Florists' Transworld Delivery, Inc. v.
BBIKOREA
Claim Number: FA0204000109572
PARTIES
Complainant
is Florists' Transworld Delivery, Inc.,
Downers Grove, IL (“Complainant”) represented by Scott J. Major, of Millen,
White, Zelano & Branigan, P.C.
Respondent is BBIKOREA,
Nam-gu, Pohang, Gyungbuk, KOREA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <phftd.com>,
registered with Tucows, Inc.
PANEL
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.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on April 12, 2002; the Forum received a hard copy of the
Complaint on April 12, 2002.
On
April 12, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain
name <phftd.com> is registered
with Tucows, Inc. and that Respondent is the current registrant of the
name. Tucows, Inc. has verified that
Respondent is bound by the Tucows, 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
April 15, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 6, 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 postmaster@phftd.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
May 16, 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
disputed domain name <phftd.com> is confusingly similar to FTD, a
registered mark in which Complainant holds rights.
Respondent has no rights or legitimate interests in the
disputed domain name.
Respondent
registered and used the domain name in bad faith.
B.
Respondent
Respondent
did not submit a Response in this proceeding.
FINDINGS
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 in typed form for a wide range of products and services,
registered on the Principal Register of the United States Patent and Trademark
Office as Reg. No. 1,576,429, on January 9, 1990. Also, Complainant has registered the FTD mark and “Mercury Man”
emblem in conjunction with the United States Patent and Trademark Office as
Reg. No. 821,318, on December 26, 1966.
Furthermore, Complainant asserts that the FTD mark has developed into
one of the world’s most powerful commercial symbols.
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 florist 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 November 6, 2001, and uses the website to sell flowers in competition
with Complainant and as a means to link to other florist sites.
DISCUSSION
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 suffix “.com” and letters “ph.” The use of “.com” as a generic top-level domain (“gTLD”) does not
alter the impression of the mark so as to defeat a claim of confusing
similarity. See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO
Apr. 22, 2000) (finding that "the addition of the generic top-level domain
(gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is
required of domain name registrants").
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Respondent’s
use of the disputed domain name is an attempt to trade on Complainant’s
reputation and fame. This is due to the
fact that Respondent uses the disputed domain name to sell flowers in
competition with Complainant, which is not a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i).
Respondent does not have legitimate interests in the disputed domain
name, which incorporates Complainants trademark, when using it to compete with
Complainant. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona fide
offering of services in a respondent’s operation of web-site using a domain
name which is confusingly similar to the complainant’s mark and for the same
business”); see also Chip
Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding
that the disputed domain names were confusingly similar to Complainant’s mark
and that Respondent’s use of the domain names to sell competing goods was illegitimate
and not a bona fide offering of goods).
There
is 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 BBIKOREA and/or
“Flower7942.com.” Respondent,
therefore, has no rights to the disputed domain name. 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).
The
Panel finds that Respondent has no rights or legitimate interests in respect of
the disputed domain name; 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.
Since the disputed domain name is substantially similar to Complainant’s
FTD mark, Respondent’s registration and use of the disputed domain demonstrate
bad faith because the domain name will confuse consumers for commercial
gain. Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29,
2000) (finding bad faith where the domain name in question is obviously
connected with the Complainant’s well-known marks, thus creating a likelihood
of confusion strictly for commercial gain).
Respondent uses the <phftd.com>
website to confuse consumers and ultimately divert users to a site promoting
Respondent’s flower business. Such use
of the disputed domain name is evidence of bad faith according to Policy ¶
4(b)(iv). See Am. Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent
registered and used an infringing domain name to attract users to a website
sponsored by Respondent); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding
that Respondent intentionally attempted to attract Internet users to his
website for commercial gain by creating a likelihood of confusion with the
Complainant’s mark and offering the same chat services via his website as the
Complainant).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
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 <phftd.com>
domain name be transferred from Respondent to Complainant.
James Alan Crary, Panelist
Dated: May 22, 2002
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