Teleflora LLC v.
Claim Number: FA0809001222807
Complainant is Teleflora LLC (“Complainant”), represented by Sarah
Abbott, of Roll International Corporation,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <teleflora2000.com> and <teleflora2000.net>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 3, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 4, 2008.
On September 5, 2008, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <teleflora2000.com> and <teleflora2000.net> domain names are registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the names. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 September 9, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 29, 2008 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@teleflora2000.com and postmaster@teleflora2000.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 7, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <teleflora2000.com> and <teleflora2000.net> domain names are confusingly similar to Complainant’s TELEFLORA mark.
2. Respondent does not have any rights or legitimate interests in the <teleflora2000.com> and <teleflora2000.net> domain names.
3. Respondent registered and used the <teleflora2000.com> and <teleflora2000.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Teleflora LLC, is
a well-known floral delivery clearinghouse and wire service with the largest
network of florists in the world.
Complainant has used the TELEFLORA trademark in connection with its
floral delivery clearinghouse business since at least as early as February 1,
1938. Complainant owns several
Respondent registered the <teleflora2000.com> and <teleflora2000.net> domain names on August 19, 2005. Respondent is a member of Complainant’s network of affiliates that supply flowers to Complainant’s customers, and has been so since 1992. Respondent’s disputed domain names resolve to websites that offer floral delivery services in competition with Complainant’s own services. Respondent has offered to sell the disputed domain name to Complainant for the amount of $50,000.00.
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 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar 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 and is being used in bad faith.
Complainant asserts rights in the TELEFLORA mark through
registration of the mark with the USPTO.
The Panel finds that Complainant has established rights in the mark
under Policy ¶ 4(a)(i). See Am.
Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6,
2005) (“Complainant has established rights in the AIG mark through registration
of the mark with several trademark authorities throughout the world, including
the United States Patent and Trademark office (‘USPTO’)… .”); see also Reebok Int’l Ltd. v.
Respondent’s <teleflora2000.com> and <teleflora2000.net>
domain names are confusingly similar to Complainant’s TELEFLORA mark. Respondent’s domain names contain
Complainant’s mark in its entirety and add the number “2000” in addition to a
generic top-level domain (“gTLD”), either “.com” or “.net.” The Panel finds that these additions fail to
differentiate Respondent’s domain names from Complainant’s mark pursuant to
Policy ¶ 4(a)(i). See Omnitel Pronto Italia S.p.A. v. Bella, D2000-1641 (WIPO Mar.
12, 2001) (finding that the contested <omnitel2000.com> domain name is
confusingly similar to the OMNITEL trademark); see also Hitachi, Ltd. v. Fortune Int’l Dev. Ent.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <teleflora2000.com> and <teleflora2000.net> domain names. In instances such as this, where Complainant has established a prima facie case against Respondent, the burden of proof shifts from Complainant to Respondent to bring forth its evidence of rights or legitimate interests under Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under UDRP ¶ 4(a)(ii).”).
Although Respondent appears to be commonly known by the <teleflora2000.com> and <teleflora2000.net>
domain names, Complainant contends that Respondent is not commonly known by the
<teleflora2000.com> and <teleflora2000.net>
domain names. The WHOIS information for
the disputed domain name lists the registrant as “Carmel Camilleri c/o Teleflor Malta LTD;” however, Respondent has failed
to submit evidence showing that it was operating under the “Carmel Camilleri c/o Teleflor Malta LTD” name prior to
the registration of the <teleflora2000.com>
and <teleflora2000.net>
domain names. As a result, the Panel
finds that Respondent is not commonly known by the disputed domain name
pursuant to Policy ¶ 4(a)(i).
Respondent is using the <teleflora2000.com> and <teleflora2000.net>
domain names to redirect Internet users to a website that provides floral
delivery services. Respondent’s use is
not a bona fide offering of goods or
services under Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use
pursuant to Policy ¶ 4(c)(iii). See Computerized
Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003)
(“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products
that compete with Complainant’s goods does not constitute a bona fide offering
of goods and services.”); see also Coryn Group, Inc. v. Media
Insight, FA 198959 (Nat. Arb. Forum Dec.
5, 2003) (finding that the respondent was not using the domain names for a bona
fide offering of goods or services nor a legitimate noncommercial or fair
use because the respondent used the names to divert Internet users to a website
that offered services that competed with those offered by the complainant under
its marks).
Complainant contends that
Respondent offered to sell the <teleflora2000.com> and <teleflora2000.net>
domain names to Complainant for $50,000.00.
The Panel finds that Respondent’s willingness to part with both domain
names shows its lack of rights and legitimate interests under Policy ¶
4(a)(ii). See Reese v. Morgan, FA
917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s
willingness to sell a contested domain name for more than its out-of-pocket
costs provided additional evidence that Respondent had no rights or legitimate
interests in the contested domain name); see
also Drown Corp. v. Premier Wine &
Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (“Moreover, the
Panel interprets Respondent’s offer to sell the domain name registration for
$100,000 as evidence that Respondent lacks rights and legitimate interests in
the disputed domain name pursuant to Policy ¶ 4(a)(ii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration
and Use in Bad Faith
Respondent has attempted to sell the <teleflora2000.com> and <teleflora2000.net>
domain names to Complainant for $50,000.00, an amount far in excess of
Respondent’s out-of-pocket costs. The
Panel finds that Respondent’s attempt to sell the disputed domain names is
evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v.
AchievementTec, Inc., FA 192316 (Nat. Arb.
Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name
for $2,000 sufficient evidence of bad faith registration and use under Policy ¶
4(b)(i)); see also Campmor, Inc. v. GearPro.com, FA
197972 (Nat. Arb. Forum Nov. 5, 2003) (“Respondent registered the disputed
domain name and offered to sell it to Complainant for $10,600. This
demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”).
Complainant has shown that Respondent is using the <teleflora2000.com> and <teleflora2000.net> domain names to connect Internet users to a website offering floral delivery services that directly compete with Complainant’s own floral delivery services. The Panel finds this use to be a disruption of Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business); see also Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (finding that the respondent registered and used the domain name primarily for the purpose of disrupting the business of the complainant by offering personal e-mail accounts under the domain name <openmail.com> which is identical to the complainant’s services under the OPENMAIL mark).
Finally, the Panel finds that Internet users will likely be confused as to Complainant’s sponsorship of and affiliation with the resulting website and disputed domain name. Moreover, Respondent is seeking to capitalize on this confusion by selling competing financial services through its resulting website. This use is further evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to UDRP ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant).
Finally, Complainant has shown evidence that Respondent has
been a part of Complainant’s network of affiliates since 1992. As a result, Respondent knew of Complainant’s
rights in the TELEFLORA mark long before it chose to register the infringing
domain names in 2005. The Panel finds
that Respondent’s actions further amount to bad faith registration and use
under Policy ¶ 4(a)(iii). See Yahoo!
Inc. v.
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 GRANTED.
Accordingly, it is Ordered that the <teleflora2000.com> and <teleflora2000.net> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: October 20, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum