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Generic Top Level Domain Name (gTLD) Decisions |
Twisted Pair Solutions, Inc. v. Twisted
Pair
Claim Number: FA0402000235832
PARTIES
Complainant
is Twisted Pair Solutions, Inc. (“Complainant”),
1100 Dexter Avenue North, Suite 100, Seattle, WA 98109. Respondent is Twisted Pair (“Respondent”), 859 Orange
Avenue, San Carlos, CA 94070.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <twistedpair.com>,
registered with Dotster.
PANEL
The
undersigned certifies that she acted independently and impartially and that to
the best of her knowledge she has no known conflicts
in serving as Panelist in
this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically February 5, 2004; the Forum received
a hard copy of the
Complaint February 6, 2004.
On
February 5, 2004, Dotster confirmed by e-mail to the Forum that the domain name
<twistedpair.com> is
registered with Dotster and that the Respondent is the current registrant of the
name. Dotster verified that Respondent is bound
by the Dotster registration
agreement and thereby has agreed to resolve domain-name disputes brought by
third parties in accordance
with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On
February 16, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of March 8, 2004, 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@twistedpair.com by e-mail.
A
timely electronic Response was received and determined to be complete on March
8, 2004. However, the Response was received incomplete
in hard copy form, and
was thus not in compliance with UDRP Rule 5(a) and (b).
On March 17, 2004, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
Procedural Issue: Deficient Response
The Forum received Respondent’s electronic Response
timely; however, the hard copy of Respondent’s Response was not complete as
required
by UDRP Rule 5(a) and (b) and is noncompliant. With a deficient
Response, Respondent has the same status of a party in default. See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (holding
Respondent’s failure to submit a hard copy of the Response and failure to
include evidence
to support a finding in its favor placed Respondent in a de
facto default posture, permitting the Panel to draw all appropriate
inferences stated in the Complaint).
Further, although the Panel favors determination on the
merits under principles of due process, the decision to give no weight to
the
Response does not affect the outcome here. See Strum v. Nordic Net Exchange AB, FA 102843 (Nat. Arb. Forum Feb. 21,
2002) (“Ruling a Response inadmissible because of formal deficiencies would be
an extreme remedy
not consistent with the basic principles of due
process.") A Complainant does not automatically prevail in the event of a
default and having reviewed the Complaint and Response, the issue of
Respondent’s deficient Response has no effect on the outcome here because
Complainant failed to establish the three prongs necessary
in order to prevail
in this matter.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
allegations in this proceeding:
1. Respondent registered a domain name that
is identical to or confusingly similar to a trademark in which Complainant has
pending rights
and Complainant, by argument, can make a more worthwhile use of
that domain name site.
2. Respondent has no rights to or legitimate
interests in Complainant’s pending mark and the domain name that incorporates
it.
3. Respondent used the domain name in bad
faith by holding it passively and by withholding it from Complainant’s use and
development.
B. Respondent’s Response was given no weight
because it was deficient; however the following was derived from Complainant’s
Complaint.
1. Complainant conceded that Respondent used
the name Twisted Pair in commerce for many years before Complainant’s use,
using the name
from 1996 to 2003.
2. Respondent has used the Twisted Pair name
since 1996 as a portal to opinion-based sites.
3. Respondent registered and used the name
before Complainant’s use.
C. Additional Submissions
Correspondence
from the Forum suggests that Complainant filed the Complaint first as Bruno
Riegle v. Twisted Pair and that the Forum
assigned Number FA0402000235821 to
it. Thereafter, Complainant re-filed as
Twisted Pair Solutions, Inc., v. Twisted Pair and the Forum assigned Number
FA0402000235832 to
it. The Complaint
proceeded under the later filing and number.
The Parties filed no additional
submissions.
FINDINGS
Complainant Twisted Pair Solutions, Inc. is from
Seattle, WA, while Respondent Twisted Pair is from San Carlos, CA. Bruno Riegl is identified as CEO of Twisted
Pair Solutions, Inc. Complainant holds provisional patents in good standing and
is in
the process of filing for a federal trademark for TWISTED PAIR.
Complainant concedes that Respondent registered the
disputed domain name, <twistedpair.com>, on March 1,
1996. Complainant concedes that
Respondent uses the domain name site to forward those who access it to
opinion-posting sites described as
“rant & raves,” and including such names
as “Stinky Weenie,” “Ms. Frizzle,” “Bam Diary,” and “Euphoria Lovesoul.”
