twiflex.com

WIPO Arbitration and Mediation Center

The Complainant is Twiflex Limited of the Green, Twickenham, Middlesex TW2 5AQ. United Kingdom. The Complainant’s authorised representative is Mr David J Lucking of Forrester Ketley & Co, Chamberlain House, Paradise Place, Birmingham, B3 3HP, United Kingdom. The Respondent is Industrial Clutch Parts Limited of Unit 11 Bingswood Industrial Estate, Whaley Bridge, High Peak, Cheshire SK23 7LY, United Kingdom. The Respondent is not represented and has not filed a Response.

The domain name in dispute is "twiflex.com". The Registrar of the domain name is CORE Internet Council of Registrars, World Trade Center II, 19 Route de Pre-Bois, CH-1215 Geneva, Switzerland.

3.Procedural History

The Complaint was received by the WIPO Arbitration and Mediation Center on August 10, 2000 by email and subsequently by hard copy on August 14, 2000. An acknowledgement of receipt of the Complaint was sent to the Complainant on August 18, 2000. A Complaint deficiency notification was given by the Center on August 21, 2000 and a consequent amendment to the Complaint was notified by the Complainant by email on August 22, 2000.

The Respondent failed to file a response following notification of the Complaint and commencement of the administrative proceeding and notice of Respondent’s default was given on September 19, 2000.

On October 5, 2000 an administrative panel was appointed consisting of a sole panelist Mr Clive Duncan Thorne.

Having reviewed the documents the Panel is satisfied that the Respondent was given notice of the complaint. The Registrar has confirmed that the domain name "twiflex.com" is registered in the name of the Respondent.

4. Factual Background

The Complainant has adduced evidence that it was originally incorporated as Twiflex Couplings Limited in 1946. In 1947 the Complainant filed a trade mark application in the United Kingdom to register the mark "Twiflex" in class 7. A company profile of the Complainant which is now called Twiflex Limited has been exhibited by the Complainant at Annex 6 to the Complaint. The name "Twiflex" has been used by the Complainant since its founding. During the 56 years of use the Complainant has built up a substantial reputation for its range of power transmission equipment manufactured and sold under the mark "Twiflex".

The Complainant has set out in the Complaint and exhibited at Annex 4 to the Complaint details of its trade mark registrations for the word "Twiflex". The Complainant has registrations in the United Kingdom, the European Community Trade Mark office and in many other jurisdictions.

The specification of goods covered by the mark include couplings, brakes, clutches and transmission gears for machinery and land vehicle propulsion systems and parts.

The Complainant asserts that the Respondent, Industrial Clutch Parts Limited are "manufacturers, distributors and suppliers of breaks and clutches to the paper, packaging steel, petrochemical food processing, engineering, marine and manufacturing industries. Evidence of this is exhibited at Annex 7 to the Complaint consisting of a print out of the Respondent’s web site at http:/www.twiflex.com. The web site also shows examples of the Respondent’s products which include friction products such as brake discs or brake box, shaft couplings, calliper breaks and torque limiters. The Complainant asserts that these products are identical to the goods covered by the marks. The Panel is prepared to accept that there are close similarities between the products dealt with by both parties.

5. Parties Contentions and Discussion

In order to succeed in its request for an order to transfer an domain name the Complainant has to prove that each of the three elements set out in paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy are present. These are as follows:-

(i) The Respondent’s domain name is identical or confusingly similar to a trade mark of service mark in which the Complainant has rights;

(ii) That the Respondent has no rights or legitimate interest in respect of the domain name;

(iii) The Respondent’s domain name has been registered and is being used in bad faith.

The Panel proceeds to deal with each of these in turn:-

(i) The Respondent’s domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.

The Panel accepts on the basis of the evidence of its use of the mark Twiflex and the registrations maintained by the Complainant of Twiflex that the Complainant has registered trade mark rights and common law rights in the mark "Twiflex".

The domain name in dispute is "twiflex.com". The Panel accepts that the domain name is confusingly similar to the registered trade mark "Twiflex" and identical to the trading name of the Complainant "Twiflex". The Complainant has underlying trading good will arising as a result of long use of the name Twiflex for its products.

(ii) The Respondent has no rights or legitimate interest in respect of the domain name.

