks to distinguish the decisions under the Policy cited by the Complainant where use of the singular form of a plural form trademark was held to be confusingly similar, on the basis that those cases all concerned situations where the Respondent was intentionally diverting Internet traffic from the Complainant’s website to other websites. Since the use of the disputed domain name identified by the Complainant in paragraph 5.A.2.3 above was not being made by the Complainant – at to which, see paragraph 5.B.2 below – the Respondent submits that the present facts are very different and cannot apply here.

5.B.2. Rights or Legitimate Interests

5.B.2.1. The Respondent’s case is that, on the facts set out in paragraph 4.B.2, the circumstances of paragraphs 4(c)(i) and (iii) of the Policy apply.

5.B.2.2. Furthermore, as appears from the Respondent’s Affidavit on July 14, 2010, the day after the Complaint was transmitted to him (July 13, 12010), he contacted the provider hosting the disputed domain name (Network Solutions LLC) to request an explanation as to how – without his authority or consent – the disputed domain name was being used to resolve to a for-profit advertising website. The Respondent says that he also spoke to Network Solutions and they confirmed that such use would be terminated, as it duly has been.

5.B.2.3. The Respondent says that he has never received any payment or compensation of any kind from Network Solutions or from any other party in respect of the unauthorized use of the disputed domain name to advertise their party products.

5.B.2.4. The Respondent says that he never had any intention to use the disputed domain name to advertise third party candy, confectionery or licorice products and, had The Hershey Company notified him of such use he would immediately have taken steps to prevent continuance of such use. As noted, immediately he became aware of such use in July 2010, he took such steps .

5.B.2.5. Finally, the Respondent reiterates that his intention remains as it always was from 1999 when he registered the disputed domain name. Namely to use it for an Internet based puzzle or game website.

5.B.2.6. In the circumstances, the Respondent contends that he has rights and legitimate interests in the disputed domain name under paragraphs 4(c)(i) and (iii) of the Policy.

5.B.3. Registered and Used in Bad Faith

5.B.3.1. The Respondent relies on the facts set out in paragraphs 4.B.2 and 5.B.2.2 to 5.B.2.5 above as evidence of his good faith registration and use of the disputed domain name. On those facts, the Response says that none of the circumstances of paragraph 4(b) of the Policy can be demonstrated in this case.

5.B.3.2. Additionally, the Respondent says that he has never approached the Complainant to sell the disputed domain name to them.

5.B.3.3. The Respondent says that his actual use can be seen from the archived print of the webpage on September 26, 2001 which confirms the veracity of his Affidavit that the only intention to use and actual use by him of the disputed domain name has been with a view to establishing an Internet based game or puzzle. That, the Respondent says, remains his objective.

5.B.3.4. In the circumstances, the Respondent says that the disputed domain name was registered and has been used by him in good faith.

6. Discussion and Findings

6.1. The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding

(i) that he Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

6.2. The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interests in the disputed domain name.

6.3. The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.

6.4. As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

Identical or Confusingly Similar

6.5. The Complainant has established registered rights in the trademark TWIZZLERS, which date from 1958 in the United States and 1972 in Canada and that actual use of that trademark was first made in 1928 (the United States) and 1929 (Canada). It is, indeed, a well-known trademark.

6.6. The disputed domain name is the singular form “Twizzler” of that trademark TWIZZLERS. Notwithstanding that “Twizzle” is a dictionary word, having (according to the Oxford English Dictionary) its origins in the late 18^th Century, for the purposes of the Policy, the Panel considers that the disputed domain name is confusingly similar to the Complainant’s TWIZZLERS trademark. Further, the use to which the disputed domain name is actually put and/or is intended to be put is not generally regarded as relevant to paragraph 4(a)(i) of the Policy.

6.7. Accordingly, the Complaint meets the requirements of paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests

6.8. However, on the evidence from the Respondent (his Affidavit) and the documents exhibited to the Response, it is plain in the Panel’s view that the Respondent has demonstrated that the facts of this case fall within paragraphs 4(c)(i) and (iii) of the Policy.

6.9. First, the Respondent has demonstrated his intention to use the disputed domain name for an Internet based puzzle or game website.

6.10. Second, the for-profit use made of the disputed domain name was clearly neither intended nor authorized by the Respondent. Immediately, he was put “on notice” of such use, he took effective steps to ensure cesser of that use. Furthermore, the Respondent has made no commercial gain from that unauthorized use.

6.11. Indeed, had the Complainant made contact with the Respondent before initiating the Complaint in this administrative proceeding, the Panel considers it highly unlikely that the Complainant would have proceeded with it provided the Respondent agreed to take the action (which he, in fact, did) to have the unauthorized website taken down.

6.12. In the circumstances, the Complaint fails to meet the requirement of paragraph 4(a)(ii) of the Policy.

Registered and Used in bad Faith

6.13. For the same reasons that the Panel is satisfied that the Respondent has demonstrated rights and legitimate interests in the disputed domain name, the Complaint also fails to meet the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, the Complaint is denied.

David Perkins
Sole Panelist
Dated: August 31, 2010