Florists' Transworld Delivery, Inc. v. DomainSource.com a/k/a Domain Source, Inc.
Claim Number: FA0203000105882
Complainant is Florists' Transworld Delivery, Inc., Downers Grove, IL (“Complainant”) represented by Scott J. Major, of Millen, White, Zelano & Branigan, P.C. Respondent is DomainSource.com a/k/a Domain Source, Inc., Aptos, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ftdflorist.com> and <flowersftd.com>, registered with eNom, Inc.
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 Alan Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 13, 2002; the Forum received a hard copy of the Complaint on March 14, 2002.
On March 21, 2002, eNom, Inc. confirmed by e-mail to the Forum that the domain names <ftdflorist.com> and <flowersftd.com> are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, 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 March 25, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 15, 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 firstname.lastname@example.org and 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 April 22, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James Alan Crary 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 names be transferred from Respondent to Complainant.
The disputed domain names <ftdflorist.com> and <flowersftd.com> are confusingly similar to FTD, a registered mark in which Complainant holds rights.
Respondent has no rights or legitimate interests in respect of the disputed domain names.
Respondent registered and used the disputed domain names 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 FTD.com, Complainant has expended over $100 million in marketing and promoting the FTD mark during its last three fiscal years.
Complainant has registered several marks incorporating FTD, including the FTD mark and “mercury man” emblem, registered on the Principal Register of the United States Patent and Trademark Office as Reg. No. 821,318, on December 26, 1966. According to Complainant’s research, no other party owns a federal registration in the United States for a mark incorporating, in whole or in part, the term FTD.
Respondent registered the <ftdflorist.com> domain name on December 10, 2000 and the <flowersftd.com> domain name on April 16, 2001, and has made no apparent use of either name.
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 U.S. Patent and Trademark Office and continuous subsequent use.
The disputed domain names are confusingly similar to Complainant’s mark as they merely add the generic terms “florist” or “flowers” to the mark along with the generic top level domain (“gTLD”) “.com.”
The addition of a generic word to the distinct FTD mark does not distinguish the domain names from the mark. Instead, because the terms are directly related to Complainant’s business, the modification increases the likelihood of confusion. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark).
Additionally, the use of the gTLD “.com” does not significantly alter the impression of the mark so as to defeat a claim of confusing similarity. 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 Visit Am., Inc. v. Visit Am., FA 95093 (Nat. Arb. Forum Aug. 14, 2000) (finding that the “.com” is part of the Internet address and does not add source identity significance).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant has demonstrated its rights to and interests in the FTD mark. Because Respondent has not filed a Response in this matter, the Panel may presume it holds no such rights or interests in the disputed domain names. 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 not made any use of the disputed domain names, except to passively hold them. In the absence of a contrary claim, the Panel will accept Complainant’s 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”).
Because Respondent has made no use of the disputed domain names, both of which were registered over a year ago, it is not making a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use 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 can be found when Respondent fails to use disputed domain names in any way); see also Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where Respondent made no use of the infringing domain names).
There is also no evidence that Respondent is commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). Respondent is only known to this Panel as DomainSource.com a/k/a Domain Source, Inc. 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 Policy ¶ 4(a)(ii) has been satisfied, and that Respondent has no rights or legitimate interests in respect of the disputed domain names.
Registration and Use in Bad Faith
Respondent has registered at least two domain names that incorporate Complainant’s FTD mark in its entirety. Such behavior demonstrates a bad faith attempt to prevent Complainant from registering domain names that reflect its FTD mark. See YAHOO! Inc. v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two domain names incorporating Complainant's YAHOO! mark).
Further, Respondent’s passive holding of the domain names suggests that it registered the domain names for the purpose of selling them to Complainant for profit or to Complainant’s competitor to disrupt Complainant’s business. Such passive holding thus permits a finding of bad faith under the Policy. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); 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 satisfies the requirement of ¶ 4(a)(iii) of the Policy).
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 <ftdflorist.com> and <flowersftd.com> domain names be transferred from Respondent to Complainant.
James Alan Crary, Panelist
Dated: May 1, 2002
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