The Complainant submits:-

(a) The Respondent has not been commonly known by the domain name in dispute and has acquired no trade mark or common law rights in the name Twiflex; and

(b) That the domain name in dispute was registered primarily for the purpose of selling the domain name registration to the Complainant as the proprietor of the Marks for valuable consideration in excess of the Respondent’s out of pocket costs directly related to the domain name in dispute.

The burden of proof in showing that the Respondent has no rights or legitimate interest in respect of the domain name is upon the Complainant. The Complainant in the Panel’s view rightly points out there is no evidence that the Respondent is commonly known by the domain name Twiflex. The trading name of the Respondent is Industrial Clutch Parts Limited and there is no evidence that it uses the name Twiflex in respect of its products. In these circumstances and bearing in mind that no response has been filed by the Respondent the Panel is prepared to accept the Complainants submission that the Respondent has acquired no trade mark or common law rights in the name Twiflex and that accordingly it has no rights or legitimate interest in respect of the domain name.

For this purpose it is not necessary for the Panel to consider the second limb of the Complainant’s submission.

The Complainant also submits in the alternative that the domain name was registered primarily for the purpose of disrupting the business of the Complainant. The Panel does not feel it necessary to consider this submission in a consideration of paragraph 4(a)(ii) of the Policy. However this is a relevant submission in relation to paragraph 4(a)(iii) of the Policy.

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

Paragraph 4(b) of the Policy sets out circumstances which "in particular but without limitation" and which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.

In its submission the Complainant’s representatives do not specifically refer to the issue of bad faith even though the burden of proof in showing bad faith is upon the Complainant.

However the Complainant makes submissions which the Panel is prepared to accept that if proven may constitute evidence of bad faith. These are as follows:-

(a) The domain name was registered primarily for the purpose of selling the domain name registration to the Complainant as proprietor of the Marks for valuable considering in excess of the Respondent’s out of pocket costs directly related to the domain name in dispute

In support of this submission the Complainant relies upon a without prejudice letter of 2 June 2000 exhibited at Annex 8 to the Complaint in which the Respondent indicated that should the Complainant wish to purchase the domain name the Respondent should be "fully compensated not only for the costs of setting up our web site but for the loss of any future business". The Respondent has apparently declined to provide an indication as to how much this would be. The Panel notes that the letter was written following a meeting between representatives of the parties. The letter is not confrontational in tone. The Panel does not accept that this is by itself evidence of bad faith. On the face of it a party is entitled to be compensated for the loss of future business. Such a request is in the Panel’s view removed from the concept of an unjustified or unwarranted demand for payment which in its view is the basis of paragraph 4(b)(i) of the policy.

(b) The Complainant also submits that the domain name was registered primarily for the purpose of disrupting the business of the Complainant.

In support of this contention the Complainant submits that the domain name was registered primarily for the purpose of diverting potential customers of the Complainant to the Respondent’s web site and hence disrupt the business of the Complainant. The Complainant refers to the print out of the web page reached by selecting the "Manufacturers" link on the "twiflex.com" web page set out at annex 9 to the complaint. The link connects the user to the Respondent’s web site and a list of manufacturing companies, trade names and or trade marks are displayed. These appear to be a list of manufacturers whose products may be purchased through the Respondent. The name Twiflex does not appear on the list. Thus it would appear that the Respondent does not promote the products of the Complainant direct. However the manufacturers listed are all direct competitors of the Complainant.

When a search of the ICP web site was carried out for the word Twiflex the search revealed only one hit which is a page headed "Coremo". A print out of the search results page obtained by selecting Coremo is annexed at Annex 10 to the Complaint. Coremo is a direct competitor of the Complainant and the page shows the technical specification of a number of Coremo brakes. It follows that a would be customer searching for information about the Complainant or the Complainants products could be lead via the "twiflex.com" web site to a web site selling exclusively the products of one of the Complainant’s competitors. The Complainant maintains that this constitutes diversion of the Complainant’s potential customers to competitors.

The Panel is prepared to accept the submission that this constitutes prima facie evidence of bad faith in that the domain name is being used for the purpose of diverting the Complainant’s customers to competitors. There is of course no Response from the Respondent rebutting this contention.

In conclusion it follows that the Complainant has proved the three elements within paragraph 4(a) of the policy and succeeds in is complaint.

The Complainant requests that the Panel order that the domain name "twiflex.com" be transferred to the Complainant. The Panel finds for the Complainant and orders that the domain name "twiflex.com" be transferred from the Respondent to the Complainant.

Sole Panelist

Dated: October 18, 2000