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Rare Though a Word May Be If It Is Recorded in a Dictionary It Is Available For Non Trademark Use

Hershey manufactures a “candy twist” under the trademark TWIZZLERS. The word “twizzler” does not appear in standard desk dictionaries; it is not to be found in Merriam Webster’s Third International Dictionary. It is found in the Oxford English Dictionary where its first use is recorded as 1825. It appears to have entered the vocabulary as dialect word meaning “a twist or turn; a change of direction” (as in “there may be so many turns and twizzles”). A “twizzle” appears to be an industrial part in a spinning machine. In its verb form it means “to rotate rapidly, spin, twirl.” The candy that goes by the name “twizzlers” consists of lengths of licorice twisted around each other. One supposes that a “twizzler” is someone who enjoys “twizzles” or “twizzling.”

The disputed domain name in Hershey Chocolate & confectionery Corporation v. Raymond Mah, D2010-1151 (WIPO August 31, 2010) is <twizzler.com>. The Complainant argues that it is confusingly similar to its trademark. The Respondent argues that he registered the domain name to use in his development of a brain game. He uses the word figuratively to suggest a “brain teaser, logic puzzle or other similar style of game.”

It does not matter that a word is rare or obscure. The question is how and for what purpose the respondent is using it. Where use is unrelated to the goods or services offered by the complainant the registration is not abusive. The Panel found that “the Respondent has demonstrated his intention to use the disputed domain name for an Internet based puzzle or game website.” However, as with Shakespeare Company LLC v. Bob Pflueger, D2010-1126 (August 19, 2010) hyperlinks appeared on the website that Hershey argued supported a claim for bad faith use under paragraph 4(b)(iv) of the Policy (using the domain name for “commercial gain”).

If the purpose for the registration satisfies the 4(c)(i) defense then the offending hyperlinks are inconsequential. Since “the for-profit use made of the disputed domain name was clearly neither intended nor authorized by the Respondent [and since upon his being put] ‘on notice’ of such use [and] took effective steps to ensure cesser of that use” it is not evidence of bad faith. “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.”

Redirecting Internet visitors with hyperlinks is some evidence of bad faith, but the continuum extends from innocent to offensive acts. It is not a per se violation to have placed a hyperlink on a website resolving from a disputed domain name. Panelists draw a calibrated distinction between respondents motivated to take advantage of the reputation of a complainant’s trademark and those not so motivated. The consensus holds that a respondent is responsible for hyperlinks to websites offering goods or services competitive to complainant. However, the trespass is weighed against proof of the respondent’s motivation in registering the domain name and his explanation for the existence of the links. Advertent linking is condemned under the Policy. In Shakespeare Company the linking appears to have been inadvertent. In Hershey, the links were removed immediately upon notice. In neither case was there evidence that the Respondents targeted the Complainants or registered the domain names for their trademark values.

Levine Samuel, LLP <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com

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