WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Two Chicks and Co. LLC (“Two Chicks”) v. Two Southern Chicks / Kinsey Bates

Case No. D2013-0171

1. The Parties

Complainant is Two Chicks and Co. LLC (“Two Chicks”) of Lexington, Kentucky, United States of America, represented by Middleton Reutlinger, United States of America.

Respondent is Two Southern Chicks / Kinsey Bates of Louisville, Kentucky, United States of America.

2. The Domain Name and Registrar

The disputed domain name <twosouthernchicks.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2013. On January 25, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 25, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 31, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 21, 2013.

The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on March 7, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant is the owner of the US Trademark Registration 3,536,503, registered on November 25, 2008, for its logo and the phrase TWO CHICKS AND CO. JEWELRY & GIFTS for use in connection with “retail store services featuring jewelry and gift items.”

Complainant also owns the domain <twochicksandcompany.com>, which it registered on October 15, 2004.

In addition to its website, Complainant operates two retail stores in Kentucky, United States.

Complainant submitted evidence with the Complaint of screen shots showing use of its mark on its website since 2001. Complainant also submitted screen shots of its current website showing use of its mark to illustrate its continued use of the mark.

Respondent registered the Domain Name in 2011 and began the sale and marketing of gift items and online retail store services under the name Two Southern Chicks at the Domain Name. Respondent’s logo illustrated on Respondent’s website is strikingly similar to Complainant’s logo. Respondent has also advertised on Facebook that it intends to open a retail store under the Two Southern Chicks name in Kentucky, less than one mile from Complainant’s store location.

Complainant contacted Respondent by letters dated September 27, October 3 and October 5, 2012, demanding that Respondent cease use of its offending mark and Domain Name.

By correspondence dated October 8, 2012, Respondent agreed to discontinue use of the name Two Southern Chicks and shut down its website. In subsequent correspondence from Respondent’s counsel, Respondent advised that it would maintain the Domain Name as a holding page for 60 days, following which it would become dormant. Respondent, however, failed to disable the Domain Name. Since that time, Complainant has repeatedly requested that Respondent disable the Domain Name. However, the Domain Name is still being used to redirect consumers to Respondent’s new website, located at, “www.initialmepink.com”.

Complainant requests that the Domain Name be transferred to Complainant so that it can terminate Respondent’s continued use and redirection to Respondent’s new website.

5. Parties’ Contentions

A. Complainant

Complainant contends that the Domain Name is confusingly similar to Complainant’s trademark, that Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant owns a US Trademark Registration for the mark TWO CHICKS AND CO. JEWELRY & GIFTS, in a logo form consisting of the words “Two Chicks and Co.” in stylized form with a drawing of two children above and the words “jewelry & gifts” below. Complainant prominently utilizes the phrase and mark TWO CHICKS AND CO. JEWELRY & GIFTS in its domain name and as a header on its website. Complainant claims use of the mark since 2001, and Complainant’s evidence is not rebutted.

The Domain Name incorporates the dominant portion of the mark “two chicks” in its entirety, with the insertion of the word “southern” in between the two words. Such geographic references do not add sufficient distinctiveness to avoid a finding of confusing similarity in the opinion of the Panel. Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s mark.

B. Rights or Legitimate Interests

In correspondence prior to the filing of the Complaint, Respondent agreed to “discontinue the use of both ‘Two’ and ‘Chicks’ in combination with one another.” In further correspondence from Respondent’s counsel, Respondent agreed to disable the Domain Name after 60 days from October 9, 2012. As of the filing of the Complaint, however, the Domain Name was still active and redirecting Internet users to Respondent’s new website.

In view of Respondent’s agreement to cease all use of the terms “Two” and “Chicks” and to disable the website at the Domain Name, the record indicates that Respondent does not have any rights or legitimate interests in the Domain Name. Complainant has thus made its prima facie case. Respondent did not submit any evidence to the contrary. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Initially, it is important to note, that Respondent did not respond to the Complaint filed by Complainant, and therefore, this Panel must take the facts as provided by Complainant as being a true and accurate account of the facts and circumstances underlying this dispute. The Panel also notes again that Respondent has already agreed to cease using the Domain Name.

Bad faith may be found when Respondent knew or should have known of the mark prior to registration of the Domain Name. See Caesars World, Inc. v. Forum LLC., WIPO Case No. D2001-1365; Maori Television Service v. Damien Sampat, WIPO Case No. D2005-0524. In this case, Complainant and Respondent are located in the same state, Kentucky. In fact, Complainant and Respondent are located within one mile of each other. Complainant began using its mark and its domain name in 2001 and obtained a United States federal trademark registration for its mark in 2008 (which is now inconstestable). Additionally, after receiving several cease and desist communications from Complainant, Respondent agreed to stop using the Domain Name, but continued use thereafter the Domain Name to direct traffic to its new website. The continued use of the Domain Name after agreeing to take it down, while certainly not being dispositive, is evidence this Panel may consider as weighing towards a determination of bad faith given the very specific facts of this case.

The unique combination of facts in this case -- including the close physical proximity of Complainant and Respondent, the high degree of similarity between the goods being sold by Complainant and Respondent, the similarity of the marks, and Complainant’s significant duration of use, and Respondent’s continued use of the Domain Name -- persuades the Panel that the Respondent either knew, or should have known of Complainant’s mark prior to registration of the Domain Name and Respondent’s continual use of a confusingly similar domain name to redirect to its own website, in competition with Complainant, evidences use in bad faith. Therefore, the Panel finds that the Domain Name was registered and used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <twosouthernchicks.com> be transferred to Complainant.

Lynda J. Zadra-Symes
Sole Panelist
Date: March 29, 2013