Complainant urges that these “harangue” sites are
unrelated to the industry of radio communications, software development, Land
Mobile
Radio, or others that are multi-jurisdictional, interoperable or
necessary to the public safety.
These sites, Complainant averred, caused “a
considerable amount of angst and confusion” for Complainant’s customer
base. Further, Complainant urges, its
customers “must be informed on a daily basis that the domain name does not
match the company name,
decreasing [the] customer’s confidence in the
Complainant’s credibility and denigrating Twisted Pair Solutions, Inc.[’s]
reputation.”
Twisted Pair Solutions, Inc. Complainant, reports
that it was founded in 2000, first as a New Jersey Limited Liability Company
and
that it was then reincorporated as a Washington State C-Corporation in
November 2003. In April 2003, Twisted
Pair Solutions, Inc. released the first commercial version of its trademarked
Wide Area Voice Environment,
a patent-pending Voice over IP software broadcast
mixing system. Twisted Pair Solutions,
Inc. represented that the military and several homeland security agencies have
adopted use of its software,
including the US Army Special Ops, US Navy War
College, US Army, US Forest Service, Navy Research Labs, NASA and the US Coast
Guard.
Complainant urges that its premiere product is already in use by the US
Department of Defense.
Complainant reports that after forming its corporate
entity in New Jersey, it “made several good-faith attempts to legitimately
acquire
the domain <twistedpair.com> from
Respondent. Complainant made repeated
efforts to contact Respondent via email and telephone messages about selling or
transferring the domain
of <twistedpair.com> to Twisted
Pair Solutions, Inc., but has yet to receive a response either written or
verbal from Respondent. To date,
Respondent has not returned any correspondence from Complainant regarding the
offer to purchase the domain or have it transferred.” Yet, Complainant also urges that Respondent offered to sell the
domain name for $2,000.
Complainant urges that Respondent “is not using the
domain name <twistedpair.com> to sell,
solicit or market any products and services under any trade name likened to
Twisted Pair or any variation of the name in
relationship to selling goods or
services. In addition, Respondent is
not using the domain name <twistedpair.com> for any
purpose other than ownership.
Respondent appears to have no real interest in the domain other than
keeping it from being used for legitimate business.”
In support of allegations of bad faith,
Complainant urges that Respondent is not using the domain to “advertise,
promote, market,
sell goods and services, or use the domain as a foundation for
establishing a business, non-profit or trade.”
Complainant accuses Respondent of “harboring” the domain to prevent
Complainant “from expanding business and increasing visibility
to the suite of
products.” Further, Complainant urges
that the “domain is legally identical to the Complainant’s highly recognized
corporate name and mark.” Respondent
has done so without license or permission from Complainant.
Complainant alleges that it has “spent a
great deal of resources in advertising, workforce expansion and marketing
promotion to give
‘Twisted Pair’ [Solutions, Inc.] a unique identity within the
software, telecommunications and [I]nternet industries. The future progress of the Complainant is
largely based upon the ability to promote the Internet domain identity as <twistedpair.com>
and establishing credibility through the [formal top-down domain <twistedpair.com>.]”
Complainant supported its submission with
Xerox copies of its application but produced no extrinsic proof of its
activities and expenditures
for development or the business associations that
Complainant outlined above for federal or state authorities.
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 Complainant has
rights;
(2)
Respondent
has no rights to or legitimate interests in respect of the domain name; and
(3)
the domain
name has been registered and is being used in bad faith.
Complainant maintains that it has established rights
in the TWISTED PAIR mark through its foundation as “Twisted Pair Solutions,
Inc.”
in 2000 and by its use of the service mark TWISTED PAIR in connection
with its services since that time. Some
support exists for Complainant’s contention that such a showing meets the UDRP’s
requirements but it is specific to those entities
that have established legal
or common law rights in a mark prior to Respondent’s use and development. See
McCarthy on
Trademarks and Unfair Competition,
§ 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in
scope” in that “the reference to a trademark or service
mark ‘in which the
complainant has rights’ means that ownership of a registered mark is not
required–unregistered or common law trademark
or service mark rights will suffice”
to support a domain name Complaint under the Policy); see also 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”).
