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September 20, 2010 / Nate Harris

Hershey Chocolate & Confectionery Corporation v. Raymond Mah

Summary of Hershey Chocolate & Confectionery Corporation v. Raymond Mah
(WIPO Case No. D2010-1151)

Filed: July 12, 2010; Decided: August 31, 2010 (Panelist: David Perkins)

Disputed Domain Name: <twizzler.com>

twizzler.com

twizzler.com

The Parties

Complainant Hershey Chocolate & Confectionary Corporation (“Hershey”) is the world famous chocolate and candy maker. It has sold candy twists under the TWIZZLER name since 1928, with current sales of TWIZZLER products averaging over $150 million a year. Hershey owns several trademark registrations for marks incorporating TWIZZLER, and operates a website at <twizzlers.com>, “which is used to host a website to communicate with the public about Twizzlers products.”

The Respondent Raymond Mah registered the disputed domain on April 25, 1999. According to Mr. Mah, he planned (and continues to plan) to either develop or sell the concept for  a brain teaser or logic game, which would be pointed to by the disputed domain. However, at the time the complaint was filed, the disputed domain name resolved to a link-hosting webpage containing links to Hershey’s competitors.

Identical or Confusingly Similar

The Panel finds that the disputed domain is confusingly similar to Hershey’s TWIZZLER mark.

Rights or Legitimate Interests

In the Panel’s view, Mr. Mah has proven his rights or legitimate interests in the disputed domain under Paragraph 4(c) of the Policy. First, he has demonstrated his intent to use the disputed domain in connection with a bona fide offering of services. Mr. Mah submitted evidence of the website at the disputed domain as it appeared on September 26, 2001, supporting his “brain teaser game” explanation:

twizzler.com

twizzler.com as of September 26, 2001

The Panel also found that Mr. Mah deliberately tried to avoid confusion with the TWIZZLERS mark. Mr. Mah could not explain why the disputed domain name resolved to a website that hosted links to Hershey’s competitor. However,  upon receiving Hershey’s complaint, Mr. Mah immediately contacted his hosting provider to remove the link page. The Panel notes that the complaint may have been unnecessary:

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.

Accordingly, the Panel finds that Hershey has failed to prove that Mr. Mah lacks rights or legitimate interests in the disputed domain. For that reason, it is unnecessary to consider the bad faith prong.

Decision

The complaint is denied.

Commentary

This Panel seems to recognize the reality that hosting services often generate links automatically based on the domain name.  In other words, Mr. Mah may very well have had no idea that his website hosted links to Hershey’s competitors. Most Panels treat those links as almost per se evidence of bad faith. Interestingly, this Panel focuses on Mr. Mah’s actions in quickly removing those links soon after he claimed to be aware of them.

That’s all well and good, but does Mr. Mah’s ignorance of the content of his own website cut against his claim of preparing (for over 10 years!) to launch an online game website? The Panel was satisfied that Mr. Mah had made “demonstrable preparations to use . . . the domain name . . . in connection with a bona fide offering of goods or services” under Paragraph 4(c)(i) of the Policy. That may have been true in 2001, but does that give him a pass nine years later?

Epilogue

<twizzler.com> now points to site claiming to be “Under Construction.”

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