Florists' Transworld Delivery, Inc. v. Beltway Florist, Inc.
Claim Number: FA0811001233208
Complainant is Florists' Transworld Delivery, Inc., represented by Scott J. Major, of Millen, White, Zelano & Branigan, P.C., Virginia, USA. Respondent is Beltway Florist, Inc., Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <myftdflowers.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 7, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 10, 2008.
On November 10, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <myftdflowers.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 November 12, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 2, 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@myftdflowers.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 8, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <myftdflowers.com> domain name is confusingly similar to Complainant’s FTD mark.
2. Respondent does not have any rights or legitimate interests in the <myftdflowers.com> domain name.
3. Respondent registered and used the <myftdflowers.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Florists’ Transworld Delivery, Inc. (“FTD”), was founded in 1910 as the world’s first flower-by-wire service. This service connects approximately 20,000 North American florists for direct marketing to consumers of floral arrangements, plants, gift baskets and other gift items. Complainant owns a number of trademark registrations for the FTD mark with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 821,318 issued December 27, 1966).
Respondent registered the <myftdflowers.com> domain name on January 25, 2005. Respondent’s disputed domain name resolves to a website offering floral products and services in direct competition with Complainant.
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 has established rights in the FTD mark through registration of the mark with the USPTO pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).
Respondent’s <myftdflowers.com> domain name is confusingly similar to Complainant’s FTD mark pursuant to Policy ¶ 4(a)(i). The disputed domain name contains Complainant’s mark and adds the irrelevant “.com” and the generic terms “my” and “flowers”, the latter a term with an obvious relationship to Complainant. The Panel finds that this creates a confusing similarity between the disputed domain name and the FTD mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (finding that the “domain name MYSPORTSCENTER.COM registered by Respondent is confusingly similar to Complainant’s SportsCenter mark”). In addition, the Panel finds that the addition of a gTLD is irrelevant in distinguishing a disputed domain name from a registered mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds in this case that Complainant has established a prima facie case. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”). Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). However, the Panel chooses to examine the evidence on record against the applicable Policy 4(c) elements.
Complainant contends that Respondent is neither commonly
known by the disputed
domain name nor licensed to register domain names using the FTD mark. Respondent’s WHOIS information identifies
Respondent as “Beltway Florist, Inc.”
Because of this evidence, along with the fact that Respondent has failed
to show any evidence contrary to Complainant’s contentions, the Panel finds that
Respondent is not commonly known by the <myftdflowers.com>
domain name
pursuant to Policy ¶ 4(c)(ii).
See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the
WHOIS contact information for the disputed domain [name], one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name
‘welsfargo’ in any derivation.”); see
also Compagnie de Saint Gobain
v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interest where the respondent was not commonly known by the mark and
never applied for a license or permission from the complainant to use the
trademarked name).
Complainant asserts that Respondent is using the disputed
domain name to operate a website offering floral products and services in
direct competition with Complainant. The
Panel finds that such use of the disputed domain name is neither a bona fide offering of goods and services
pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA
203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not
using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii)
because the respondent used the domain name to take advantage of the
complainant's mark by diverting Internet users to a competing commercial site);
see also Ultimate Elecs., Inc. v.
Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the
respondent's “use of the domain name (and Complainant’s mark) to sell
products in competition with Complainant demonstrates neither a bona fide
offering of goods or services nor a legitimate noncommercial or fair use of the
name”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the disputed domain name to intentionally divert
Internet users to a corresponding website, wherein Respondent offers floral
products and services in direct competition with Complainant. The Panel finds that such use of a disputed
domain name is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321
(Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the
<saflock.com> domain name to offer goods competing with the complainant’s
illustrates the respondent’s bad faith registration and use of the domain name,
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); 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).
In addition, the Panel finds that Respondent’s use of the disputed domain name to
disrupt the business of Complainant by directly competing with Complainant is
also evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iii). See Travant Solutions, Inc. v.
Cole, FA 203177 (Nat. Arb. Forum Dec. 6,
2003) (“Respondent registered and used the domain name in bad faith, pursuant
to Policy ¶ 4(b)(iii), because it is operating on behalf of a competitor of
Complainant . . .”); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb.
Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar
to Complainant's mark to divert Internet users to a competitor's website. It is
a reasonable inference that Respondent's purpose of registration and use was to
either disrupt or create confusion for Complainant's business in bad faith
pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
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 <myftdflowers.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 15, 2008
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