Florists' Transworld Delivery, Inc. v. Jesus Lizarazo
Claim Number: FA0203000105883
Complainant is Florists' Transworld Delivery, Downers Grove, IL (“Complainant”) represented by Scott J. Major, of Millen, White, Zelano & Branigan, P.C. Respondent is Jesus Lizarazo, Potomac, MD (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ftd-flores.com>, registered with eNom, Inc.
The undersigned certifies that he as acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
Judge Ralph Yachnin 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 18, 2002, eNom, Inc. confirmed by e-mail to the Forum that the domain name <ftd-flores.com> is registered with eNom, Inc. and that Respondent is the current registrant of the name. 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 19, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 8, 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 April 15,2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin 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-flores.com> is 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 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 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.
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 May 3, 2000, and has made no apparent use of it.
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 name is confusingly similar to Complainant’s FTD mark, as it incorporates the mark in its entirety and merely adds the word “flores” (Spanish for “flowers”), and “.com.” The addition of generic words and terms does not defeat a claim of confusing similarity when a domain name incorporates a distinct and unique trademark of another party. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term). Further, Respondent’s use of the word “flores,” which directly relates to Complainant’s international business operations, enhances the possibility 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).
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 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). Further, without the benefit of a Response, the Panel may accept all of Complainant’s assertions as true, unless clearly contradicted by the evidence in the record. 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”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant contends that, since registration, Respondent has made no use of the disputed domain name whatsoever. By passively holding the domain name, Respondent has demonstrated that it has no rights or interests in respect of the name and that it will not use the domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See 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); 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”).
There is no evidence, pursuant to Policy ¶ 4(c)(ii), that Respondent is commonly known by FTD, FTD-FLORES, or <ftd-flores.com>; Respondent is only known to this Panel as Jesus Lizarazo. Thus, Respondent has no rights or interests pursuant to Policy ¶ 4(c)(ii). See 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); see also CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).
The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name and, thus, Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Complainant’s FTD mark is famous in the United States and well known worldwide. Given the prominence of the mark, Respondent is considered to have been aware of the mark at the time it registered the confusingly similar domain name. See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual or constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark); see also Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that Respondent, at the time of registration, had notice of Complainant’s famous POKÉMON and PIKACHU trademarks given their extreme popularity).
By registering a domain name that infringes upon Complainant’s rights, Respondent has demonstrated bad faith within the meaning of the Policy. See Exxon Mobil Corp. v. Fisher, supra; see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted bad faith).
Further, Respondent’s passive holding of the disputed domain name for almost two years demonstrates a likely intent to sell the domain name to Complainant or to prevent Complainant from registering a domain name reflecting its mark. Such behavior further evidences bad faith registration and use 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 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 are no other indications that the Respondent could have registered and used the domain name in question for any non-infringing purpose).
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-flores.com> domain name be transferred from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: April 24, 2002
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