Interflora, Inc. v. Main
Claim Number: FA0205000114299
PARTIES
Complainant
is Interflora, Inc., Downers Grove,
IL, USA (“Complainant”) represented by Scott
J. Major, of Miller, White, Zelano
& Branigan, P.C. Respondent is Main, Hamont, EUROPE (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain names at issue are <inteflora.org>
and <inteflora.net>, registered with Bulkregister.com.
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.
Tyrus
R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on May 16, 2002; the Forum received a hard copy of the Complaint
on May 17, 2002.
On
May 17, 2002, Bulkregister.com confirmed by e-mail to the Forum that the domain
names <inteflora.org> and <inteflora.net> are registered with Bulkregister.com and that
Respondent is the current registrant of the names. Bulkregister.com has verified that Respondent is bound by the Bulkregister.com
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
May 20, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 10,
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@inteflora.org and postmaster@inteflora.net 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
June 20, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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 names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <inteflora.org> and <inteflora.net> domain names are
confusingly similar to Complainant’s INTERFLORA mark.
2. Respondent as no rights or legitimate
interests in the <inteflora.org> and <inteflora.net>
domain names.
3. Respondent registered and used the
disputed domain names in bad faith.
B. Respondent did not submit a Response.
FINDINGS
Complainant owns numerous trademark
registrations for its INTERFLORA mark, and has obtained registration in more
than 100 countries. More specifically, its registration holdings include: U.S.
Reg. No. 1,519,789 registered January 10, 1989; South Korea Reg. No. 19,071
registered February 5, 1993; and, United Kingdom Reg. No. 1,329,834 Reg. No.
registered December 16, 1987, among others.
Additionally, Complainant has spent
millions to market and promote its INTERFLORA mark and the goods and services
offered thereunder. Since 1946, Complainant has provided international florist
association services to each of its constituent owners, their national florist
association members, and their individual member retail florists. As part of
its international association services, Complainant operates and maintains a
computerized clearinghouse that permits its members to send, accept and/or
deliver flowers, floral arrangements and gifts from customers in distant
geographic locations.
By virtue of Complainant’s extensive
marketing and promotional activities, the substantial volume of sales of goods
and services offered under the mark, and its strong enforcement and
registration program, Complainant’s INTERFLORA mark represents a famous,
distinct and internationally recognized mark.
Respondent registered the disputed domain
name on March 19, 2002. Respondent has subsequently used the contested domain
name in conjunction with a website that markets products of the “Flowering
World” retail floral business. Respondent is not authorized or licensed to use
Complainant’s INTERFLORA mark.
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.
Complainant has established that it has
rights in the INTERFLORA mark through completing numerous international
registrations and subsequent continuous use of the mark.
Respondent’s <inteflora.org>
and <inteflora.net> domain names are confusingly similar to Complainant’s
INTERFLORA mark. Respondent’s domain names deviate slightly, namely, the
subtraction of the letter “r” in the secondary domain name and the addition of
generic top-level domain names. Neither alterations change the overall
impression that Respondent’s domain names reflect Complainant’s INTERFLORA
mark. See Pomellato S.P.A v.
Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com>
identical to Complainant’s mark because the generic top-level domain (“gTLD”)
“.com” after the name POMELLATO is not relevant); see also Dow Jones & Co., Inc. v. Powerclick,
Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate
introduction of errors or changes, such as the addition of a fourth “w” or the
omission of periods or other such generic typos do not change the Respondent’s
infringement on a core trademark held by Complainant).
Furthermore, the fact that Respondent is
marketing similar goods as Complainant elevates the possibility of confusion
among Internet users. See Slep-Tone
Entm't Corp. v. Sounds Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum
Mar. 13, 2000) (stating that “likelihood of confusion is further increased by
the fact that the Respondent and [Complainant] operate within the same
industry”).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Respondent has failed to come forward
with a Response. Therefore, it is presumed that Respondent has no rights or
legitimate 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). Furthermore, when Respondent fails to submit a Response
the Panel is permitted to make all inferences in favor of Complainant. See Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw
adverse inferences from Respondent’s failure to reply to the Complaint).
