Provide Commerce, Inc. v. Mike Morgan
Claim Number: FA0909001287024
Complainant is Provide
Commerce, Inc. (“Complainant”), represented by CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <proflwoers.com> and <proglowers.com>, registered with Enom, 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 September 29, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 30, 2009.
On September 30, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <proflwoers.com> and <proglowers.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, 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 October 5, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 26, 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@proflwoers.com and postmaster@proglowers.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 30, 2009, 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 <proflwoers.com> and <proglowers.com> domain names are confusingly similar to Complainant’s PROFLOWERS mark.
2. Respondent does not have any rights or legitimate interests in the <proflwoers.com> and <proglowers.com> domain names.
3. Respondent registered and used the <proflwoers.com> and <proglowers.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Provide Commerce, Inc., is a leading provider of flowers. Complainant owns and operates the website resolving from the <proflowers.com> domain name, which it uses to market and sell its flowers to customers around the world. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the PROFLOWERS mark (Reg. No. 2,476,976 issued August 14, 2001).
Respondent registered the <proflwoers.com> and <proglowers.com> domain names on December 7, 2007. Respondent’s disputed domain names resolve to websites displaying third-party links to websites offering flowers in 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 obtained a trademark registration for the
PROFLOWERS mark with the USPTO (Reg. No. 2,476,976 issued August 14,
2001). The Panel finds that Complainant
has established rights in the PROFLOWERS mark for purposes of Policy ¶ 4(a)(i) through its trademark registration with the USPTO. See Lockheed
Martin Corp. v. Hoffman, FA 874152
(Nat. Arb.
Forum Jan. 31, 2007) (finding that the complainant had sufficiently established
rights in the SKUNK WORKS mark through its registration of the mark with the
USPTO); see also Clear!Blue
Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5,
2007) (“The Panel finds that Complainant has established trademark rights in
the CLEAR BLUE marks through introduction of the certificates for its U.S.
registration for those trademarks. The
U.S. Trademark Act is clear that the certificate of registration on the
Principal Register, as here, is prima
facie evidence of the validity of the registered mark and the registrant's
exclusive right to use the mark in commerce in on or in connection with the
goods specified in the registration.”).
Respondent’s <proflwoers.com>
and <proglowers.com> domain names are confusingly similar to
Complainant’s PROFLOWERS mark pursuant Policy ¶ 4(a)(i). Respondent’s disputed domain names contain a
misspelled version of Complainant’s mark and add the generic top-level domain
(“gTLD”) “.com.” The Panel finds that a
disputed domain name that contains a misspelled version of a complainant’s mark
creates a confusing similarity between the disputed domain name and the
complainant’s mark. See Reuters Ltd. v.
Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a
domain name which differs by only one letter from a trademark has a greater
tendency to be confusingly similar to the trademark where the trademark is
highly distinctive); see also Victoria’s
Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding
that, by misspelling words and adding letters to words, a respondent does not
create a distinct mark but nevertheless renders the domain name confusingly
similar to the complainant’s marks). In addition, the Panel finds that the
addition of a gTLD is irrelevant in distinguishing a disputed domain name from
an established mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb.
Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name
is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Reese v. Morgan, FA 917029
(Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic
top-level domain “.com” is insufficient to differentiate a disputed domain name
from a mark). Therefore, the Panel finds
that the disputed domain names are confusingly similar to Complainant’s
PROFLOWERS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks all rights and legitimate interests in the disputed domain names. When 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 in the disputed domain names pursuant to Policy ¶ 4(a)(ii). The Panel finds that in this case, Complainant has established a prima facie case and Respondent has failed to submit a Response to these proceedings. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”).
Complainant contends that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). The relevant WHOIS information identifies the registrant of the disputed domain name as “Mike Morgan,” and there is no evidence in the record to suggest that Respondent is otherwise commonly known by the disputed domain names. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Respondent is using the disputed domain names to display links advertising third-party
websites in competition with Complainant’s offering of flowers. The Panel infers that Respondent is using the
disputed domain names to earn click-through fees, and thus finds that Respondent
has not made 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 Wells Fargo & Co. v. Lin
Shun Shing, FA 205699 (Nat. Arb. Forum
Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a
website featuring pop-up advertisements and links to various third-party
websites is neither a bona fide offering of goods or services under
Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶
4(c)(iii) because the registrant presumably receives compensation for each
misdirected Internet user); 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).
Respondent’s registration and use of the disputed domain names qualifies as
typosquatting, given the misspelling of the PROFLOWERS mark. As such, Respondent’s attempt to capitalize
on the typographical errors of Internet users constitutes evidence that
Respondent lacks rights and legitimate interests in the disputed domain names
under Policy ¶ 4(a)(ii). See LTD
Commodities LLC v. Party Night, Inc., FA
165155 (Nat. Arb. Forum Aug. 14,
2003) (finding that the <ltdcommadities.com>,
<ltdcommmodities.com>, and <ltdcommodaties.com> domain
names were intentional misspellings of Complainant's LTD COMMODITIES mark
and this “‘typosquatting’ is evidence that Respondent lacks rights or
legitimate interests in the disputed domain names”); see also Microsoft Corp. v.
Domain Registration
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed
domain names resolve to a website that promotes Complainant’s competitors in
the flowers industry via click-through links.
This activity clearly disrupts Complainant’s business, as Internet users
seeking Complainant’s products will be redirected to Complainant’s
competitors. This qualifies as bad faith
registration and use under Policy ¶ 4(b)(iii). See
David Hall Rare Coins v.
Additionally, Respondent has created a likelihood of
confusion for commercial gain as to Complainant’s source and affiliation with
the disputed domain names and
the resolving website. Respondent is
presumably benefiting through the receipt of referral fees accrued when
Internet users click on the competitive links.
This constitutes further evidence that Respondent has registered and
used the disputed domain names in bad faith under Policy ¶ 4(b)(iv). See Asbury Auto. Group,
Inc. v.
The Panel finds that Respondent’s disputed domain names are merely a typosquatted version of Complainant’s PROFLOWERS mark, and that such typosquatting constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003) (“Respondent’s registration and use of the disputed domain name demonstrates a practice commonly referred to as ‘typosquatting.’ This practice diverts Internet users who misspell Complainant’s mark to a website apparently owned by Respondent for Respondent’s commercial gain. ‘Typosquatting’ has been recognized as evidencing bad faith registration and use…”).
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 <proflwoers.com> and <proglowers.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 12, 2009
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