Edible Arrangements, LLC v.
Claim Number: FA0903001252321
Complainant is Edible Arrangements, LLC (“Complainant”), represented by Richard
R. Michaud, of Michaud-Duffy Group LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ediblearrangemetns.com>, <eddiblearangements.com>, and <ediblesarrangements.com>, registered with Compana, LLC.
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.
David P. Miranda, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 13, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 16, 2009.
On March 16, 2009, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <ediblearrangemetns.com>, <eddiblearangements.com>, and <ediblesarrangements.com> domain names are registered with Compana, LLC and that the Respondent is the current registrant of the names. Compana, LLC has verified that Respondent is bound by the Compana, LLC 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 March 19, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 8, 2009 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 firstname.lastname@example.org, email@example.com, and firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on April 8, 2009.
On April 20, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David P. Miranda, Esq., as Panelist.
Complainant requests that the domain names <ediblearrangemetns.com>, <eddiblearangements.com>, and <ediblesarrangements.com>, be transferred from Respondent to Complainant.
Complainant Edible Arrangements, LLC (“Complainant”) seeks transfer of the domain names <ediblearrangemetns.com>, <eddiblearangements.com>, and <ediblesarrangements.com> from Respondent Texas International Properties Associates- NA NA (“Respondent”). Complainant owns 7 federal trademark registrations that include the words EDIBLE ARRANGEMENTS including a registration as early as June 6, 2000, and a date of first use as early as October 1998. Complainant contends that it has been in the business of providing fresh fruit cut into flower shapes and arranging floral designs and services related thereto, since at least October 1998, during which time Complainant has expended significant sums advertising its business and trademarks. On December 9, 1998 Complainant registered the domain name ediblearrangements.com. Complainant contends that Respondent’s domain names are confusingly similar Complainant’s family of EDIBLE ARRANGEMENTS marks and Complainant’s ediblearrangements.com domain name. Complainant contends that Respondent has no rights or legitimate interests in the domain names. Complainant sent cease and desist letters to Respondent on March 25, 2008, and February 2, 2009 to which Respondent did not reply. Respondent is not affiliated with Complainant and has not been licensed or otherwise authorized to use Complainant’s EDIBLE ARRANGEMENTS marks. Respondent’s website directs users of the domain names in question to websites in competition with Complainant. Complainant further contends that Respondent’s registration and use of the domains has been in bad faith by giving an impression of being affiliated with or sponsored by the Complainant, by intentionally attempting to attract internet users by creating a likelihood of confusion with Complainant’s marks, and by failing to respond to Complainant’s cease-and-desist letters. Complainant requests the panel issue a Decision ruling that Respondent’s domain registrations be transferred to Complainant.
Respondent does not contest the allegations of Complainant, agrees to the relief requested by the Complainant and offers a “unilateral consent to transfer”.
Complainant has established all three elements of the UDRP policy, Respondent does not contest the allegations, and consents to the transfer of the domain name to Complainant. Thus, the panel finds that Complainant has established all elements of the policy, and directs the transfer of the domain names to Complainant.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
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;
(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.
Where Respondent has
consented to the transfer of the disputed domain name, the Panel may forego the
traditional UDRP analysis and order the immediate transfer of the domain
name. See Royal Bank of Scotland Group PLC v. Kimberly Richards,
Claim No. FA 0804001179260 (NAF June 2, 2008).
In such situations where consent to transfer is provided by the Respondent,
the Panel may direct transfer without a finding on the merits, however, the Panel
may also direct transfer of the disputed domain name, along with findings in
accordance with the Policy. See Graebel Vanlines, Inc. v.
Complainant has seven federal registrations for its EDIBLE ARRANGEMENTS mark, and its first registration with the United States Patent and Trademark Office (“USPTO”) was on June 6, 2000 (Reg. No. 2,356,362). Complainant’s registration sufficiently evidences its rights in the EDIBLE ARRANGEMENTS mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
<eddiblearangements.com>, and <ediblesarrangements.com> domain
names are confusingly similar to Complainant’s EDIBLE ARRANGMENTS mark because
they each contain slightly misspelled versions of Complainant’s mark and add
the generic top-level domain “.com.” The
deliberate misspelling of a mark and addition of a generic top-level domain do
not prevent a finding of confusing similarity under Policy ¶ 4(a)(i). See
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000).
Respondent’s <ediblearrangemetns.com>, <eddiblearangements.com>, and <ediblesarrangements.com> domain names each resolve to websites that display links to third-party websites, which compete with Complainant’s edible flower arrangment business. Respondent’s use of the disputed domain names is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007).
Respondent is not commonly known by the disputed domain names. The WHOIS information lists Respondent as “Texas International Property Associates - NA NA.” Complainant contends Respondent is not authorized to use its EDIBLE ARRANGMENT mark in any manner. Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007.
attempting to profit from the goodwill Complainant has established in its
EDIBLE ARRANGEMENT mark, in violation of Policy ¶ 4(b)(iv). See
Respondent’s disputed domain names each resolve to websites that display links to third-party competing websites. Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ediblearrangemetns.com>, <eddiblearangements.com>, and <ediblesarrangements.com> domain names be TRANSFERRED from Respondent to Complainant.
David P. Miranda, Esq., Panelist
Dated: May 4, 2009
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