Florists’ Transworld Delivery, Inc. v. Shibata Kenyu
Claim Number: FA0201000103573
Complainant is Florists' Transworld Delivery, Inc., Downers Grove, IL (“Complainant”) represented by Scott J. Major, of Millen, White, Zelano & Branigan, P.C. Respondent is Shibata Kenyu, Chiba, Inzai, JAPAN (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ftd-j.com>, registered with Go Daddy Software, Inc.
The undersigned certify that they have acted independently and impartially and, to the best of their knowledge, have no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.), David S. Safran, and Sandra Jo Franklin as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 7, 2002; the Forum received a hard copy of the Complaint on January 7, 2002.
On January 7, 2002, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <ftd-j.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 7, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 28, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On February 13, 2002, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed The Honorable Charles K. McCotter, Jr. (Ret.), David S. Safran, and Sandra Jo Franklin as Panelists.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.” Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that the <ftd-j.com> domain name is confusingly similar to Complainant’s FTD mark; that Respondent has no rights or legitimate interests in the disputed domain name; and that the domain name has been registered and is being used in bad faith.
The Respondent has failed to respond to the Complaint. When a respondent fails to submit a response, the Panel is permitted to make all inferences in favor of complainant. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).
1. Respondent registered the domain name <ftd-j.com> on October 17, 2001 with the registrar Go Daddy Software, Inc.
2. Complainant became the world's first flower-by-wire service in 1910. It currently oversees a network of approximately 14,000 retail florists in North America, and participates in an international floral delivery network of 42,000 affiliated florists in 150 countries. In addition, it operates through a subsidiary a successful website at <FTD.com> from which it markets directly to consumers.
3. Complainant operates and maintains a computerized clearinghouse that permits its florist licensees to accept floral orders from and/or deliver floral arrangements to customers in different geographical locations. Its computerized clearinghouse also processes the exchange or credit of funds between florists. In furtherance of its services, Complainant has created FTD-branded lines of unique floral arrangements for sale by its licensees. They also sell under the FTD mark items such as planters and other accessories necessary for the preparation of these arrangements. In addition, Complainant conditions and prepares advertisements to promote the purchase of floral arrangements from florists.
4. The term “FTD” has been used by Complainant as a trade name, service mark, trademark and collective membership mark (such name and mark is referred to here as the “FTD Mark”) since at least as early as 1910. Over the years, Complainant has expended considerable funds and effort in promoting and advertising its goods and services identified by the FTD Mark.
5. Complainant actively has enforced its rights in the FTD Mark.
6. Complainant owns a host of registrations in the United States and elsewhere.
7. By virtue of Complainant’s extensive marketing and promotional activities, the substantial volume of sales of services and products offered under the mark, and its strong enforcement and registration program, Complainant’s FTD Mark has developed into one of the world's most powerful commercial symbols.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
The <ftd-j.com> domain name is confusingly similar to Complainant’s FTD mark, because the domain name fully incorporates Complainant’s highly distinctive mark and merely adds a hyphen and the letter “j.” See Victoria’s Secret et al. v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding the domain names confusingly similar to Complainant’s marks because misspelling words and adding letters on to words does not create a distinct mark); see also Reuters Limited v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); Scholastic, Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001)(<escholastics.com> confusingly similar to complainant’s mark SCHOLASTIC).