Complainant
further alleges that the <twistedpair.com> domain name is confusingly similar to its
TWISTED PAIR mark. Some support exists
for Complainant’s contention in this regard as well where a Complainant can
actually show such rights at a point
earlier in time to Respondent’s alleged
infringement. See Bank of Am. Corp. v. domain chronicle,
FA 178817 (Nat. Arb. Forum Sept. 22, 2003) (finding that the removal of the
spaces between the words of Complainant’s mark was a
“cosmetic and
inconsequential change” that rendered the disputed domain name confusingly
similar to Complainant’s mark); see also Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible
in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”).
However,
Complainant here concedes that Respondent registered the <twistedpair.com>
domain name on March 1, 1996, a date some four years earlier than Complainant
urges that it acquired alleged rights in the TWISTED
PAIR mark. This concession rebuts Complainant’s claim
that it “has rights” in the mark that were prior to Respondent’s use pursuant
to Policy
¶ 4(a)(i). See 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”); see also Intermark Media, Inc. v. Wang Logic Corp.,
FA 139660 (Nat. Arb. Forum Feb. 19, 2003) (finding that any enforceable
interest that Complainant may have in its common law mark
did not predate
Respondent’s domain name registration, therefore finding that Policy ¶ 4(a)(i)
had not been satisfied); see also Razorbox, Inc. v. Skjodt, FA 150795 (Nat.
Arb. Forum May 9, 2003) (noting that as Respondent’s registration of the
<razorbox.com> domain name predated
Complainant’s alleged rights
(Respondent registered the disputed domain name more than two years prior to
Complainant’s stated first
use in commerce) Complainant did not have standing
to bring a claim under the UDRP).
Further, Complainant produced no evidence of any use
of the TWISTED PAIR mark as a trade name or in business that would, through
Complainant’s
use of it, produce secondary meaning sufficient to establish
Complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i).
See Weatherford
Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (holding that a finding of common law rights in a mark
required a level of supporting evidence, statements or proof such as business
sales figures,
revenues, advertising expenditures, number of consumers served,
trademark applications or intent-to-use applications); see also Front Range
Internet, Inc. v. Murphy, FA 145231 (Nat. Arb. Forum Apr. 4, 2003) (finding
that Complainant’s use of a trade name, without any showing of secondary
meaning
associated with the name, was an insufficient demonstration that
Complainant “had rights” under the Policy).
While Complainant stated that it expended funds and efforts to develop
the mark, it produced no evidence to support such claims.
Complainant did not meet the requirements of UDRP Policy
¶ 4(a)(i) to show that Respondent registered a name that was identical to
or
confusingly similar to a mark in which Complainant had legal or common law
rights at the time Respondent used the mark.
Complainant
alleges that Respondent’s use of Complainant’s mark in the disputed domain name
as a forwarding address to the <new.blogger.com>
domain name, which is an
opinion posting website for “inflammatory diaries and controversial
publishing,” is evidence that Respondent
lacks rights and legitimate interests
in the disputed domain name. Some support exists for this position; but it has
been found in
cases where the Complainant had a prior right to the mark
infringed upon in the domain name. See
eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating
that the "use of complainant’s entire mark in infringing domain names
makes it difficult
to infer a legitimate use"); see also Am. Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s
mark “as a portal to suck surfers into a site sponsored
by Respondent hardly
seems legitimate”).
However necessary and worthwhile to the
future of mankind that Complainant’s intended use of the domain name might be, Complainant conceded that Respondent made a use
of the disputed domain name, and while it might not be as worthwhile a use as
Complainant
proposed for the domain name, public opinion sites and portals to
public opinion sites are an appropriate use for Internet development.
The Panel does not
address Respondent’s contention that the term “Twisted Pair” is a generic or
descriptive term commonly used to
refer to the electrical cable that connects
computer networks although some holdings would support such a contention. See
Zero Int'l Holding v. Beyonet Servs.,
D2000-0161 (WIPO May 12, 2000) (“Common words and descriptive terms are
legitimately subject to registration as domain names on
a 'first-come,
first-served' basis."); see also CRS Tech. Corp. v. Condenet,
Inc., FA 93547 (Nat.
Arb. Forum Mar. 28, 2000) (“[C]oncierge is not so associated with just one
source that only that source could claim
a legitimate use of the mark in
connection with a website.”); see also Seaway Bolt & Specials Corp. v.
Digital Income Inc., FA 114672 (Nat. Arb Forum Aug. 5, 2002) (finding that
because the domain name was a generic term and there was no evidence that
Respondent knew or should have known of Complainant at registration,
Respondent’s use of the domain name gave rise to rights and
legitimate
interests). However, the Panel gave no
weight to Respondent’s inadequate deficient Response.
