Florists’ Transworld Delivery, Inc. v. Cubatech
Claim Number: FA0201000103983
Complainant is Florists’ Transworld Delivery, Inc., Downers Grove, IL (“Complainant”) represented by Scott J. Major, of Millen, White, Zelano & Branigan PC. Respondent is Cubatech, West New York, NJ (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ftd.net>, registered with Dotster.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 22, 2002; the Forum received a hard copy of the Complaint on January 23, 2002.
On January 29, 2002, Dotster confirmed by e-mail to the Forum that the domain name <ftd.net> is registered with Dotster and that Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster 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 30, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 19, 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 22, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., as Panelist.
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.
The disputed domain name <ftd.net> is identical to Complainant’s FTD mark.
Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Respondent did not submit a Response in this proceeding.
Complainant operates the world’s oldest flower-by-wire service, which was established in 1910. Since that time, it has used the acronym FTD as a trade name, service mark, trademark, and collective membership mark in association with its tele-floral business and Internet website hosted at <ftd.com>.
Complainant 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. Together with its subsidiary, Complainant has expended over $100 million in marketing and promoting the FTD mark during its last three fiscal years.
Respondent registered the disputed domain name on April 19, 1997, and has not used the domain name in any way. Complainant asserts that Respondent is involved in the creation of websites that directly compete with Complainant’s business.
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
Complainant has established its rights in the FTD mark through registration with the United States Patent and Trademark Office and continuous subsequent use. The disputed domain name <ftd.net> is identical to Complainant’s mark as it merely adds “.net” to the mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is identical to Complainant’s MYSTIC LAKE trademark and service mark).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant has demonstrated its rights to and interests in its FTD mark. Because the Respondent has not submitted a Response in this matter, the Panel may presume it has no such rights or 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).
Complainant asserts that Respondent has made no use of the disputed domain name and has only passively held it since registration almost five years ago. In the absence of a contrary claim by Respondent, the Panel may accept the assertion as true. 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”).
By passively holding the disputed domain name, Respondent has demonstrated that it has no rights or interests in respect of the name. It has not used the domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor has it made a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest could be found when Respondent failed to use disputed domain names in any way); see also Chanel, Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001) (finding no rights or legitimate interests where “Respondent registered the domain name and did nothing with it”).
Additionally, there is no evidence to suggest Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). Respondent is only known by this Panel as Cubatech. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).
The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name and that Policy ¶ 4(a)(ii) has thus been satisfied.
Registration and Use in Bad Faith
Respondent has made no use of the disputed domain name but to passively hold it. Such passive holding demonstrates bad faith within the meaning of Policy ¶ 4(a)(iii). See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the Respondent made no use of the domain name in question and there were no other indications that the Respondent could have registered and used the domain name in question for any non-infringing purpose); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfied the requirement of ¶ 4(a)(iii) of the Policy).
Further, given the competitive relationship between Respondent and Complainant, it is reasonable to infer that Respondent registered the disputed domain name in order to disrupt Complainant’s business. This demonstrates bad faith under Policy ¶ 4(b)(iii). See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also Southern Exposure v. Southern Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that Respondent registered the domain name in question to disrupt the business of the Complainant, a competitor of the Respondent).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.
Accordingly, it is Ordered that the <ftd.net> domain name be transferred from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: February 25, 2002
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