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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
British Broadcasting Corporation v. Bodyline Beauty Clinic (Mrs. Caroline Fell)
Case No. D2001-0389
1. The Parties
The Complainant is the British Broadcasting Corporation, a public corporation incorporated under the laws of England and Wales by Royal Charter, whose principal office is at Broadcasting House, Portland Place, London W1A 1AA, United Kingdom.
The Respondent is named in the Complaint as Bodyline Beauty Clinic with its principal place of business at 39 Banbury Road, Stratford-upon-Avon, Warwickshire CV37 7RP, United Kingdom. However in the Response, the Respondent in these proceedings is identified as Mrs. Caroline Fell trading as Bodyline Beauty Clinic with the same address.
2. The Domain Name and Registrar
The domain name which is the subject of this Complaint is <tweenies.com>.
The Registrar is Network Solutions Inc. of 505 Huntmar Park Drive, Herndon, VA 22070, USA ("NSI").
The Respondent’s administrative and billing contact is C Fell of Bodyline Beauty Clinic, 39 Banbury Road, Stratford-upon-Avon, Warwickshire CV37 7RP, United Kingdom. The Respondent’s technical contact is Register.com, of 575 Fifth Avenue, 11th Floor, New York NY 10018, USA.
3. Procedural History
On March 19, 2001, a Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by e-mail pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") of the Internet Corporation for Assigned Names and Numbers ("ICANN") and under the Rules for the Policy implemented by ICANN ("the Rules") and the WIPO Center’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules"). A hard copy of the Complaint was received by the Center via courier on March 21, 2001, and was acknowledged by the Center on the same day. In the Complaint were submissions by the Complainant that "the Respondent acts interchangeably as Bodyline Clinic and as the individual Chris Fell" and that "activities undertaken by Chris Fell are effectively for and on behalf of the Respondent".
The Center sent a Request for Registrar Verification to NSI on March 21, 2001, by email. NSI responded on March 23, 2001, and confirmed: (1) that it was the Registrar for the disputed domain name, (2) that Bodyline Beauty Clinic, was the current registrant of the disputed domain name, (3) that the NSI Service Agreement Version 5 was in effect for the disputed domain name, and (4) that the domain name was in "Active" status.
On March 26, 2001, the Center received a three page fax from a Mr. Chris Fell on the headed paper of BuyDomain with the same address as the Respondent, pointing out that he did not, as the Complainant alleged, operate interchangeably with Bodyline Beauty Clinic, and that it was his wife, Mrs. Caroline Fell, who was the proprietor of this establishment.
On March 30, 2001, the Center received several faxes from Mrs. Caroline Fell on notepaper headed "Bodyline Hair and Beauty". In them she asked that the Complaint be resubmitted correctly addressed to her. She responded to some of the allegations in the Complaint, and she provided a great deal of information about her business, the Bodyline Beauty Clinic. Hereafter in this Decision, Mrs. Caroline Fell and/or Bodyline Beauty Clinic will be referred to as ‘the Respondent’.
On March 30, 2001, the Center asked the Complainant to "clarify who the Respondent in this proceeding is" and asked for an amendment to the Complaint.
Between March 31 and April 2, 2001, the Center received several e-mails from the Respondent seeking clarification of the procedure under the Policy. The Center responded on April 3, 2001, which led to a further query on the same day from the Respondent.
On April 5, 2001, the Complainant sent an amended Complaint to the Center by e-mail, and by post/courier (received on April 9, 2001) with copies going to NSI, and to the Respondent by registered post.
On April 6, 2001, the Respondent sent an e-mail to the Center listing what she believed were a number of "obvious errors" in the amended Complaint, and asking either for additional documentation from the Complainant, or for further amendments to the Complaint, or for a new Complaint altogether.
On April 11, 2001, the Center sent the Notification of Complaint and Commencement of Administrative Proceeding to the Respondent by post/courier, fax, and e-mail, as well as to its administrative and billing contact.
On April 30, 2001, the Respondent sent three emails to the Center. In them she requested an extension of time for submitting the Response, which the Center granted – until May 8, 2001. She also made several other allegations, namely:
· that she had not received a copy of the amended Complaint. However since, on the same day in a later email, she comments that the Complainant has amended more than it was asked to do, it is clear that she had in fact received the amended Complaint, and
· that the amended Complaint had not been correctly submitted within the time limits laid down in the Rules.
Between May 1 to 4, 2001, the Respondent sent a number of emails to the Center in which she:
· posed a number of questions relating to procedure under the Policy;
· repeated the second of the allegations referred to above;
· alleged that because, in its amended Complaint, the Complainant had made several more changes than had been asked for, this in fact constituted a new Complaint for which a further fee was due.
On May 4, 2001, the Complainant sent an email to the Center and to the Respondent setting out in detail all of the changes to the original Complaint that appeared in the amended Complaint. This was acknowledged by the Respondent on May 6, 2001.
On May 8, 2001, the Respondent sent a Response to the Complaint by e-mail to the Center and to the Complainant. This was acknowledged by the Center on May 9, 2001, and a hard copy was received by the Center on May 10, 2001.
On May 9, 2001, the Respondent addressed eight emails to the Center seeking clarification of procedural points under the Policy, and a further email on May 10, 2001, formally complaining that the amended Complaint was in fact a second complaint, if not a third one for which no fees had been paid and that the Center had acted negligently.
The Center replied on May 10, 2001, confirming that in its view, the amended Complaint was not a new complaint, that there was only one set of proceedings, and that therefore only one fee needed to be paid.
