UDRP: Twisted

Steve Levy ⬥ 17 September

Since 1928 children and adults alike have enjoyed the famous TWIZZLERS brand licorice candy and the brand is the subject of many longstanding trademark registrations. In a UDRP dispute over the domain name, the owner claimed that he intended to use the domain for an Internet-based brain teaser, logic puzzle or other similar style of game.  Although a screen shot of the Respondent’s website from 2001 showed a graphic relating to a game, the domain has more recently resolved to a classic pay-per-click site with links to the Complainant, Hershey Chocolate & Confectionary Corporation, and its competitors.  The Respondent claims he did not realize that his domain was resolving to a pay-per-click site and, as soon as he was served with the complaint, he contacted his registrar to have that content removed.

The Panelist acknowledged that the domain is confusingly similar to the Complainant’s trademark, under UDRP 4(a)(i) but went on to deny the claim on the ground that the Respondent had shown a legitimate interest in the domain under Policy 4(a)(ii). In support of this, the Panelist noted that the Respondent “demonstrated his intention to use the disputed domain name for an Internet based puzzle or game website” under Policy 4(c)(i) and that it did not intend to seek commercial gain under Policy 4(c)(iii).  In particular, the opinion noted that, had the Complainant first contacted the Respondent before filing its complaint, the Respondent would likely have removed the pay-per-click content from the site and obviated the need for this dispute.  The question of the Respondent’s bad faith was never addressed.

This opinion is interesting on a number of levels.  First, the Respondent’s claim of an intention to use his domain for a puzzle site was accepted based on a single, very old screen shot and despite the Respondent’s suspicious failure to move ahead with his claimed plans after owning the domain for nearly 11 years.  Next, the Panelist accepted the Respondent’s claim the he was not responsible for the pay-per-click content on his site which defies a long line of precedent that domain owners are, in fact, responsible for and in control of the content on their sites even where the content is placed automatically by a registrar.  See, e.g., MasterCard International Incorporated v. Banu Asum Kilich, WIPO Case No. D2009-1525 (Panel agreed with complainant’s assertion that “as the owner of the disputed domain name, [respondent] is responsible for the contents of the website, regardless of whether a third party profits from the links placed on the website.”); Google Inc. v. Aloysius Thevarajah, NAF Claim No. FA0911001295342 (2009) (“Respondent, as the owner of the … domain name, is responsible for the content on the website under Policy ¶ 4(a)(ii).”). It is not known if this precedent was cited by the Complainant here but the Respondent clearly should have been held responsible for the content of his site.  His removal of the pay-per-click content, when presented with a formal complaint, does not indicate that he did not know of the web content nor that he would have removed it had he been contacted by the Complainant prior to the complaint. Finally, even if the pay-per-click content had been removed, the Complainant’s customers would still have been confused and the TWIZZLERS brand harmed when visitors to the Respondent’s site discovered that it did not resolve.

The lessons for brand owners from this case are twofold: A pre-complaint demand email is good practice in many (though not all) cases to fend off the idea that a complaint could have been avoided.  Further, there is no telling whether the precedent on the Respondent’s responsibility for its web content was cited here or whether it would have swayed the Panelist to rule differently.  But, to help panelists reach the best and most accurate decisions, it is best to cite relevant precedent on all important points even if one might assume that they are obvious or well-established. 

Tags: brands, domain names, enforcement, Google Inc., Hershey Chocolate & Confectionary Corporation, MasterCard International Incorporated, Pay-Per-Click, trademark registration, TWIZZLERS, UDRP, WIPO

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