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					ARBITRATION
AND
MEDIATION CENTER




ADMINISTRATIVE PANEL DECISION
Hershey Chocolate & confectionery Corporation v. Raymond Mah
Case No. D2010-1151



1. The Parties

The Complainant is Hershey Chocolate & Confectionery Corporation of United States of America
represented by Kaye Scholer, LLP of United States of America.

The Respondent is Raymond Mah of Canada, represented by Boughton Law Corporation of Canada.


2. The Domain Name and Registrar

The disputed domain name <twizzler.com> is registered with Network Solutions, LLC.


3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2010. On
July 13, 2010, the Center transmitted by email to Network Solutions, LLC. a request for registrar verification
in connection with the disputed domain name. On July 13, 2010, Network Solutions, LLC transmitted by
email to the Center its verification response confirming that the Respondent is listed as the registrant and
providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the
Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name
Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on July 19, 2010. In accordance with the Rules, paragraph
5(a), the due date for Response was August 11, 2010. The Response was filed with the Center on
August 11, 2010.

The Center appointed David Perkins as the sole panelist in this matter on August 17, 2010. The Panel finds
that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of
Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
                                                 page 2

4. Factual Background

4.A. The Complainant

4.A.1. The Complainant is a wholly owned subsidiary of The Hershey Company which sells (under license
from the Complainant) numerous well-known brands of chocolate and confectionery products. Those
products include candy twists which have been sold under the TWIZZLERS trademark since 1928 and
currently comprise sales in excess of US$150 million per annum

 Country             Reg. No.       Mark           Class(es)   Dates of                Date of
                                                   of goods    Application & Reg.      First Use
 United States of    680,105        TWIZZLERS      46          Filed: June 30, 1958    1928
 America                                                       Registered: June 9,
                                                               1959
 United States of    1,237,555      SUPER          30          Filed: April 21, 1982   April 1979
 America                            TWIZZLERS                  Registered: May 10,
                                                               1983
 United States of    3,599,520      TWIZZLERS      28          Filed: February 11,     November
 America                                                       2007                    3, 2008
                                                               Registered: March
                                                               31, 2009
 United States of    3,604,197      TWIZZLERS      20 & 28     Filed: June 30, 2008    October 31,
 America                                                       Registered: April 7,    2008
                                                               2009
 United States of    3,077,372      TWIZZLERS      3           Filed: June 27, 2003    March 27,
 America                                                       Registered: April 4,    2004
                                                               2006
 United States of    3,711,468      TWIZZLERS      20 & 28     Filed: February 25,     October 31,
 America                            and design                 2009                    2008
                                                               Registered:
                                                               November 17, 2009
 United States of    1,889,412      TWIZZLERS      30          Filed: October          May 13,
 America                            PULL-N-                    25,1993                 1994
                                    PEEL                       Registered: April 11,
                                                               1995
 United States of    3,023,580      TWIZZLERS      30          Filed: October 14,      August 23,
 America                            SOURZ and                  2004                    2004
                                    design                     Registered:
                                                               December 6, 2005
 United States of    3,141,745      TWIZZLERS      30          Filed: September 23,    December
 America                            TWEETERZ                   2005                    14, 2005
                                                               Registered:
                                                               September 12, 2006
 Canada              TMA184,359     TWIZZLERS      30          Registered: July 14,    August 1929
                                                               1972
 Canada              TMA664,095     TWIZZLERS      3           Registered: May 12,     April 6, 2006
                                                               2006
 Canada              TMA288,399     SUPER          30          Registered: March 2,    November
                                    TWIZZLERS                  1984                    1975
 Canada              TMA714,905     RAINBOW        30          Registered: May 22,     August 6,
                                    TWIZZLERS                  2008                    2006
 Canada              TMA670,813     TWIZZLERS      30          Registered: August      July 19,
                                    TWEETERZ                   22, 2006                2006
                                                    page 3

4.A.2. The Complainant is the registered proprietor of the following US and Canadian trademarks.

4.A.3. The Complainant owns the domain name <twizzlers.com> which is used to host a website to
communicate with the public about Twizzlers products.

4.B. Respondent

4.B.1. The Respondent registered the disputed domain name on April 25, 1999.

4.B.2. The Respondent says in his Affidavit that he registered the disputed domain name with the intention to
use it personally, enter into a partnership or sell the name to a party to develop a Internet based game in the
style of a brain teaser, logic puzzle or other similar style of game. Exhibited to the Response is an archived
print of the webpage to which the disputed domain name resolved on September 26, 2001 entitled
“TWIZZLER GAMES PEOPLE PLAY” depicting a 3 cog wheel design and the text “New Developments
possibilities!!” “Queries welcomed” with the Respondent’s email address. The cogwheels are said to
symbolize the inner workings of the human brain in relation to the puzzle or brain-teaser game that the
Respondent envisioned developing. Also exhibited to the Response is a screenshot of the full history of the
website to which the disputed domain name resolves.