Respondent registered the confusingly
similar domain names in an attempt to opportunistically trade on the goodwill
associated with Complainant’s INTERFLORA mark. Respondent’s motivations are to
divert Complainant’s customers. Thus, Respondent fails in establishing a bona
fide offering of goods or services in connection with the disputed domain name
under Policy ¶ 4(c)(i). See Vapor
Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27,
2001) (finding that Respondent’s commercial use of the domain name to confuse
and divert Internet traffic is not a legitimate use of the domain name); see
also Big Dog Holdings, Inc. v. Day,
FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when
Respondent was diverting consumers to its own website by using Complainant’s
trademarks).
Furthermore, Complainant and Respondent
operate in the same industry. Respondent’s registration of a domain name confusingly
similar to Complainant’s mark implies that Respondent was attempting to
commercially benefit from Complainant’s fame. Respondent’s actions do not
represent a legitimate noncommercial or fair use of the contested domain name
pursuant to Policy ¶ 4(c)(iii). See Chip
Merch., 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); see also AltaVista v. Krotov, D2000-1091 (WIPO
Oct. 25, 2000) (finding that use of the domain name to direct users to other,
unconnected websites does not constitute a legitimate interest in the domain
name).
Respondent is not commonly known as
“inteflora,” <inteflora.org>, or <inteflora.net>
pursuant to Policy ¶ 4(c)(ii). Due to Complainant’s international
registrations, the fame associated with its INTERFLORA mark and subsequent
continuous use of the mark since 1946, it is unlikely that Respondent could
establish that it is commonly known by a name confusingly similar to
Complainant’s mark. See CBS Broad., 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); see also Nike, Inc. v. B. B. de Boer, D2000-1397
(WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one
“would be hard pressed to find a person who may show a right or legitimate
interest” in a domain name containing Complainant's distinct and famous NIKE
trademark).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Because of Complainant’s numerous international
registrations and the fame associated with its INTERFLORA mark, Respondent is
thought to have been on notice of Complainant’s preexisting rights in the
INTERFLORA mark. Respondent’s registration and use of confusingly similar
domain names represent a deliberate bad faith attempt to opportunistically
trade on the fame of Complainant’s established mark. See
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb.
11, 2002) (finding that "[w]here an alleged infringer chooses a mark he
knows to be similar to another, one can infer an intent to confuse"); see
also Exxon Mobil Corp. v. Fisher,
D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and
constructive knowledge of Complainant’s EXXON mark given the world-wide
prominence of the mark and thus Respondent registered the domain name in bad
faith).
Respondent
and Complainant operate in the same floral industry, offering similar goods.
Respondent’s registration of a domain name confusingly similar to Complainant’s
established mark implies that Respondent registered the domain name for the
purpose of disrupting the business of Complainant. Respondent’s actions
evidence bad faith under Policy ¶
4(b)(iii). See Surface Prot.
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 Lubbock Radio Paging v. Venture
Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that
domain names were registered and used in bad faith where Respondent and
Complainant were in the same line of business in the same market area).
Lastly, Respondent registered and used the disputed
domain names in order to attract, for commercial gain, Internet users searching
for Complainant’s products and services. Respondent’s unauthorized use of
Complainant’s mark in order to commercially benefit represents bad faith
registration and use under Policy ¶ 4(b)(iv). See State
Farm Mut. Auto. Ins. Co. v. Northway,
FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent
registered the domain name <statefarmnews.com> in bad faith because
Respondent intended to use Complainant’s marks to attract the public to the web
site without permission from Complainant); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Aug. 21, 2000) (finding bad faith where the Respondent directed Internet users
seeking the Complainant’s site to its own website for commercial gain).
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 <inteflora.org>
and <inteflora.net> domain names be TRANSFERRED from
Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 5, 2002
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