Edible Arrangements, LLC v.
Claim Number: FA0903001252321
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@ediblearrangemetns.com, postmaster@eddiblearangements.com, and postmaster@ediblesarrangements.com 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.
RELIEF SOUGHT
Complainant requests that the domain names <ediblearrangemetns.com>, <eddiblearangements.com>,
and <ediblesarrangements.com>,
be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
B. Respondent
Respondent does not contest the allegations of
Complainant, agrees to the relief requested by the Complainant and offers a
“unilateral consent to transfer”.
FINDINGS
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.
DISCUSSION
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).
Respondent’s <ediblearrangemetns.com>,
<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.
Respondent is
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)).
DECISION
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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