The UDRP filed against the Swedish domain Twinkl.se did not have a good outcome for the Complainant, Twinkl Ltd ofUnited Kingdom.
The latter obtained a European Union trademark in 2021, trailing the disputed domain’s registration by a whole 14 years. In the response, the Respondent said:
The Domain Holder registered the disputed domain name in 2007, and thus long before the Petitioner was established.
The Domain Holder states that she is an entrepreneur and runs two private limited companies, publishes books and magazines, and produces events, etc. “Twinkl” is in her view a name which fits into much of what she is doing. The Domain Holder’s purpose at the time of the registration was, and still is, to use the disputed domain name in connection to her business, products, events, etc.
The WIPO panelist agreed, pointing out that the display of a parked page for the past 6 months is not an indication of bad faith use by the Respondent:
It must be considered clear from the record that the disputed domain name since May 27, 2021, displays a parking page. Neither the fact that the disputed domain name has displayed a parking page for about six months means that it has been used in bad faith.
Final decision: Deny transfer of the domain Twinkl.se to the Complainant.
The domain transfer was denied.
WIPO Arbitration and Mediation Center
Alternative Dispute Resolution Proceeding
Case No. DSE2021-00311. Petitioner
The Petitioner is Twinkl Ltd ofUnited Kingdom, represented internally.
2. Domain Holder
The Domain Holder is Å.C.R., Sweden.
3. Domain Name and Procedural History
This Alternative Dispute Resolution proceeding relates to the disputed domain name <twinkl.se>.
This Petition was filed under the Terms and Conditions of registration (the “.se Policy”) and the Instructions governing Alternative Dispute Resolution proceeding for domain names in the top-level domain .se (the “.se Rules”).
The WIPO Arbitration and Mediation Center (“the Center”) verified that the Petition satisfied the formal requirements of the .se Policy and the .se Rules. The Center sent an invitation to the Petitioner on October 1, 2021 to amend the Petition. The Petitioner submitted an amended Petition on October 6, 2021. In accordance with Section 13 of the .se Rules, the Center formally notified the Domain Holder of the Petition on October 7, 2021. The Domain Holder submitted a response on October 20, 2021.
The Center appointed Per Carlson as the sole Arbitrator in this matter on November 3, 2021. The Arbitrator has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Section 1 of the .se Rules.
4. Factual Background
The Petitioner is a private limited company, incorporated under the Companies Act 2006 (England and Wales). The Petitioner is the holder of the European Union trademark TWINKL (registration No. 018354946) registered on April 21, 2021, for instructional and teaching material in class 16 and primary education services in class 41.
The Domain Holder is the holder of the disputed domain name <twinkl.se>, registered on December 3, 2007, and displays a parking page.
5. Claim
The Petitioner has requested that the disputed domain name <twinkl.se> be transferred to the Petitioner.
The Domain Holder has contested the request.
6. Parties’ Contentions
A. PetitionerIn support of its claim the Petitioner has relied on the grounds, that the disputed domain name <twinkl.se> is identical to the Petitioner’s registered trademark TWINKL, that the disputed domain name has been registered or used in bad faith and that the Domain Holder has no rights or justified interest in the disputed domain name.
The Petitioner has stated, inter alia, the following allegations.
The disputed domain name <twinkl.se> is identical to the trademark TWINKLE and the company name “Twinkl”, which is the established trading name of the Petitioner and which has been used by the Petitioner since 2010. The Petitioner is in the business of supply of educational products and services. The name has been used by the Petitioner in this course of business (including internationally) since 2010. The Petitioner is the holder of more than 45 domain names consisting of its name Twinkle. In addition, the Petitioner has an existing and consistently increasing customer base located in Sweden.
It is not clear from the publicly-available information as to the date on which the disputed domain name was first registered by the Domain Holder. And there is no evidence to suggest that the disputed domain name has been used for any purpose other than to reserve it to display a parking page. The Domain Holder´s registration and use of the disputed domain name constitutes bad faith as it prevents the legitimate registration and use by the Petitioner. The Petitioner has existing goodwill and brand recognition subsiding in the trademark within Sweden. And the Domain Holder´s registration of the disputed domain name prevents the Petitioner from registering a domain name with its recognized trademark.