On June 6, 2001, the Center sent a Notification of Appointment of Administrative Panel giving a Projected Decision Date of June 19, 2001, to the Respondent and to the Complainant, via email. A copy was also sent to the Panel on the same date by email.
The Center dispatched a Transmission of Case File to the Panel, the Respondent and the Complainant on June 6, 2001. The Panel received hard copies of this material on June 7, 2001.
On June 18, 2001, the Projected Decision Date was extended to June 26, 2001.
4. Factual Background
Activities of the Complainant
The Complainant has submitted no information about itself, other than its name, and the fact that it is a public corporation incorporated by Royal Charter. This absence of information should come as no surprise to the Respondent, or indeed the Panel, all of whom are resident in the UK, for the Complainant is one of the UK’s best known and most prestigious institutions. It is within the knowledge of the Panel and presumably also the Respondent, that the Complainant is a very substantial organisation based in the United Kingdom, financed principally by license fees, which is responsible for producing and broadcasting its own radio and television channels.
One of the Complainant’s television programmes is called the "Tweenies". This is an entertaining and informative pre-school television series in which its central characters (which are collectively called Tweenies) are depicted encountering life as experienced by three to five year olds, the target age group of the program. The dominant element of the program are the Tweenies themselves, who are individually called Bella, Milo, Fizz, Jake and Doodles the Dog.
The Complainant commissioned the series to be produced by Tell Tale Productions Limited, the creators of the program format. It has acquired all rights including all intellectual property rights generated in the production of the programs, this includes all trademark rights, design rights and copyright. The program is exploited through both the Complainant and its commercial subsidiary BBC Worldwide ("BBCW").
Tweenies has been broadcast continuously in the UK since September 6, 1999. Each program is 20 minutes in duration and repeated once. Programs are shown every day from Monday to Friday at 10.30 a.m. and at 3.25 p.m. Two hundred and sixty episodes of the series have so far been commissioned.
The program has been phenomenally successful. It was the highest rating children’s program at the start of 2000 and the average audience over the months of October and November 2000, has been 536,000, representing a share of approximately 50% of viewers at the relevant time of day. Internationally the series is now broadcast in 24 countries and BBCW is currently in negotiations with broadcasters in another 12 countries.
The Tweenies is the fastest selling children’s property in the history of BBCW and has generated over Ј40 million in revenue in its first seven months. Tweenies merchandise first went on sale in the UK on October 5, 1999, approximately one month after the series was first shown. As well as manufacturing its own products (mainly soft toys) BBCW has granted licenses to over 40 licensees who manufacture over 150 lines of Tweenies and Tweenies related merchandise. Other spin off activities also include the "Tweenies Live" Roadshow which had its first performance on December 26, 2000, and has taken Ј2.3 million in bookings; the "Tweenies Go Pop" single has gone silver by selling over 200,000 copies; the Tweenies CD Rom has so far sold over 68,000 units and the Tweenies website (which is located at <bbc.co.uk\education\tweenies>) receives over 1,000,000 hits per month. BBCW also undertakes extensive Tweenies related publishing activities. Tweenies books have sold in excess of 1 million copies and Tweenies videos in excess of 1.9 million.
The Complainants’ Trademarks
The Complainant owns trademark registrations and applications in the United Kingdom and a number other countries in respect of a wide variety of goods and services, for the word TWEENIES either in plain block capital letters or in script form in color. Copies of some of these trademarks were attached as an Annex to the Complaint. The earliest registration is UK trademark No. 2178171 which was filed on September 26, 1998 and granted on June 11, 1999. It is registered in class 41 for "Television and theatre production services; recording and performing entertaining and/or educational programs or shows for live theatre, film, video and multi-media". It was registered originally by Tell Tale Productions Limited who are the production company commissioned by the Complainant to produce and make the Tweenies television program, and it was assigned by Tell Tale Productions Limited to the Complainant as from the May 24, 1999. The Complainant has another UK registration, No. 2184811A in 8 different Classes, and a still pending application in Class 25 which has been divided from it, No. 2184811B.
The Tweenies word mark has also been registered in Australia, New Zealand, Japan, Hong Kong, Chile, Ecuador, Peru and there are applications pending in the European Community, Argentina, Colombia, Mexico, South Africa, Bolivia, Panama, Paraguay, Canada, Uruguay, Venezuela, Brazil, China, Malaysia, Norway, Singapore, Taiwan and the USA. However the only evidence produced for these marks was the application numbers for the two Community Trademarks.
The Complainant also identifies what it terms the "Unregistered Tweenies Mark", consisting of its common law rights acquired through the extensive use of the name, not only on the phenomenally successful television programs which have been broadcast in 24 countries, but also through the extensive licensing and merchandising program which is more particularly described above.
5. The Parties’ Contentions
The Complainant contends that the <tweenies.com> domain name is identical to the TWEENIES trademark, because the dot com suffix will be disregarded by internet users as a commercial designation.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name because -
a) Initially the <tweenies.com> website linked to a holding page for register.com, but during November 2000 this changed and, when it was accessed on November 27, 2000, internet users viewed a web page advertising the website services of Style 28. Following correspondence between Mr. Chris Fell and the Complainant in January 2001, the website was disconnected from Style 28. Currently the website advertises for sale hair and beauty products under the heading <HairandBeauty.co.uk>. (Printouts from all of these different versions of the website were attached as Annexes to the Complaint.) The Complainant contends that the Respondent has never used the website for any legitimate reason, and there are no products or services being offered which relate to the domain name or the Tweenies program or Tweenies products.