Rights or Legitimate Interests
Respondent has failed to come forward with a Response and therefore it is presumed that Respondent has no rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
One way for Respondent to show a legitimate interest would be to establish that prior to receiving any notice of the dispute, it used or made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. UDRP § 4(c)(i). The only “use” of the domain name by Respondent to date is in connection with a web site marketing the products of the flower retailer known as “Hanaichi”. Complainant acknowledges that this business is a member of its floral delivery network and, as such, is authorized under license to use the FTD Mark and other of Complainant’s marks in certain limited ways. However, Respondent’s registration and use of the domain name is well outside of the scope of its membership rights. The Membership Rules of FTD Association specifically prohibit a member from either representing itself as Complainant (§ 2(f)) or from using the FTD Mark as part of a domain name (§ 2(g)(ii)). Notwithstanding that Respondent is a purveyor of legitimate FTD-branded products and services, the Panel must reject any claim that it has the right to register a domain name consisting in principal part of the FTD Mark. See, e.g., Gorstew Limited v. Caribbean Tours & Cruises, FA 94927 at p. 10 (Nat. Arb. Forum July 28, 2000) (use of trademark in domain name is “classic trademark infringement,” even where such use results in revenue flowing to the mark owner).
Respondent has not made a bona fide offering of goods in connection with the domain name under Policy ¶ 4(c)(i) or a noncommercial or fair use under Policy ¶ 4(c)(iii), because Respondent offers similar services as Complainant and operates under a name confusingly similar to Complainant’s mark. See America Online, Inc. v. Xianfeng, D2000-1374 (WIPO Dec. 11, 2000) (“It would be unconscionable to find a bona fide offering of services in a respondent’s operation of [a] web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business”); see also General Media Communications, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding no rights or legitimate interests were acquired by Respondent where Respondent registered and used a domain name that was a misspelling of Complainant’s PENTHOUSE mark and connected the domain name to a website offering similar goods and services as Complainant).
Respondent is not commonly known by “FTD” or “FTD-J” under Policy ¶ 4(c)(ii). Instead, Respondent operates a website under the name of “Hanaichi.” See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark). Because Complainant’s mark is so well known, Respondent could not possibly be commonly known by a domain name that incorporates the entire mark. See Victoria’s Secret et al v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well established use of the mark).
In summary, Respondent has no right or legitimate interest in the Domain Name.
Registration and Use in Bad Faith
Respondent has attempted to “attract, for commercial gain, Internet users to [the] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or a product or service of [the] website or location.” Policy ¶ 4(b)(iv). See Volkswagen of Am., Inc. v. Site Design Online, FA 95753 (Nat. Arb. Forum Nov. 6, 2000) (transferring BAYAREAVW.COM from Respondent automobile dealership specializing in Volkswagens to Complainant); see also Toyota Jidosha Kabushiki Kaisha v. S&S Enter. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (“Registration of a domain name [by Respondent that incorporates another’s trademark] goes further than merely correctly using in an advertisement the trade mark of another in connection with that other’s goods or services: it prevents the trade mark owner from reflecting that mark in a corresponding domain name”).
There is no plausible explanation for the registration of a domain name other than to trade on the goodwill of Complainant. See Yahoo! Inc. and GeoCities v. Cupcakes, Cupcake City, Cupcake Confidential, Cupcake-Party, Cupcake Parade, and John Zuccarini, D2000-0777 (WIPO Oct. 2, 2000). In the case at bar, Complainant’s FTD Mark is arbitrary, fanciful and unique. It also is famous and has been so for decades. Moreover, it is the subject of numerous registrations in the United States and around the world for floral products and services. Respondent's incorporation of the mark in the second-level domain appears to be for the purpose of creating a confusingly similar domain name. See Nintendo of America Inc v. Pokemon, D2000-1230 at pp. 5-6 (WIPO Nov. 23, 2000) (bad faith found readily where the complainant’s trademarks were unique, the possibility that respondent devised the domain names independently was remote, and the domain names incorporated complainant’s entire marks).
Based upon the above findings and conclusions, we find in favor of the Complainant. Therefore, the relief requested by the Complainant pursuant to Paragraph 4.i of the Policy is Granted. The Respondent shall be required to transfer to the Complainant the domain name <ftd-j.com>.
The Honorable Charles K. McCotter, Jr. (Ret.), Panel Chair, David S. Safran & Sandra J. Franklin, Panelists
Dated: February 24, 2002
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