The Petitioner is the sole holder of the trademark TWINKL. The Petitioner is aware of no evidence to suggest that the Domain Holder has or has ever had any right or justified interest in the disputed domain name. The Domain Holder´s registration of the disputed domain name prevents the Petitioner from registering its company name and trademark as a domain name to provide goods and services to customers in Sweden. Therefore, the Domain Holder has no ostensible right or justified interest in the disputed domain name.
B. Domain Holder
The Domain Holder claims that her company “Far from standards AB”, has a logotype consisting of a dragonfly – a figure reminding us of giving our customers an “aha-experience”. The logotype is described as the company’s “twinkle” and its purpose and function is currently under further development.
The Domain Holder registered the disputed domain name in 2007, and thus long before the Petitioner was established.
The Domain Holder states that she is an entrepreneur and runs two private limited companies, publishes books and magazines, and produces events, etc. “Twinkl” is in her view a name which fits into much of what she is doing. The Domain Holder’s purpose at the time of the registration was, and still is, to use the disputed domain name in connection to her business, products, events, etc.
7. Discussion and Findings
In accordance with article 7.2 of the .se Policy, a domain name may be transferred to the party requesting dispute resolution proceedings, if the following three conditions are fulfilled:
1. the domain name is identical or similar to a name, inter alia a trademark, which is legally recognized in Sweden and to which the party requesting dispute resolution can prove its rights;
2. the domain name has been registered or used in bad faith; and
3. the domain holder has no rights or justified interest in the domain name.
A. The Domain Name is identical or similar to a name which is legally recognized in Sweden and to which the Petitioner can prove its rights
The Petitioner is the holder of the European Union trademark TWINKL, legally recognized in Sweden. The disputed domain name <twinkl.se> is identical to the Petitioner’s said trademark TWINKL.
B. The Domain Name has been registered or used in bad faith
The disputed domain name was registered on December 3, 2007, according to the public WhoIs information, and thus before the point in time when the Petitioner started to use the name “Twinkl” in the course of trade (2010) and long before the registration of the Petitioner’s trademark TWINKL (2021). Consequently, the disputed domain name has not been registered in bad faith in relation to the Petitioner’s name and trademark.
The Petitioner has not presented any actual evidence that the trademark TWINKL enjoys goodwill and brand recognition in Sweden in respect of instructional and teaching material in class or primary education services. The Petitioner has not stated, that the Domain Holder has at any time tried to benefit illegitimately from the Petitioner’s trademark. Neither has the Petitioner stated, that the Domain Holder plans to take unfair advantage of the Petitioner’s trademark.
It is true, that the Domain Holder´s registration of the disputed domain name prevents the Petitioner from registering its company name and trademark as a domain name. However, the mere fact that the disputed domain name is registered does not mean that it has been used in bad faith.
It must be considered clear from the record that the disputed domain name since May 27, 2021, displays a parking page. Neither the fact that the disputed domain name has displayed a parking page for about six months means that it has been used in bad faith.
C. The Domain Holder has no rights or justified interest in the Domain Name.
With regard to the fact that the disputed domain name has not been registered or used in bad faith, the Petitioner’s request for transfer of the disputed domain name cannot be granted. Therefore, there is no need for an assessment whether the Domain Holder has any rights or justified interest in the domain name.
8. Decision
On the basis of the foregoing, the Petitioner’s request for transfer of the disputed domain name is denied.
9. Summary
The disputed domain name <twinkl.se> is identical to the Petitioner’s registered European Union trademark TWINKL. The Petitioner has not proven that the disputed domain name has been registered or used in bad faith in the meaning of the .se Policy. The Petitioner’s claim to transfer of the disputed domain name is denied.
Per Carlson
Date: November 23, 2021