b) The Respondent clearly did not have any demonstrable plans to use the site for any bona fide purposes at the time of registration. An e-mail dated January 18, 2001, from Mr. Chris Fell on behalf of Bodyline Beauty Clinic does not give any reasons at all for the registration, but suggests that the children’s television program means there "may be additional options available to us". The Respondent is not, and never has been licensed to sell goods under the trademark Tweenies goods, and UDRP Panels have consistently held that the possible contemplation of the sale of goods via the domain name does not constitute fair or bona fide use of the domain name.
c) It appears that from the Respondent’s website at <healthandbeauty.co.uk> that the Respondent’s business is comprised of a health and beauty salon and selling health and beauty products over the internet. The Respondent does not appear to have any connections with children’s entertainment, nor does the Respondent sell any goods or services related to children’s entertainment via the internet.
d) The Respondent has not been licensed either expressly or impliedly by the Complainant to use the registered trademark ‘Tweenies’ in the domain name for any other purpose.
e) The name Bodyline Beauty Clinic, bears no resemblance to Tweenies and has no connection with the Tweenies program, with the Complainant or with Tell Tale Productions Limited. The Respondent is not commonly known by the name Tweenies.
The Complainant further contends that the domain name was acquired primarily for the purposes of selling, renting or otherwise transferring the domain name registration to the owner of the trademark, because -
f) At the time of the Tweenies launch there was extensive press coverage of the product. However, prior to the launch there were a considerable number of press leaks and stories relating to the Tweenies in the national press creating a reputation in Tweenies before the program was first broadcast. On November 22, 1998, the Mail on Sunday published a feature on the Tweenies. The headline read "Eh oh - now its bye bye to Teletubbies (and hello to the Tweenies)". The article described the Tweenies characters; it stated that the Tweenies are to take over from the highly profitable Teletubbies which have earned the BBC $25,000,000; and it said that 260 episodes of the Tweenies had been commissioned. [A printout of the Mail on Sunday article from the online newspaper service Lexis Nexis was attached as an Annex to the Complaint.] In the subsequent week stories were featured in the Mirror, the Nottingham Evening Post, the Newcastle Journal, the Independent, the Glasgow Herald, the Evening Standard, the Scottish Daily Record and Sunday Mail, the Birmingham Evening Mail, the Independent and the Scotsman.
The domain name was registered on the November 22, 1998, which was the same date as the article (referred to above) that appeared in the Mail on Sunday describing the impending launch of the Tweenies and its role as a replacement for the Teletubbies. The article implied that a great deal of money could be made from Tweenies. It is the Complainant’s submission that the disputed domain name was registered after the Respondents had seen this article in the Mail on Sunday with a view to making a commercial gain from the domain name by selling the domain name to the trademark owner.
g) As stated above the Respondent has not given any reason for registering <tweenies.com> in its response to the Complainant’s enquiries.
The Complainant contends that the domain name prevents the owner of the trademark from reflecting the mark in a corresponding domain name and that the domain name registrant has engaged in a pattern of such conduct because -
h) It is the Complainant’s submission that the Respondent’s registration of the domain name prevents, and is intended to prevent, the Complainant from effectively exploiting the goodwill in Tweenies through the medium of the internet. Internet users will inevitably expect <tweenies.com> to be associated with the Complainant.
i) It is also the Complainant’s submission that the registration of <tweenies.com> is part of a pattern of cybersquatting conduct. A large number of domain names are held by various parties who all give the same address as the Respondent, these include Bodyline Beauty Clinic, Housesale, BuyDomains and the individual Mr. Chris Fell, who the Complainant believes to be the administrative contact for the Respondent, (the administrative contact is C Fell and the email contact address is <firstname.lastname@example.org>). The Complainant understands that Mrs. Caroline Fell provides Health and Beauty services through Bodyline Beauty Clinic whilst her husband Mr. Chris Fell performs the administration of the business.
j) Another domain name <tweenies.co.uk> appeared on a Nominet WHOIS search (a copy of which was attached to the Complaint as an Annex) as having been registered to "Housesale" by UK2NET. When the UK2NET website was searched for <tweenies.co.uk> in July 1999 it produced the following message:
"One of our clients has registered this domain but it is currently not pointing to a website. To send a message to the owner, please e-mail email@example.com"
The Complainant’s agent Netsearchers International Ltd. ("Netsearchers") made an enquiry through UK2NET regarding <tweenies.co.uk>. Netsearchers also contacted the Respondent directly in respect of the domain name <tweenies.com>. During correspondence (not attached to the Complaint) regarding the .com domain name Mr. Chris Fell mentioned that he thought Netsearchers were interested in <tweenies.co.uk> and Netsearchers entered into negotiations to purchase the <tweenies.co.uk> domain name. A copy of the transfer of <tweenies.co.uk> from Housesale to Netsearchers International Ltd. was attached as an Annex to the Complaint together with a letter to Nominet on Housesale headed notepaper agreeing to the transfer. Both the letter and transfer are signed by "C.J.W. Fell", which the Complainant believes to be Mr. Chris Fell. The Housesale headed paper gives the same address as that of Bodyline Beauty Clinic.