4.B.3. The Respondent says that it remains his intention to use the disputed domain name in relation to
Internet based games.


5. Parties’ Contentions

5.A. Complainant

5.A.1. Identical or Confusingly Similar

5.A.1.1. The Complainant claims rights in the TWIZZLERS registered trademark which date back to first use
in the United States in 1928 and in Canada in 1929.

5.A.1.2. The disputed domain name is the singular version of that trademark. The Complaint cites three
cases decided under the Policy where using the singular form of a plural form trademark was held to be
confusingly similar for the purposes of paragraph 4(a)(i) of the Policy.

5.A.2. Rights or Legitimate Interests

5.A.2.1. The Complainant has not licensed or otherwise authorized the Respondent to use the TWIZZLERS
trademark.

5.A.2.2. The Complainant is unaware of the Respondent being commonly known by the disputed domain
name,

5.A.2.3. According to the Complainant, the Respondent is not making a legitimate non-commercial fair use of
the domain name Annexed to the Complaint is a print out of the website to which the disputed domain name
resolved on June 30, 2010. That website contained for-profit advertising and for-profit links to other
commercial websites, including sites selling products which compete with Hersheys chocolate and
confectionery products, specifically licorice candy products.

5.A.2.4. The Complaint cites a number of decisions under the Policy where such use of a disputed domain
name has been held not to constitute a bona fide offering of goods and services under paragraph 4(c)(i) of
the Policy. The Complaint also cites a number of decisions under the Policy where such use has been held
not to be a legitimate non-commercial or fair use of the disputed domain name under paragraph 4(c)(iii) of
the Policy.
                                                    page 4

5.A.2.5. In the circumstances, the Complainant’s case is that the Respondent has no rights or legitimate
interests in the disputed domain name.

5.A.3. Registration and Use in Bad Faith

5.A.3.1. Given the well-known status of the TWIZZLERS trademark and the confusing similarity of the
disputed domain name with that trademark, the Complainant says that the disputed domain name cannot
have been registered in good faith. The TWIZZLERS brand had been in use for 70 years and was very well-
known by the time the Respondent registered the disputed domain name in 1999.

5.A.3.2. Further, since the Respondent cannot demonstrate any rights or legitimate interests in the disputed
domain name, bad faith registration and use follow. Additionally, given the well-known status of the
TWIZZLERS trademark and taking all the circumstances into account, bad faith registration and use also
follows, citing Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

5.A.3.3. Finally, the Complainant says that the circumstances of paragraph 4(b)(iv) of the Policy are plainly
demonstrated on the facts of this case. In that respect, the Complaint cites a number of decisions under the
Policy finding bad faith registration and use where the disputed domain name has been used to direct users
to for-profit sponsored commercial websites, particularly where – as in this case – such website diverts
Internet users to products which compete with those of the Complainant trademark owner.

5.B. Respondent

5.B.1. Identical or Confusingly Similar

5.B.1.1. Respondent says that TWIZZLE is a noun defined in the Oxford English Dictionary meaning “a
twisting or spinning movement”.

5.B.1.2. The Respondent points to other users of TWIZZLE and TWIZZLER by, for example, Apple’s iPhone
“Brain Twizzler”; a children’s toy with the name “Spring Swings Twizzler Fun Ride”; in a footwear commercial
broadcast on YouTube “Spike Jonze’s Twizzler – Lakai Commercial” where a skateboarder watches his
skateboard twist and spin around while he is airborne; a puzzle game called TWIZZLE advertised on the
“www.bobblebropok.com” website; another Twizzle puzzle game on the “www.neoos.ch” website; and the
results from a Google search for “twizzle” which refers, inter alia, to a sailing yacht, figure skating fashion
designs, a hair studio and a music blog.

5.B.1.3. The Respondent says there can be no likelihood of confusion between use of the disputed domain
name for a game or puzzle website and the Complainant’s well-known Twizzlers candy twists.

5.B.1.4. The Respondent seeks to distinguish the decisions under the Policy cited by the Complainant where
use of the singular form of a plural form trademark was held to be confusingly similar, on the basis that those
cases all concerned situations where the Respondent was intentionally diverting Internet traffic from the
Complainant’s website to other websites. Since the use of the disputed domain name identified by the
Complainant in paragraph 5.A.2.3 above was not being made by the Complainant – at to which, see
paragraph 5.B.2 below – the Respondent submits that the present facts are very different and cannot apply
here.

