national arbitration forum

 

DECISION

 

Florists' Transworld Delivery, Inc. v. Yeonju Hong

Claim Number: FA1010001350982

 

PARTIES

Complainant is Florists' Transworld Delivery, Inc. ("Complainant"), represented by Adam D. Mandell of Millen, White, Zelano & Branigan, P.C., Virginia, USA.  Respondent is Yeonju Hong ("Respondent"), Korea.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ftdcom.net>, registered with ONLINENIC, INC.

 

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.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 7, 2010; the National Arbitration Forum received payment on October 8, 2010.

 

On October 7, 2010, ONLINENIC, INC. confirmed by e-mail to the National Arbitration Forum that the <ftdcom.net> domain name is registered with ONLINENIC, INC. and that Respondent is the current registrant of the name.  ONLINENIC, INC. has verified that Respondent is bound by the ONLINENIC, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On October 11, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 1, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ftdcom.net.  Also on October 11, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On November 10, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Complainant was founded in 1910 as the world’s first flower-by-wire service.

 

Complainant uses its FTD mark to promote its floral delivery business and operate its <ftd.com> retail website. 

 

Complaint holds service mark registrations for its FTD mark with United States Patent and Trademark Office (including Reg. No. 821,318, issued December 27, 1966).

 

Respondent registered the <ftdcom.net> domain name on February 15, 2005. 

 

Prior to Respondent’s receipt of notice of this dispute, the disputed domain name resolved to a website featuring a directory of links to websites in competition with Complainant’s delivery services. 

 

The disputed domain name now resolves to a website at <doctorstvshow.com>, which contains links to third-party websites unrelated to complainant’s floral delivery business.

 

Respondent’s disputed <ftdcom.net> domain name is confusingly similar to Complainant’s FTD mark.

 

Respondent is not commonly known by the <ftdcom.net> domain name. 

 

Respondent does not have any rights to or legitimate interests in the <ftdcom.net> domain name.

Respondent registered and uses the <ftdcom.net> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)   the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and

(2)   Respondent has no rights to or legitimate interests in respect of the domain name; and

(3)   the same domain name was registered and is being used by Respondent in bad faith.

 

DISCUSSION

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 a 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:

 

i.         the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.       Respondent has no rights or legitimate interests in respect of the domain name; and

iii.      the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in its FTD service mark via registration of the mark with a national trademark authority.  See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that a complainant had established rights to the MILLER TIME mark through its national trademark registrations).  Complainant need not register its mark within the country of origin of Respondent.  It is enough that Complainant can demonstrate rights in its mark in some jurisdiction.  See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether a complainant has registered its trademark in the country of the respondent’s residence). 

 

Respondent’s <ftdcom.net> domain name is confusingly similar to Complainant’s FTD mark.  The disputed domain name differs from Complainant’s mark only by the addition of the generic term “com” and the generic top-level domain (“gTLD”) “.net.”  These additions do not sufficiently differentiate the disputed domain name from Complainant’s mark under the terms of the Policy.  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name there in dispute contains the identical mark of a complainant combined with a generic word or term).  Similarly, the addition of a gTLD also fails adequately to distinguish the disputed domain name from Complainant’s 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 purposes of determining whether it is identical or confusingly similar to a competing mark). 

 

Therefore, the Panel concludes that Respondent’s <ftdcom.net> domain name is confusingly similar to Complainant’s FTD mark pursuant to Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant asserts that Respondent lacks rights to and legitimate interests in the <ftdcom.net> domain name.  Once Complainant establishes a prima facie showing in support of its allegations on this point, the burden shifts to Respondent to prove that it does have rights or legitimate interests in the contested domain name.  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008):

 

It is well established that, once a complainant has made out 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 paragraph 4(a)(ii) of the Policy.

 

Complainant has made out a prima facie showing under this head of the policy.  Therefore, and owing to Respondent’s failure to respond to the Complaint, we may presume that Respondent has no rights to or legitimate interests in the <ftdcom.net> domain name.  Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine if there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.  See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002):

 

Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.

 

We begin by noting that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the <ftdcom.net> domain name, and Complainant has not authorized or licensed Respondent to use or register the disputed domain name.  Moreover, the pertinent WHOIS information identifies the registrant only as “Yeonju Hong,” which is not similar to the disputed domain name.  On this record, we must conclude that Respondent is commonly known by the disputed domain name so as to have established that it has rights to or legitimate interests in the contested domain name under Policy ¶ 4(c)(ii).  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the relevant WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its registered mark);  see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish that it had rights to or legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it was commonly known by the disputed domain name).

 

We also observe that there is no dispute as to Complainant’s allegation that, prior to its receipt of notice of this dispute, Respondent’s <ftdcom.net> domain name resolved to a website featuring links to third-party websites, some of which offered services similar to those of Complainant’s floral delivery business, and that, currently, Respondent’s domain name resolves to the website <doctorstvshow.com> which features links to third-party sites unrelated to Complainant’s floral delivery business.  In the circumstances here presented, we may comfortably presume that Respondent receives click-through fees from the visits of Internet users to these links.  Respondent’s use of the disputed domain in this manner is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).  See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that a respondent’s use of a disputed domain name to redirect Internet users to commercial websites unrelated to a complainant, presumably with the purpose of receiving from that process commissions or pay-per-click referral fees, did not evidence rights to or legitimate interests in the domain name);  see also Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that a respondent’s use of domain names confusingly similar to a complainant’s WAL-MART mark to divert Internet users who might be seeking that complainant’s goods and services to websites competing with the business of that complainant did not constitute 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)).

 

The Panel thus finds that the requirements of Policy ¶ 4(a)(ii) have been met.

 

 

Registration and Use in Bad Faith

 

Before its receipt of notice of this dispute, Respondent’s <ftdcom.net> domain name resolved to a website featuring links to third-party websites offering floral delivery services similar to Complainant’s.  Respondent’s use of the disputed domain name in this way disrupted Complainant’s business.  This is evidence of bad faith registration and use of the contested domain name under Policy ¶ 4(b)(iii).  See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that s respondent engaged in bad faith registration and use of disputed domain names pursuant to Policy ¶ 4(b)(iii) by using them to operate a commercial search engine with links to the products of both a complainant and that complainant’s commercial competitors);  see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a contested domain name to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors represents bad faith registration and use of the domain under Policy ¶ 4(b)(iii)).

 

Having received notice of this dispute, Respondent changed the disputed domain name to redirect Internet users to a website featuring third-party links unrelated to Complainant’s floral delivery business.  Respondent presumably receives click-through fees from the visits of Internet users to these links.  Internet users may thus become confused regarding the possibility of Complainant’s affiliation with or sponsorship or the disputed domain name, resolving website, and services offered by the third-party links.  Respondent attempts to profit from this confusion.  Respondent’s use of the disputed domain name in this fashion constitutes bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv).  See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006):

 

Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.  Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).

 

See also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use of a contested domain name under Policy ¶ 4(b)(iv) where a respondent diverted to its own website Internet users searching for the website of a complainant, likely profiting in the process).

 

For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.

 

Accordingly, it is Ordered that the <ftdcom.net> domain name be TRANSFERRED forthwith from Respondent to Complainant.

 

 

 

Terry F. Peppard, Panelist

Dated:  November 24, 2010

 

 

 

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