It is the Complainant’s submission that the registration of <tweenies.co.uk> and <tweenies.com> constitute a pattern of conduct. The use of different registrant names and methods of registration make it extremely difficult to trace all the domain names that have been registered to businesses or individuals operating from the Respondent’s address. This in itself indicates a degree of bad faith in the dealings of the Respondent.
k) It is also the Complainant’s submission that the Respondent, in the guise of both Bodyline Beauty Clinic, and through its administrative contact, Mr. Chris Fell, is an opportunist cybersquatter. It is the Complainant’s submission that the Panel should consider all the relevant circumstances in the case and the Complainant submits that the activities of Mr. Chris Fell who appears to be the administrative contact for the Respondent and the other businesses run by him from the same address as the Respondent (a beauty business run by Mrs. Caroline Fell), are relevant circumstances. Searches under the names "Bodyline Beauty Clinic" and "Chris Fell" on the NSI WHOIS site produces a list of, respectively, 7 and 11 .com registrations and a copy was attached as an Annex to the Complaint. A pattern of cybersquatting behavior can be found on one of the lists, for Mr. Chris Fell has registered <freserve.com> and <demom.com>. Both of these domain names represent misspellings of widely known internet service providers, namely Freeserve and Demon. The registration of misspelt famous marks has been held to be classic cybersquatting behavior.
The Complainant has also discovered by accident that Mr. Chris Fell has registered the domain name <opengov.co.uk> which is confusingly similar to the UK Government website address <open.gov.uk>. It is not possible to search against the name Chris Fell or Bodyline Clinic for other .co.uk registrations but it is possible that there are many further examples of the Respondents cybersquatting behavior that the Complainant is unaware of.
Lastly, the Complainant contends that the domain name has been registered and is being used in bad faith because –
l) The domain name was registered on November 22, 1998, by Bodyline Beauty Clinic which is the same date as the article referred to above appeared in the Mail on Sunday. This article provided extensive details of the new BBC project, Tweenies and created an instant reputation in the name Tweenies and an instant association with the Complainant. It is the Complainant’s submission that the Respondent became aware of the Tweenies and the potential commercial value of the domain name on November 22, 1998, and took the opportunity to register the domain name in bad faith. The timing of the registration of the domain name clearly indicates opportunistic bad faith, an activity which some UDRP Panels have accepted as being contrary to the Policy.
m) The domain name has been used for a number of different purposes as set out above. The Respondent is currently using the domain name to attract internet traffic to a website selling health and beauty products through the reputation of Tweenies. The Respondent clearly intends to create a commercial gain by making sales to internet users who had no intention of visiting a website selling health and beauty products.
In effect, the Respondent has filed three responses. Firstly there was a five page letter dated March 29, 2001, and another two days later with, between them, 20 attached pages, all faxed to the Center. Secondly, there was a two page email sent to the Center on April 6, 2001, which detailed a number of perceived errors in the amended Complaint, and lastly, in a long, rambling, and repetitive Response of 20 pages, with many Annexes, emailed to the Center on May 8, 2001, the Respondent disputes most of the Complainant’s contentions.
In her three documents, the Respondent makes a number of points. Because of the manner in which these documents have been presented, it has not been easy for the Panel to be sure that every one of the Respondent’s contentions have been identified, but it is believed that the following are relevant to this particular case, and that all of them have been addressed in the Discussion and Findings.
At the outset, the Respondent contended very forcefully that the Complaint had been incorrectly addressed throughout. This was because it included references to Mr. Chris Fell who, it was said, had nothing to do with the Respondent’s business, which is a beauty clinic and hair salon conducted in two separate premises.
The Respondent further contended that the Complainant had made clear errors in its Complaint, as well as making knowingly false statements and that the Complaint was being brought to harass, by bringing in other matters not related to the Respondent’s business. The Respondent asked the Panel to make a finding of reverse domain name hijacking. Furthermore, it was contended that the Center had aided the Complainant in not adhering to the Rules and had not treated both parties with equality, all to the detriment of the Respondent.
Communications from the Complainant, notably the Notification of Complaint and the Notification of the amended Complaint, were incorrectly addressed. The same applied to communications from the Center, notably the Commencement of Administrative Proceedings.
An amended Complaint was filed, but in the opinion of the Respondent, this too gave rise to a number of contentious issues.
For example, the Respondent contended that the amended Complaint was not an amendment at all, but a new Complaint for which a fresh fee should have been paid. In its amended Complaint, the Complainant had not made "amendments", it had made extensive additions to its original Complaint, and it had added new material. Furthermore, it was not correctly submitted according to the Rules, and it was in fact a new, or a second, Complaint. If this was so, then the Panel must disregard all the supporting documentation supplied by the Complainant with its original Complaint.
The Complainant did not contact the Respondent until January 18, 2001, and the Respondent cannot understand why the Complainant did not contact her before, as the Complainant must have known that she owned the domain name <tweenies.com> years before, and possibly even at the date of the trademark application. The first Tweenies program was not shown until September 6, 1999, which was almost a year after the registration of the disputed domain name.
The initial complaint, received from the Complainant in January 2001, was only responded to by the Respondent’s husband, Mr. Chris Fell (who marked it "Without Prejudice") because the Respondent herself was staying in Wales some two hours drive away from her home and workplace, attending to her terminally ill mother, who actually died on January 31, 2001.
The Respondent states that she was aware that the Complainant had trademark rights in TWEENIES for television and toys, but nevertheless contends that confusion will not occur between the trademark and the disputed domain name because she is only interested in class 3 (which would include Hair and Beauty Products). The Complainant has produced no evidence that it uses its mark for hair and beauty products in the UK or Europe and it has not registered the trademark in this Class in the USA. There is no reason why two persons should not own and use the same word as a trademark for different products, and the Respondent produces documentary evidence showing this to be true of the word marks OMEGA and WIMPY.
The Complainant’s word and device trademark in class 41 (No. 2178171) was unknown to the Respondent at the date of the domain name registration. Also not only are there a number of deficiencies in the documentation relating to the Complainant’s trademark, but in addition this documentation relates only to the marks in the UK.
