Florists’ Transworld Delivery, Inc. v. Troy Vorse
Claim Number: FA1102001372828
Complainant is Florists’ Transworld Delivery, Inc. (“Complainant”), represented by Adam D. Mandell of Millen, White, Zelano & Branigan, P.C., Virginia, USA. Respondent is Troy Vorse (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <floristsftd.org>, registered with 1 & 1 Internet AG (R73-LROR).
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 14, 2011; the National Arbitration Forum received payment on February 15, 2011.
On February 15, 2011, 1 & 1 Internet AG (R73-LROR) confirmed by e-mail to the National Arbitration Forum that the <floristsftd.org> domain name is registered with 1 & 1 Internet AG (R73-LROR) and that Respondent is the current registrant of the name. 1 & 1 Internet AG (R73-LROR) has verified that Respondent is bound by the 1 & 1 Internet AG (R73-LROR) 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 February 22, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 2011 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@floristsftd.org. Also on February 22, 2011, 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 March 16, 2011, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant owns registrations with the United States Patent and Trademark Office (“USPTO”) for its FTD service mark (including Reg. No. 844,748, issued February 20, 1968).
Complainant uses its FTD service mark in connection with its operation of a computerized clearinghouse for florists, along with floral arrangements, planters, baskets, and other accessories available to floral and gift shops.
Respondent registered the disputed domain name on May 23, 2010.
The disputed domain name resolves to a website featuring advertisements and links to competing third-party floral websites.
Respondent’s <floristsftd.org> domain name is confusingly similar to the FTD service mark.
Respondent is not known by a name consisting in whole or in part of the FTD mark, and Respondent is not an agent or licensee of Complainant with authority to employ the mark in a domain name.
Respondent does not have any rights to or legitimate interests in the domain name <floristsftd.org>.
Respondent registered and uses the <floristsftd.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(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.
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 a 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.
Complainant has rights in the FTD service mark pursuant to Policy ¶ 4(a)(i) by virtue of its registrations of the mark with a national trademark authority, the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where a complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Respondent’s domain name is confusingly similar to Complainant’s FTD mark. In forming the domain name from the mark, Respondent merely added the term “florists,” a term descriptive of Complainant’s business. This does nothing to avoid confusing similarity as between the mark and the domain name. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where the <kohlerbaths.com> domain name contained a complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”).
Similarly, the addition of a generic top-level domain (“gTLD”) to Complainant’s mark in creating the contested domain name is not relevant to a determination as to whether the domain is confusingly similar to the mark because a gTLD is a necessary component of every domain name. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003):
It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.
Accordingly, the Panel finds that Respondent’s <floristsftd.org> domain name is confusingly similar to Complainant’s FTD service mark under Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case in support of its allegation that Respondent lacks rights to and legitimate interests in the disputed domain name. The burden then shifts to Respondent to prove that it has such rights or interests. 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 established the requisite prima facie case under this head of the Policy. Respondent’s failure to submit a response to the allegations of the Complaint filed in this proceeding therefore permits us to conclude that Respondent lacks rights to and legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that a respondents’ failure to respond to a complaint filed under the Policy can be construed as an admission that it has no legitimate interest in contested domain names). Nonetheless, we will examine the evidence of record, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights or legitimate interests in the disputed domain name which are cognizable under the Policy.
We first note that Complainant asserts, and Respondent does not deny, that Respondent is not known by a name consisting in whole or in part of the FTD mark, and that Respondent is not an agent or licensee of Complainant with authority to employ the mark in a domain name. Moreover, the WHOIS information for the <floristsftd.org> domain name identifies the registrant only as “Troy Vorse,” which does not resemble the domain name. On this record, we are constrained to conclude that Respondent is not commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in it with the meaning of Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name where there was no evidence in the record showing that that respondent was commonly known by that domain name, and where a complainant asserted that it did not authorize or license that respondent’s use of its mark in a domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent had no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that that respondent was commonly known by the disputed domain name).
We next observe that Complainant alleges, without objection from Respondent, that Respondent’s domain name resolves to a website featuring advertisements for and links to third-party websites that compete with Complainant in the floral sales industry. In the circumstances here presented, we may comfortably presume that Respondent profits from the receipt of referral fees or pay-per-click fees associated with the visits of Internet users to the website resolving from the contested domain name and its featured links. Respondent’s use of the domain, therefore, does 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). See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), where a respondent presumably received “click-through” fees for each consumer it redirected to other websites); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), where a respondent presumably received “click-through” fees for each consumer it redirected to other websites).
The Panel thus finds that the requirements of Policy ¶ 4(a)(ii) are satisfied.
Respondent’s <floristsftd.org> domain name resolves to a website that features both advertisements for and links to competing third-party floral websites. Because Respondent’s domain name is confusingly similar to Complainant’s FTD service mark, Internet users searching for Complainant’s products and services may be redirected instead to the website of a competitor of Complainant offering similar products. This creates a disruption of Complainant’s business. For this reason, we conclude that Respondent has registered and uses the contested domain name in bad faith under 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 contested domain name to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors demonstrates bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007):
This Panel concludes that by redirecting Internet users seeking information on Complainant’s …[enterprise]… to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Under Policy ¶ 4(b)(iv), bad faith registration and use is also present where a respondent uses a disputed domain name to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with a complainant’s mark. Because it is confusingly similar to Complainant’s FTD service mark, Respondent’s domain name tends to confuse Internet users as to the possibility that Complainant is a source, sponsor, affiliate or endorser of Respondent’s resolving website. And, because Respondent benefits financially from its operation of the resolving website, either through of referral fees or pay-per-click fees, we conclude that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to a complainant’s mark to offer links to third-party websites featuring services similar to those offered by a complainant); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith registration and use of the domain under Policy ¶ 4(b)(iv)).
For these reasons, the Panel finds that the elements of Policy ¶ 4(a)(iii) have been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is, hereby, GRANTED.
Accordingly, it is Ordered that the <floristsftd.org> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 30, 2011
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