Florists' Transworld Delivery, Inc. v.
dotPartners LLC
Claim Number: FA0205000114367
Complainant
is Florists' Transworld Delivery, Inc.,
Downers Grove, IL (“Complainant”) represented by Scott J. Major, of Millen,
White, Zelano & Branigan, P.C.
Respondent is dotPartners LLC,
Livingston, NJ (“Respondent”).
The
domain name at issue is <ftd.biz>,
registered with TLDS Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on May 20, 2002; the Forum
received a hard copy of the Complaint on May 21, 2002.
On
May 23, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 12,
2002, by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance with paragraph 2(a) of the Rules for
the Start-up Trademark Opposition Policy (the “STOP Rules”).
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 July 2, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Hon. Carolyn Marks Johnson
as the single 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 STOP Rules. Therefore, the Panel
may issue its decision based on the documents submitted and in accordance with
the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules
and principles of law that the Panel deems applicable, without the benefit of
any Response from Respondent.
Complainant
seeks transfer of the domain name from Respondent to Complainant.
A. Complainant makes the following
allegations in this proceeding:
The
<ftd.biz> domain name is identical to Complainant's FTD mark. Respondent has no rights or legitimate
interests in the <ftd.biz> domain name. Respondent registered the <ftd.biz> domain name in
bad faith.
B.
Respondent failed to submit a Response to the Complaint.
Complainant has used its FTD mark since
1910. Complainant was the first
flower-by-wire service. Currently,
Complainant oversees a network of 14,000 retail florists in North America, and
participates in an international floral delivery network of 42,000 affiliated
florists in 150 countries.
Complainant uses the FTD mark as a trade
name, service mark, trademark and collective membership mark. Complainant owns various registrations for the
mark including United States Patent and Trademark Office Registration Number
1,576,429 and 844,748. Complainant also
owns numerous international registrations for the FTD mark in Brazil, Canada,
Vietnam, Japan, Mexico, the European Union and South Korea. Complainant has expended considerable sums
of money over the years to promote its mark and has established exceptional
good will in the FTD mark.
Respondent registered the disputed domain
name on March 27, 2002. Respondent is
not licensed by Complainant to use Complainant’s FTD mark. Complainant’s investigation found no
evidence that Respondent intends to use the domain name in relation to a
business.
Paragraph 15(a) of the STOP 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 STOP Rules
and may draw such inferences as it considers appropriate pursuant to paragraph
14(b) of the STOP Rules.
Paragraph
4(a) of the STOP Policy requires that Complainant must prove each of the
following three elements to obtain an order that a domain name should be
transferred:
(1)
the domain name is identical to a trademark or service mark in which
Complainant has rights; and
(2) Respondent has no rights or
legitimate interests in respect of the domain name; and
(3)
the domain name has been registered or is being used in bad faith.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where
applicable.
Under
the STOP proceedings, a STOP Complaint may be filed only when the domain name
in dispute is identical to a trademark or service mark for which a Complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which a Complainant asserts rights.
The existence of the “.biz” generic top-level domain (gTLD) in the
disputed domain name is not a factor for purposes of determining that a
disputed domain name is not identical to the mark in which Complainant asserts
rights.
Complainant
established in this proceeding that it has rights in the FTD mark through
registration and continuous use.
Furthermore, Respondent’s <ftd.biz> domain name is
identical to Complainant’s FTD mark.
The
Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Furthermore, when Respondent fails to
submit a Response, the Panel is permitted to make all inferences in favor of
Complainant. 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”).
Complainant has established that it has
rights in the disputed domain name because it has used its FTD mark in commerce
since 1910 and is the owner of a trademark in the United States. Respondent has not come forward to offer evidence
that it has used the FTD mark in connection with its business, or that it owns
any trademarks or service marks incorporating the word anywhere in the
world. Respondent has not demonstrated
any rights or legitimate interests in the <ftd.biz> domain name as
is required by STOP Policy ¶ 4(c)(i). See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. &
D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights
or legitimate interests under the UDRP where no such right or interest is
immediately apparent to the Panel and Respondent has not come forward to
suggest any right or interest it may possess).
Furthermore, based on the famous and
distinctive nature of Complainant's FTD mark, any planned use by Respondent of
the <ftd.biz> domain name, which is identical to Complainant's
famous mark, would be an opportunistic attempt to attract customer's by using
Complainant's famous mark, which is not a bona fide offering of goods or
services pursuant to STOP Policy ¶ 4(c)(ii).
See 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).
No evidence on this record suggests and
Respondent has not come forward to establish evidence that it is commonly known
by the <ftd.biz> domain name and pursuant to STOP Policy ¶
4(c)(iii). Respondent has no such rights.
See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb.
Forum Feb. 5, 2001) (finding no rights or legitimate interests because
Respondent is not commonly known by the disputed domain name or using the
domain name in connection with a legitimate or fair use); see also CBS Broadcasting, Inc. v. LA-Twilight-Zone,
D2000-0397 (WIPO June 19, 2000) (finding that Respondent has 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 STOP Policy ¶
4(a)(ii) has been satisfied.
The <ftd.biz> domain name is
identical to Complainant's FTD mark and an Internet user will likely believe
that an affiliation exists between Respondent and Complainant. Registration of the <ftd.biz>
domain name despite it being identical to Complainant’s mark is evidence of
Respondent’s bad faith pursuant to STOP Policy ¶ 4(b)(iv). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(finding that bad faith registration and use where it is “inconceivable that
the respondent could make any active use of the disputed domain names without
creating a false impression of association with the Complainant”); see also Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so
obviously connected with the Complainants that the use or registration by
anyone other than Complainants suggests ‘opportunistic bad faith’”).
Furthermore, because of the famous and
distinctive nature of Complainant's FTD mark, Respondent was on actual or
constructive notice of the existence of Complainant's mark at the time
Respondent registered the infringing <ftd.biz> domain name.
Therefore, Respondent’s registration of the disputed domain name despite this
notice is evidence of bad faith registration pursuant to STOP Policy ¶
4(a)(iii). See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or
constructive knowledge of a commonly known mark at the time of registration); 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 constitutes bad faith).
The Panel finds that STOP Policy ¶
4(a)(iii) has been satisfied.
Having
established all three elements required under the Start-up Trademark Opposition
Policy, the Panel concludes that relief shall be hereby granted.
Accordingly, it is Ordered that the
domain name <ftd.biz> be transferred from Respondent to
Complainant and subsequent challenges under the STOP Policy against this domain
name shall not be permitted.
Hon. Carolyn
Marks Johnson, Panelist
Dated: July 16, 2002.
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