British Broadcasting Corporation v. Bodyline Beauty Clinic

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 £40

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 £2.3 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

A. Complainant

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 <chris@bodyline.demon.co.uk>).

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 postmaster@domain.xxx"

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.

B. Respondent

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 chris@bodyline.demon.co.uk.

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 <chris@bodyline.demon.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.

7. Decision

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

Sole Panelist

Dated: June

26, 2001

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