The Respondent contends that the Complainant does not have the exclusive right to the use of the name TWEENIES and produces copies of some searches which chronicle a trademark registration of TWEENIES dated October 3, 1963, as well as marks such as BETWEENIES, ESLEEP TWEENIES and TATOO TWEENIES.
The domain name was not confusingly similar to the trademark at the date of the former’s registration; the Respondent had never heard of it and, because of a prior trademark registration, it had been on the public record for 35 years.
As for the Tweenies story in the press, neither the Respondent nor her husband have ever subscribed to the ‘Mail on Sunday’ or to any of the papers listed. When she has the time to read, she reads The Times on weekdays and the Sunday Telegraph on Sundays. Indeed, at the time the article was published, the Respondent was much occupied with other, more personal problems and, effectively, working seven days a week with little time to spare to read newspapers. Furthermore, no actual copy of a newspaper article has been produced merely a two-page document. There is no headed paper from the ‘Mail on Sunday’, only a copy which bears the legend "LOAD-DATE November 24, 1998".
The Respondent produced documentary evidence that 7 domains had been applied for in the name of Bodyline Beauty Clinic on or prior to November 18, 1998, from Register.com, and she had only ever applied for these seven .com domain names. One of these (<bodylinebeautyproducts.com>) has been allowed to lapse as being too long. The others are <kanebocosmetics.com>, <thalgocosmetics.com>, <bodylinebeautyclinic.com>, <beautyuk.com>, and <australianbodycare.com>. At the time of the first attempted registration (which failed as the result of a computer crash) there was no conflict, nor was there at the time of actual registration a few days later. The e-mail address through which they were registered (Chris@bodyline.demon.co.uk) is a default address, and any email comes back to this address however it is addressed or described.
The domain name <tweenies.com> was not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant, or to a competitor of Complainant, for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the domain name.
The origin of the domain name <tweenies.com> lies in the Respondent’s desire to have her own label beauty products, as the result of her shop achieving success in the first Salon of the Year event in 1997. An original name had to be used due to Bodyline already being used for beauty products. In her own words, she "ended up looking around teenies - and found numerous adult sites. I suppose I was influenced by eenies - beenies had started around this time. I actually did a mistype the W being next to the E on a qwerty keyboard."
The Respondent sells several different brands of cosmetics in her shops, which is why she registered the domain names <kanebocosmetics.com>, <thalgocometics.com> and <australiabodycare.com>. The owners of these other domain names have never taken any action on any of them. They even send her information to update them. They supply the Respondent with their products and the Respondent has their information on the above named websites.
The <tweenies.co.uk> domain name was purchased by Netsearchers, but in doing so the purchasers made no representation that they were acting as an agent for the Complainant. Furthermore, it was Netsearchers who made an offer for <tweenies.com> after the negotiations were underway for the purchase of <tweenies.co.uk>. They never addressed their e-mail to the Respondent herself or to Bodyline and the name was not the Respondent’s husband to sell. He no longer has a copy of the relevant e-mail.
As an afterthought, the Respondent contends that the Complainant has no control over who sells its licensed products. The Respondent has purchased tweenies dolls at wholesale prices. Their products are readily available on the internet and are being sold from tweenies websites, e.g. www.tweenies.net.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that in order to be successful, a Complainant has the burden of proving, on the balance of probabilities, that all of three elements are present in its Complaint. However it is first necessary to consider the Respondent’s objections to the amended Complaint and to the conduct of the Complainant and the Center.
Once the Complaint was notified the Respondent still saw what she believed were imperfections in the Complaint. She then assumed that it was the role of the Center to correct them, when in fact at this stage of the proceedings, it was for her to identify them and for the Panel to give its ruling on them. The Respondent has not clearly understood the procedure under the Policy – something which is not at all uncommon in the case of individuals caught up in the process.
For the benefit of the Respondent, the UDRP procedure can be likened to a boxing match, in which the two protagonists (i.e. the Complainant and the Respondent) are both permitted one punch each, in which the Center is the master of ceremonies or the ringmaster, and in which the Panel is the Referee whose job is to decide which of the two protagonists has landed the most effective punch.
The Respondent’s first complaint relates to the manner in which the Respondent was described in Paragraph 7.2 of the Complaint, namely: "It is the Complainant’s submission that the Respondent acts interchangeably as Bodyline Beauty Clinic and as the individual Chris Fell" and "The Complainant submits that for the purposes of this Complaint Chris Fell and Bodyline should be treated as the same entity." The Respondent says that "Chris Fell cannot be the respondent – he does not own the domain name tweenies.com. I do in the name of Bodyline Beauty Clinic – my trading name and address."
But it was an understandable mistake on the part of the Complainant. The NSI WHOIS record clearly states that the administrative contact for the disputed domain name is "Fell.C (CF 4416)" with an email address as firstname.lastname@example.org.
Furthermore when the Complainant emailed an enquiry as to the owner’s intentions on January 16, 2001, to Bodyline Beauty Clinic at the address given in the NSI WHOIS database, it was replied to by Mr. Chris Fell on the headed paper of BuyDomains. Any reasonable person would therefore assume from this that "Fell.C" was the Chris Fell who had replied to the original letter and who, some months previously, had transferred the domain name <tweenies.co.uk> to persons acting on behalf of the Complainant.
Faced with information supplied by the Respondent that this assumption was in fact incorrect, the Center immediately asked the Complainant, on March 30, 2001, to "clarify who the Respondent in this proceeding is" and asked for "an amendment to the Complaint". The Complainant responded on April 5, 2001, by sending an amended Complaint in which accusations that the Respondent and ‘Chris Fell’ were synonymous had been removed. However the Panel was still requested in the amended Complaint to "consider all the relevant circumstances in the case".