Complainant
concedes that Respondent registered the disputed domain name four years before
Complainant could have begun to establish
rights in a TWISTED PAIR mark under
any evidence before the Panel; and, Complainant concedes that Respondent used
the domain name
as a public opinion site, a manner that has not been found to
be inappropriate for Internet development. See
Latent Tech. Group, Inc. v. Fritchie,
FA 95285 (Nat. Arb. Forum Sept. 1, 2000) (finding that Respondent does have a
legitimate interest in the domain name where Complainant
applied for
registration of the mark after Respondent registered the domain name and
Complainant has not proven any earlier use of
the mark); see also Warm
Things, Inc., Inc. v. Weiss, D2002-0085 (WIPO Apr. 18, 2002) (finding that
Respondent had rights or legitimate interests in a domain name when its
registration
of that domain name occurred before Complainant had established
rights in its alleged mark). Further, Complainant concedes that it contacted
Respondent by e-mail and made an offer to purchase the domain name and that
Respondent
responded to the e-mail, in which Respondent set a price for the
domain name at $2,000. This concession
rebuts Complainant’s claim that Respondent has held the domain name passively,
holding it solely for sale to Complainant.
See Modern Props, Inc. v. Wallis, FA 152458 (Nat.
Arb. Forum June 2, 2003) (finding that Respondent’s operation of a bona fide
business of online prop rentals for
over two years was evidence that Respondent
had rights or legitimate interests in the disputed domain name); see also Bankinter S.A. v. BI Fin. Inc.,
D2000-0460 (WIPO Sept. 5, 2000) (“By 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.").
Complainant did not satisfy the burden of showing that
it has rights to and legitimate interests in the disputed domain name and that
Respondent has no such rights under UDRP Policy ¶ 4(a)(ii).
Complainant
did not produce evidence of use in time prior to the date that Respondent
registered and started using the disputed domain
name. While Complainant could have begun to
establish such rights at an earlier time, it produced no evidence to support
any such claim.
See 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 Aspen Grove, Inc. v. Aspen Grove,
D2001-0798 (WIPO October 5, 2001) (finding that it is impossible for Respondent
to register a disputed domain name in bad faith
if Complainant's company did
not exist at the time of registration); see also Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc.,
D2000-0174 (WIPO May 26, 2000) (finding no bad faith where Respondent
registered the domain prior to Complainant’s use of the mark).
Complainant
did not make the necessary showing under UDRP
Policy ¶ 4(a)(iii).
Reverse Domain Name Hijacking
In
its deficient Response, Respondent argued that pursuant to UDRP Rule 15(e),
Complainant
was aware that it had no rights to the TWISTED PAIR mark at the time that
Respondent registered the disputed domain name,
and that this shows that the
Complaint was brought in bad faith. See Aspen Grove, Inc. v. Aspen Grove,
D2001-0798 (WIPO Oct. 5, 2001) (finding that Respondent's registration of the
<aspengrove.com> domain name two years before
Complainant's incorporation
justified a Reverse Domain Name Hijacking ruling).
While
the evidence establishes that Complainant knew of Respondent’s use of the
domain name at a point in time four years earlier
to its initial claim of
rights, the Panel is limited to the papers before it in making a determination
of reverse domain name hijacking.
Respondent had the burden of proof in establishing reverse domain name
hijacking by making a showing of “unassailable right or legitimate
interest in
a disputed domain name,” a burden of proof that is almost impossible to make in
a deficient Response that cannot be given
weight. See Verkaik v.
Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (holding that the
burden of proof rests with the domain name registrant to show that it has an
unassailable
right or legitimate interest in a disputed domain name when a
claim of reverse domain name hijacking is made); see also Credit Suisse
Group v. Leu Enters. Unlimited, FA 102972 (Nat. Arb. Forum Feb. 23, 2002)
(finding no Reverse Domain Name Hijacking where “the Panel consider[ed] the
Complaint
to have been misconceived rather than brought in bad faith”).
The Panel is without the necessary documentation
to make such a finding.
DECISION
Having
failed to establish all three elements required under the UDRP Policy, the
Panel concludes that relief shall be DENIED. Accordingly, it is Ordered that the <twistedpair.com>
domain name NOT BE TRANSFERRED from Respondent to
Complainant. The Panel ORDERS
that this Complaint be DISMISSED.
Hon. Carolyn Marks
Johnson, Panelist
Dated: March 30, 2004
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