Florists' Transworld Delivery, Ind. v. Cottage Garden Flowers
Claim Number: FA0206000114521
Complainant is Florists' Transworld Delivery, Downers Grove, IL (“Complainant”) represented by Scott J. Major, of Millen, White, Zelano & Branigan, P.C. Respondent is Cottage Garden Flowers, McAllen, TX (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myftd.com>, registered with Verisign, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 7, 2002; the Forum received a hard copy of the Complaint on June 10, 2002.
On June 10, 2002, Verisign, Inc. confirmed by e-mail to the Forum that the domain name <myftd.com> is registered with Verisign, Inc. and that Respondent is the current registrant of the name. Verisign, Inc. has verified that Respondent is bound by the Verisign, 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 June 10, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 1, 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 July 11, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.
1. Respondent’s <myftd.com> domain name is confusingly similar to Complainant’s registered FTD family of marks.
2. Respondent does not have any rights or legitimate interests in the <myftd.com> domain name.
3. Respondent registered and used the <myftd.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns numerous international registrations for its FTD mark, more specifically: U.S. Reg. No. 1,576,429 issued January 9, 1990; Canadian Reg. No. 538,511 registered December 11, 2000; French Reg. No. 1,240,367 registered July, 7 1983; and South Korean Reg. No. 20,586 issued July 16, 1993, among others.
Complainant was the world’s first flower-by-wire service established in 1910 and has continuously operated under the “FTD” acronym ever since. Complainant currently 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. Complainant has expended considerable funds and effort in promoting and advertising its goods and services identified by its FTD mark. During the three most recent fiscal years alone, Complainant has spent in excess of $100 million in marketing and promoting its FTD mark and related goods and services offered thereunder.
As a result of its substantial efforts and extensive marketing and promotional activities, Complainant has established a unique and distinct mark in its FTD moniker, which has been valued at $65 million.
Respondent registered <myftd.com> on May 5, 2000 and has yet to develop a website in conjunction with the disputed domain name. Respondent is identified on the WHOIS record for the subject domain name as “CottageGardenFlowers.com.” Complainant also asserts that Respondent has used the FTD mark in meta tags for its retail floral site located at <cottagegardenflowers.com>.
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 rights in the FTD mark through international registration of the mark and continuous use of the mark since 1910.
Respondent’s <myftd.com> domain name is confusingly similar to Complainant’s FTD mark. Respondent’s disputed domain name incorporates Complainant’s mark in its entirety while deviating only with the addition of the ordinary word “my.” Respondent’s addition of an ordinary word to a famous mark fails to detract from the overall presence of Complainant’s FTD mark. See Infospace.com, Inc. v. Delighters, Inc., D2000-0068 (WIPO May 1, 2000) (finding that the domain name <myinfospace.com> is confusingly similar to Complainant’s INFOSPACE mark); see also ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (finding that the domain name <mysportscenter.com> is confusingly similar to Complainant’s SPORTSCENTER mark).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to submit a Response in this proceeding. Therefore, it is presumed that Respondent lacks rights and legitimate interests in the <myftd.com> domain name. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).
Furthermore, because Respondent failed to submit a Response in this proceeding, the Panel is permitted to make all reasonable 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”).
Respondent’s domain name has lacked an apparent or stated purpose since its registration two years ago. Respondent’s passive holding of <myftd.com> does not represent a bona fide use of the domain name pursuant to Policy ¶ 4(c)(i), nor is it a legitimate noncommercial use of the domain name under Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also LFP, Inc. v. B & J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (finding that while the Panel recognizes that in certain instances excusable delays will inevitably arise, those delays must be quantifiable and limited; they cannot extend indefinitely”); see also Mondich & Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the Respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith).
There is no information that suggests Respondent is commonly known by the <myftd.com> domain name. Complainant has produced uncontested evidence that Respondent actually represents “CottageGardenFlowers.com,” a competitor of Complainant. Because Complainant’s FTD mark is famous and distinct, and has been used in connection with Complainant’s floral services since 1910, there is a presumption that Respondent could not establish rights or legitimate interests under Policy ¶ 4(c)(ii) since it would be difficult to imagine an entity that could infringe on Complainant’s exclusive use of the FTD mark. See Valigene Corp. v. MIC, FA 94860 (Nat. Arb. Forum Aug. 1, 2000) (finding no rights or legitimate interest in the non-use of a domain name that was a misspelling of a famous mark); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark); see also 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).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Complainant’s FTD mark is registered with numerous international jurisdictions, including the United States, Respondent’s place of domicile. Complainant’s mark has also been extensively used in relation to advertising Complainant’s floral products for nearly a century and is affiliated with a delivery network of over 42,000 florists in 150 countries. Furthermore, Respondent operates within the same floral industry as Complainant. Based on the foregoing reasons, Respondent had notice of Complainant’s rights in its FTD mark. Respondent’s subsequent registration of an infringing domain name, despite knowledge of Complainant’s preexisting rights, evidences bad faith registration under Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); 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’s registration of the infringing domain name exhibits bad faith where it registered the name primarily for the purpose of disrupting the business of a competitor pursuant to Policy ¶ 4(b)(iii). In this instance, Respondent operates a retail flower business that competes with Complainant and its affiliates. Moreover, based upon representations on Respondent’s website, Complainant’s investigation suggests that Respondent is a member of the TELEFORA floral network which is one of Complainant’s principal competitors. See Mission Kwa Sizabantu v. Rost, D2000-0279 (WIPO June 7,2000) (defining “competitor” as "…one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also 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 has not made any use of the domain name or a website in conjunction with the domain name since registration of the domain name more than two years ago. Passive holding of a domain name permits an inference of registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). See E. & J. Gallo Winery v. Oak Inv. Group, D2000-1213 (WIPO Nov. 12, 2000) (finding bad faith where (1) Respondent knew or should have known of the Complainant’s famous GALLO marks and (2) Respondent made no use of the domain name <winegallo.com>); 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 relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <myftd.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 24, 2002
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