This too was angrily objected to by the Respondent who stated that it should be re-submitted "with the correct details" or that the Complainant should submit an entirely new Complaint. The matters complained of, were set out in an email of April 6, 2001, not all of which is easy to follow, but those which can be clearly understood are as follows:
· The correspondence was sent to Bodyline Beauty Clinic, not to C. Fell Bodyline Beauty Clinic;
· The letter was addressed ‘Dear Sirs’ instead of ‘Dear Mrs. Fell’ or ‘Dear Madam’;
· The Complaint refers to Bodyline Beauty Clinic as having a place of incorporation, when in fact the Respondent had already made clear that she was not a company.
· The Complainant had provided no evidence of those of its licensing and merchandising activities which were described in the Complaint.
· The Complainant referred to Without Prejudice correspondence.
· The Respondent provides Hair and Beauty Services not Health and Beauty Services as is stated in the Complaint.
· It was not the Complainant who contacted Bodyline Beauty Clinic regarding <tweenies.co.uk> but Netsearchers.
· A reference to ‘Respondent in the guise of both Bodyline Beauty Clinic and through its administrative contact Chris Fell’ is unclear and ambiguous.
· There is no documentary evidence of some domain name searches undertaken by the Complainant.
· Although the Complainant knows who the Respondent is they still refer to her as being masculine, i.e. "his website".
In the opinion of the Panel, these comments are comparatively trivial and they will, where relevant, be addressed hereafter. It is however worth noting that the reason given by the Respondent for why she made specific requests regarding the way in which she should be addressed was "to ensure confirmation of receipt", but in fact all the documents, both from the Complainant and the Center, were duly received by the Respondent. Also she herself has been somewhat cavalier about copying the Complainant with all of her many communications. She cannot have it both ways.
The above quoted email also contained a number of critical comments relating to the Complainant’s trademark details which will also be dealt with below when discussing the Complainant’s trademarks.
On April 30, 2001, the Respondent came up with a new objection, based on her interpretation of Paragraph 4(b) of the Rules, namely that the amended Complaint was submitted out of time and should therefore have been rejected. When the Center sent its request for clarification, no deadline was set for the Complainant.
In this case, all the administrative details were correct. In the original complaint the Respondent was (quite correctly) identified as ‘Bodyline Beauty Clinic’ and the administrative and billing contacts were (again quite correctly) identified as ‘C. Fell at Bodyline Beauty Clinic’. However these details were followed by the wording in Paragraph 7.2 which is so vehemently complained of by the Respondent and which is set out above in the fourth paragraph under the heading ‘Discussion and Findings’.
In the view of the Panel, these words do not form part of the administrative details of the Complaint. They are prefaced with the words "It is the Complainant’s submission" and "The Complainant submits". It is clear from this that both statements are an opinion, or a surmise, on the part of the Complainant. Consequently the Panel finds that the Complaint was not administratively deficient and that Rule 4(b) does not apply. Thus it is unnecessary to rule on whether the five calendar days referred to in that Rule include or exclude the days on which an amended Complaint is requested and received.
The Center, in its communication to the Complainant of March 30, 2001, only asked for clarification, specifically suggesting that this be done quite simply. It did not ask for a new Complaint, it did not reject the Complaint, and it did not refer to paragraph 4(b). In the view of the Panel this was the correct approach and the Center behaved with complete propriety. The Complainant chose to submit the entire document again, with the offending words removed. This necessitated several subsequent changes in order for the Complaint to be understandable. Therefore it is not, in the view of the Panel, a new Complaint so no additional fee is required and the Annexes to the original Complaint can form part of the amended Complaint.
The Panel will now turn to examining the requirements of Paragraph 4(a) of the Policy. As stated above, these are threefold.
"4(a)(i) your domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights."
The Complainant has satisfied the Panel that it has rights in the trademark TWEENIES. Its earliest registration of this mark, No. 2178171, was filed in the UK on September 26, 1998, and since it is now registered, under UK law that is its registration date. It is for the word TWEENIES written in lower case script and it is colored blue, yellow and red. The Respondent says that in fact it consists not of the word ‘tweenies’ but of the word ‘teenie’. However closer inspection of the device shows that the apparently missing letters ‘w’ and ‘s’ are indeed there but difficult to see. They are presumably printed in a pale color and it would have greatly assisted both the Panel and the Respondent if a color copy of the registration had been filed with the Complaint.
The printout from the UK Patent Office database of this mark is sufficient proof of its registration and there is no need for a Complainant to also produce a copy of the registration certificate. The same applies to the Complainant’s other registration of TWEENIES in block capital letters No. 2184811A dated December 17, 1998.
The Complainant refers to a number of other trademark registrations and applications for TWEENIES in other countries and although, for the purposes of the Policy, one mark is enough, this information even though not supported by documentary proof points to a global interest in the name on the part of the Complainant.
There is no doubt that the Complainant’s trademark is identical to the disputed domain name. It is now well established under the Policy that, when comparing a domain name with a trademark the generic suffixes .com, .org, or .net can be ignored.
That should be sufficient for a finding that the Complainant has successfully proved Paragraph 4(a)(i), but the Respondent has argued that it is significant that the goods of, respectively, her business and the trademark are different and so there can be no confusion. Whilst this would certainly be very relevant if this were an action for trademark infringement, it is not relevant to the Policy, which makes only two demands, namely: that the domain name complained of be identical or confusingly similar to a trademark, and that the Complainant has rights in that trademark.
