In Jelique Products Inc v cybarcafe (Case D2008-1255, October 13 2008), a World Intellectual Property Organization (WIPO) panel has refused to transfer the domain name ‘tastytwist.com’ to Jelique Products Inc (situated in Florida, United States).
Jelique manufactured products under the name Tasty Twist. In this regard, on May 6 2003 it registered a device trademark for body creams and lotions which included the textual element ‘tasty twist’.
(situated in Quebec, Canada) registered the domain name ‘tastytwist.com’ on June 27 2006. cybarcafe used the domain name to point to a Sedo
parking page featuring a variety of advertising links which did not seem to target Jelique's particular business area (although the panel was able to look only at the pages available from the United Kingdom).
Jelique wrote to cybarcafe drawing the latter's attention to Jelique's trademark rights and seeking transfer of the domain name. When cybarcafe did not reply to this letter, Jelique sent a follow-up email on July 29 2008. cybarcafe replied, claiming that the term 'tasty twist' was generic and denying that Jelique's rights extended to the domain name. cybarcafe also indicated that Jelique could buy the domain name for C$10,000 if it wished to do so. Jelique subsequently filed a complaint with WIPO.
- the domain name registered by cybarcafe was identical or confusingly similar to a trademark or service mark in which it had rights;
- cybarcafe had no rights or legitimate interests in the domain name; and
- the domain name was registered and used in bad faith.
For the purposes of establishing the first element of the UDRP, Jelique relied on its registered trademark. cybarcafe argued that the term 'tasty twist' was generic and that Jelique should not be entitled to claim exclusivity in relation to it. The panel considered that Jelique was the proprietor of the trademark registration; while it was not in the terms 'tasty twist' per se, these words were the most prominent feature of the device mark. Therefore, the panel found that the domain name was confusingly similar to a trademark in which Jelique had rights.
With regard to the second element, Jelique argued that cybarcafe had no rights or legitimate interests in respect of the domain name. cybarcafe stated that:
- it had chosen the domain name in connection with its family business which, for many years, had concerned the production of ice cream; and
- the term 'tasty twist' was widely used in a generic sense in many industries, including the ice cream industry.
cybarcafe alleged that it planned to use the domain name for an invention concerning ice cream. In support of this allegation, it produced an email of January 4 2008 which read as follows:
"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."
Apart from this email, there was no business plan or other information before the panel indicating how cybarcafe proposed to go forward. The panel thus found that cybarcafe's explanation was insufficient to demonstrate rights or legitimate interests in respect of the domain name.
With regard to the third element, Jelique relied on the fact that the domain name was substantially identical to its trademark and that cybarcafe had offered to sell the domain name to it for C$10,000. The panel was suspicious about the limited evidence produced by cybarcafe in support of its contentions. Nevertheless, the panel considered that it was not for cybarcafe to prove its innocence, as Jelique had initiated the procedure. Jelique based its case primarily on the offer by cybarcafe to sell the domain name. However, as the panel noted, this offer was not an unsolicited approach from cybarcafe, as it occurred in response to a demand for transfer of the domain name made by Jelique. On balance, the panel was not satisfied on the evidence before it that cybarcafe registered the domain name with Jelique or its trademark in mind. Therefore, Jelique had not established that registration occurred in bad faith. Consequently, the complaint failed.
The decision provides a useful lesson to would-be complainants, as it demonstrates that simply obtaining an offer to sell a domain name from a registrant is insufficient to prevail in a UDRP procedure. Clear evidence of bad faith, both at the time of registration and in relation to any later use, is necessary. Moreover, it is for the complainant to prove its case in accordance with the UDRP or transfer will be denied.
David Taylor and Jane Seager, Lovells LLP, Paris