5.B.2. Rights or Legitimate Interests

5.B.2.1. The Respondent’s case is that, on the facts set out in paragraph 4.B.2, the circumstances of
paragraphs 4(c)(i) and (iii) of the Policy apply.
                                                    page 5

5.B.2.2. Furthermore, as appears from the Respondent’s Affidavit on July 14, 2010, the day after the
Complaint was transmitted to him (July 13, 12010), he contacted the provider hosting the disputed domain
name (Network Solutions LLC) to request an explanation as to how – without his authority or consent – the
disputed domain name was being used to resolve to a for-profit advertising website. The Respondent says
that he also spoke to Network Solutions and they confirmed that such use would be terminated, as it duly
has been.

5.B.2.3. The Respondent says that he has never received any payment or compensation of any kind from
Network Solutions or from any other party in respect of the unauthorized use of the disputed domain name
to advertise their party products.

5.B.2.4. The Respondent says that he never had any intention to use the disputed domain name to advertise
third party candy, confectionery or licorice products and, had The Hershey Company notified him of such use
he would immediately have taken steps to prevent continuance of such use. As noted, immediately he
became aware of such use in July 2010, he took such steps .

5.B.2.5. Finally, the Respondent reiterates that his intention remains as it always was from 1999 when he
registered the disputed domain name. Namely to use it for an Internet based puzzle or game website.

5.B.2.6. In the circumstances, the Respondent contends that he has rights and legitimate interests in the
disputed domain name under paragraphs 4(c)(i) and (iii) of the Policy.

5.B.3. Registered and Used in Bad Faith

5.B.3.1. The Respondent relies on the facts set out in paragraphs 4.B.2 and 5.B.2.2 to 5.B.2.5 above as
evidence of his good faith registration and use of the disputed domain name. On those facts, the Response
says that none of the circumstances of paragraph 4(b) of the Policy can be demonstrated in this case.

5.B.3.2. Additionally, the Respondent says that he has never approached the Complainant to sell the
disputed domain name to them.

5.B.3.3. The Respondent says that his actual use can be seen from the archived print of the webpage on
September 26, 2001 which confirms the veracity of his Affidavit that the only intention to use and actual use
by him of the disputed domain name has been with a view to establishing an Internet based game or puzzle.
That, the Respondent says, remains his objective.

5.B.3.4. In the circumstances, the Respondent says that the disputed domain name was registered and has
been used by him in good faith.


6. Discussion and Findings

6.1. The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to
succeed in an administrative proceeding

(i)     that he Respondent's domain name is identical or confusingly similar to a trademark or service mark in
        which the Complainant has rights; and

(ii)    that the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii)   that the domain name has been registered and is being used in bad faith.

6.2. The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by
the Panel to be proved shall demonstrate the Respondent's rights or legitimate interests in the disputed
domain name.
                                                    page 6

6.3. The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if
found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4. As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They
are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence
relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

Identical or Confusingly Similar

6.5. The Complainant has established registered rights in the trademark TWIZZLERS, which date from 1958
in the United States and 1972 in Canada and that actual use of that trademark was first made in 1928 (the
United States) and 1929 (Canada). It is, indeed, a well-known trademark.

6.6. The disputed domain name is the singular form “Twizzler” of that trademark TWIZZLERS.
Notwithstanding that “Twizzle” is a dictionary word, having (according to the Oxford English Dictionary) its
                      th
origins in the late 18 Century, for the purposes of the Policy, the Panel considers that the disputed domain
name is confusingly similar to the Complainant’s TWIZZLERS trademark. Further, the use to which the
disputed domain name is actually put and/or is intended to be put is not generally regarded as relevant to
paragraph 4(a)(i) of the Policy.

6.7. Accordingly, the Complaint meets the requirements of paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests

6.8. However, on the evidence from the Respondent (his Affidavit) and the documents exhibited to the
Response, it is plain in the Panel’s view that the Respondent has demonstrated that the facts of this case fall
within paragraphs 4(c)(i) and (iii) of the Policy.

6.9. First, the Respondent has demonstrated his intention to use the disputed domain name for an Internet
based puzzle or game website.

6.10. Second, the for-profit use made of the disputed domain name was clearly neither intended nor
authorized by the Respondent. Immediately, he was put “on notice” of such use, he took effective steps to
ensure cesser of that use. Furthermore, the Respondent has made no commercial gain from that
unauthorized use.

6.11. 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.

6.12. In the circumstances, the Complaint fails to meet the requirement of paragraph 4(a)(ii) of the Policy.

Registered and Used in bad Faith

6.13. For the same reasons that the Panel is satisfied that the Respondent has demonstrated rights and
legitimate interests in the disputed domain name, the Complaint also fails to meet the requirements of
paragraph 4(a)(iii) of the Policy.
                                                   page 7

7. Decision

For all the foregoing reasons, the Complaint is denied.




David Perkins
Sole Panelist
Dated: August 31, 2010

				
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