In this case, the Complainant has satisfied the Panel on both counts and so Paragraph 4(a)(i) is proved.
However it also needs saying that actual knowledge of a Complainant’s trademark by a Respondent is not an absolute requirement under the Policy or Rules. Nor is there any requirement on the part of a Complainant to provide proof of actual use of its trademark – although they often do. Also there is no need for a Complainant to be the first to register its trademark, or indeed to own it exclusively. In this case, the Respondent produced a copy of a trademark search which lists four other TWEENIES trademarks. These all appear to be in the USA, and the report clearly shows that one of them has expired, that two are only pending, and that one has been cancelled. The report is therefore of no value.
It also needs stating that how the Complainant’s trademark might or might not be used or sold by its licensees is of no relevance to this dispute.
"4(a)(ii) you have no rights or legitimate interests in respect of the domain name."
In connection with this paragraph, the Complainant has established an arguable case, so the burden of proof is therefore now shifted to the Respondent to show, by providing concrete evidence, that she has rights to or legitimate interests in respect of the disputed domain names. In the Panel’s view she has done so.
The Respondent has not explicitly denied the Complainant’s contentions that she has not been licensed to use the trademark TWEENIES, that the business of Bodyline Beauty Clinic has nothing to do with children’s entertainment or the Complainant’s TWEENIES TV program the Complainant itself or Tell Tale Productions Ltd. However she has done so implicitly. Furthermore, the Respondent has come up with a reasonably plausible explanation of how the domain name was derived and why it was registered. This is that she was looking for a name to use on her own branded range of beauty products, she could not use Bodyline (her first choice) or TEENIES (her second choice and which was derived from the name ‘beenies’, which the Panel assumes to be a misspelling of the trademark BEANIES that is applied to a popular range of soft toys), and that TWEENIES materialized as the result of a typing error. Since no comments from the Complainant were received in this connection, whatever one may think of the Respondent’s explanation, and whether or not it would withstand scrutiny in any other proceedings, for the purpose of this dispute it must be taken at face value.
The Complainant alleges that the Respondent must have seen the name TWEENIES in an article which appeared in a newspaper, the ‘Mail on Sunday’ published on November 22, 1998 – a charge that the Respondent hotly denies. She maintains that she has never subscribed to this newspaper, although it should be noted that she does not deny ever having heard of it, bought it or read it. Her contention that the Complainant’s evidence of this article is suspect because it is not on headed paper can, in the view of the Panel, be dismissed as the Complainant makes it quite clear that its evidence of the article is taken from the well-known online newspaper cutting service ‘Lexis Nexis’.
It is also worth noting that TWEENY and TWEENIES are words in the English language. In the Shorter Oxford Dictionary the word TWEENY has two different definitions: "A maid-servant who assists both the cook and the housemaid; a between-maid." and "A small cigar".
However the most telling evidence produced by the Respondent are copies of emails exchanged between ‘Chris Fell’, ‘Mart Stevens’ and Register.com relating to the registration of seven domain names. This correspondence confirms that all seven names (including the disputed domain name <tweenies.com>) were actually applied for on November 18, 1998, which is four days before the article appeared in the Mail on Sunday. The Respondent maintains that the registrant’s name for these domains is C. Fell; Organisation Bodyline Beauty Clinic; Address: 39 Banbury Road etc postcode/zipcode CV37 7RP) and that she has only ever applied for these seven .com domain names, but in fact the emails from Register.com provide no confirmation of all these details. One of the names (<bodylinebeautyproducts.com>) has been allowed to lapse as being too long, the other six domain names are <kanebocosmetics.com>, <thalgocosmetics.com>, <bodylinebeautyclinic.com>, <beautyuk.com>, and <australianbodycare.com>.
The Complainant has not produced, in these proceedings, any evidence of ‘use’ or ‘reputation’ in its TWEENIES name earlier than November 22, 1998, so in the light of this, the Panel concludes that, when the disputed domain name was registered, the Respondent did indeed have a legitimate right to it.
Having come to this conclusion, while it may not be strictly necessary to deal with the other allegations and cross-allegations relating to legitimate rights and interest, it is worth saying that in the view of the Panel, there is no evidence that the Complaint was not brought quite legitimately, or with the intention of harassing the Respondent and her business, or that it contains knowingly false information.
The Respondent also alleges reverse domain name hijacking. The onus is upon her to prove this, but she has produced no evidence, only allegations. The Panel has already found that there was no bad faith on her part, but it is equally clear that there was no bad faith on the part of the Complainant either. Given the quite legitimate assumption on the part of the Complainant that Mr. Chris Fell was the C. Fell who was the Respondent’s administrative contact, and given Mr. Fell’s various actions and activities that are dealt with below, the Panel has concluded that this is not an attempt to reverse name hijack. In any case, the Complaint fails for other reasons.
"4(a)(iii) the domain name has been registered and is being used in bad faith."
With regard to ‘bad faith’, paragraph 4(b) of the Policy sets out various circumstances which could constitute evidence of registration and use in bad faith, but it is not exhaustive.
Having come to the above conclusion that the Respondent did have legitimate rights and interests in the disputed domain name when it was registered, it follows that the Complainant’s first charge under this heading, namely that the name was acquired primarily for the purpose of selling it, must also fail.
The Complainant’s first direct approach to the Respondent was in an email dated January 16, 2001. This was replied to by the Respondent’s husband and it now becomes clear why the Respondent has been so insistent from the outset to make clear certain things, namely: that Bodyline Beauty Clinic was her business, that her husband has nothing to do with this business, that the disputed domain name belongs to Bodyline Beauty Clinic, and that it was registered solely upon her initiative. It was necessary for the Respondent to emphasize these points because, in his reply to the Complainant on January 18, 2001, Mr. Chris Fell makes no such distinction, as well as making an admission of bad faith. His letter is written in the first person throughout, always referring to ‘we;’ or ‘our’. He also says that "Now there is a television programme using the tweenies name there may be additional options available to us" and he inquires "what would be the position if we decided to use <tweenies.com> to produce a web site relating to The Tweenies childrens programme including selling Tweenies products". This is clear evidence of bad faith, even though written under the heading of "Without Prejudice".
The term "Without Prejudice" is much misused and often misunderstood by persons outside the legal profession. The most common misunderstanding is that any document so headed cannot be shown to a judge, in other words it is a ‘privileged’ document that does not have to be produced in evidence and so will not be seen by the judge (or in this case by the Panel). However in fact this only applies if the communication in question is between parties to a dispute AND it is part of a genuine attempt to settle the dispute. Since in January 2001 a dispute had not even commenced, and since there is nothing in Mr. Chris Fell’s email of January 18, 2001, that could be said to form part of a genuine attempt to settle, the Panel concludes that there is no reason why this email should not have been produced as evidence by the Complainant or that it should not be considered as a part of the dispute.
The Panel notes that even in the amended Complaint, there are still some passing references to the activities of Mr. Chris Fell. It is alleged, for example, that there is a pattern of cybersquatting on the part of him and the Respondent – he being the Respondent’s administrative contact. In the alternative it is alleged that the two of them have jointly engaged in opportunistic cybersquatting. For example, it was Mr. Chris Fell who registered the domain name <tweenies.co.uk>; it was he who signed the contract transferring this name to Netsearchers who were acting on behalf of the Complainant; and it was he who has registered the ‘typosquatting’ names <freserve.com>, <demom.com> and <opengov.co.uk>. Also, when the Complaint was notified, it was he who wrote to the Center on the headed paper of a firm called BuyDomains which, if it lives up to its title, is patently in the domain name business.
According to evidence produced by the Respondent, Mr. Chris Fell is the Company Secretary of five companies collectively referred to as ‘The Dennis Fell Companies’ and, individually named as: Dennis Fell Properties Ltd., Cressingham Properties Ltd., Heronfield Developments Ltd., Martindale Developments Ltd., and Speedwell Estates Ltd. There is no evidence that he either performs (as the Complainant alleges) or does not perform the administration of the Respondent’s business, although he probably does.
He clearly has some knowledge of domain names, but his only known connections with the Respondent – Mrs. Caroline Fell trading as Bodyline Beauty Clinic – are: that he is married to her, that he operates a business or businesses from the same address, and that the Respondent’s administrative and billing address is C. Fell at <email@example.com>. However, Mrs. Caroline Fell has explained that ‘C. Fell’ is in fact herself and that the address is a default address so that whoever a communication is addressed to it will be received by the business. Thus even this alleged involvement of Mr. Chris Fell in the Respondent’s business is discounted.
After protests from Mrs. Caroline Fell, and a request from the Center, the Complainant produced an amended Complaint in which most of the direct references to Mr. Chris Fell had been erased, therefore the Complainant cannot now rely on his activities as evidence of bad faith by the Respondent, despite the plea for the Panel to consider all the relevant circumstances in the case. So, on the evidence before it, and despite the obviously close collaboration between Mr. and Mrs. Fell, in the opinion of the Panel this is not enough, and it has no option but to ignore any evidence in which Mr. Chris Fell is implicated. This includes the email of January 18, 2001, the evidence of apparent cybersquatting activity, the allegation that he is the Respondent’s administrative contact, and the circumstances surrounding the sale of <tweenies.co.uk>.
That leaves very little else. There is however an allegation that the existence of the domain name will prevent the Complainant from "exploiting the goodwill in Tweenies through the medium of the Internet because internet users will inevitably expect tweenies.com to be associated with the Complainant". However this seems doubtful. The Complainant now possesses the domain name <tweenies.co.uk> and it is within the knowledge of the Panel, and it is confirmed in paragraph 14.1 of the Complaint that when asking listeners to communicate with it and discover information about its programs, the Complainant does not use .com domain names, but always .co.uk suffixed names. Anyone wishing to access any of the Complainant’s programs must first go to the website <bbc.co.uk> and then proceed from there through a series of slashes and programme names. Consequently the first instinct of an internet user wishing to access a TWEENIES website would probably be to go to <tweenies.co.uk> rather than to <tweenies.com>.
There is a further allegation that the disputed domain name "has been used for a number of different purposes" and in this connection the Respondent complains that the Complainant could have complained earlier. For whatever reason, the previously dormant site <tweenies.com> began at some stage to advertise the services of Style 28, something that came to the attention of the Complainant on or around November 2000, when the disputed domain name was renewed. It was probably this change that prompted the Complainant to send its January 16, 2001, email to the Respondent and it was probably that letter that prompted the second change in the website to, as it apparently now does (for the Panel was unable to access it), advertise the Respondent’s beauty salons and products. There seems to be nothing reprehensible in this, if the Respondent’s plans for the future use of the name are to be believed.
Taking all of the above points into consideration, the Panel has concluded that the disputed domain name was not registered and is not being used in bad faith.
In the result, the Panel, has found that the domain name registered by the Respondent is similar to the trademarks in which the Complainant has rights, but that the Respondent does have rights or legitimate interests in respect of the domain name, and that the domain name has not been registered and is not being used in bad faith. Consequently the Complaint fails.
David H. Tatham
Dated: June 26, 2001