Provide Commerce, Inc. v. Jardimar Holdings Corp / Ernesto Charingola
Claim Number: FA1305001502077
Complainant is Provide Commerce, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Jardimar Holdings Corp / Ernesto Charingola (“Respondent”), Switzerland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <proflowerrs.com>, registered with URL Solutions Inc.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 28, 2013; the National Arbitration Forum received payment on May 28, 2013.
On May 30, 2013, URL Solutions Inc. confirmed by e-mail to the National Arbitration Forum that the <proflowerrs.com> domain name is registered with URL Solutions Inc. and that Respondent is the current registrant of the name. URL Solutions Inc. has verified that Respondent is bound by the URL Solutions 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 May 30, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 19, 2013 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@proflowerrs.com. Also on May 30, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 June 24, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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" 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
Complainant makes the following contentions:
i. Complainant owns the PROFLOWERS mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,476,976 registered on August 14, 2001).
ii. Complainant has used the PROFLOWERS mark since 1998.
iii. Complainant uses the mark through its website <proflowers.com> to advertise and sell online gifts such as flowers and chocolates.
i. Policy ¶ 4(a)(i)
1. The disputed domain name, <proflowerrs.com>, is nearly identical and confusingly similar to the PROFLOWERS mark.
ii. Policy ¶ 4(a)(ii)
1. Respondent is not commonly known by the disputed domain name as revealed by the WHOIS information. Further, Complainant has not licensed or otherwise permitted Respondent to register domain names incorporating Complainant’s PROFLOWERS mark, nor is Respondent affiliated with Complainant in any way.
2. Respondent does not use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Respondent uses <proflowerrs.com> to feature generic links to third-party websites, many of which compete with Complainant’s business. Respondent likely profits from the associated pay-per-click fees.
iii. Policy ¶ 4(a)(iii)
1. Respondent’s bad faith is evidenced by a pattern of cybersquattering.
2. Respondent’s resolving website offers the same types of services that Complainant offers and therefore disrupts Complainant’s business.
3. Respondent uses the disputed domain name in connection with a click-through website to attract and confuse users for commercial gain.
4. Respondent had actual knowledge of Complainant’s right in the PROFLOWERS mark.
5. Respondent’s typosquatting behavior is evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that uses its website at <proflowers.com> to advertise and sell online gifts such as flowers and chocolates.
2. Complainant owns the PROFLOWERS mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,476,976 registered on August 14, 2001).
3. Respondent registered the <proflowerrs.com> domain name on October 4, 2007 and uses it to feature generic links to third-party websites, many of which compete with Complainant’s business.
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."
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.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant claims to own the PROFLOWERS mark through its trademark registration with the USPTO (Reg. No. 2,476,976 registered on August 14, 2001). The Panel finds that Complainant’s USPTO registration establishes its right in the PROFLOWERS mark under Policy ¶ 4(a)(i), despite the fact that Respondent resides outside of the United States. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s PROFLOWERS trademark.
Complainant contends the <proflowerrs.com> domain name is nearly identical and confusingly similar to the PROFLOWERS mark. Complainant asserts the disputed domain name consists of Complainant’s mark with the addition of one letter. Complainant further contends that the addition of the top-level domain name “.com” does not affect the disputed domain name for the purpose of determining whether it is identical or confusingly similar. The Panel finds that Respondent’s <proflowerrs.com> domain name is confusingly similar to Complainant’s PROFLOWERS mark under Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also 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 the purpose of determining whether it is identical or confusingly similar).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s PROFLOWERS trademark and to use it in its domain name, adding only a letter to the trademark, thus implying that the domain name is an official domain name of Complainant and that it will lead to an official website of Complainant;
(b) Respondent has then used it to resolve to a website which features generic links to third-party websites, many of which compete with Complainant’s business;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d)Complainant argues that Respondent is not commonly known by the <proflowerrs.com> domain name. Complainant contends the WHOIS information reveals Respondent is not commonly known by the disputed domain name. Further, Complainant asserts that it has not licensed or otherwise permitted Respondent to register a domain name incorporating Complainant’s PROFLOWERS mark. Complainant additionally notes that it is not affiliated with Respondent in any way. Therefore, the Panel finds that Respondent is not commonly known by the domain name in dispute pursuant to 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark);
(e) Complainant contends Respondent does not use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Complainant contends Respondent uses <proflowerrs.com> to feature generic links to third-party websites, many of which compete with Complainant’s business; Complainant presumes the Respondent profits from the pay-per-click fees provided through the resolving website. The Panel concludes that Respondent’s efforts to attract traffic to Respondent’s own site for commercial gain does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii), respectively. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends Respondent’s bad faith is evidenced by a pattern of cybersquattering. The Panel notes that Complainant cites previous UDRP decisions against Respondent in Complainant’s Exhibit N. See Mattel, Inc. v. Jardimar Holdings Corp / Ernesto Charingola, FA 1431562 (Nat. Arb. Forum April 10, 2012); see also The Standard Bank of South Africa Limited v. Jardimar Holdings Corp / Ernesto Charingola, FA 1463904 (Nat. Arb. Forum November 8, 2012). The Pane finds that the existence of previous UDRP decisions where Respondent was found to have registered a domain name in bad faith reveals Respondent’s pattern of cybersquatting behavior. The Panel construes Respondent’s pattern of such behavior as evidence that Respondent registered the disputed domain name in bad faith as well. Accordingly, the Panel finds that Respondent registered and used the <proflowerrs.com> domain name in bad faith pursuant to Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”).
Secondly, Complainant argues that Respondent’s use of the PROFLOWERS mark disrupts Complainant’s business. Complainant contends its business is disrupted because the resolving website features generic links to third-party websites, many of which are in direct competition with Complainant. The Panel notes that previous panels have required evidence that a respondent is actually competing with the complainant’s business in order to support a finding of bad faith disruption under Policy ¶ 4(b)(iii). The Panel additionally notes that some panels have interpreted the Policy ¶ 4(b)(iii) disruption provision broadly as the panel did in Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”), while other panels have interpreted the provision narrowly, as was the case in Tribeca Film Ctr., Inc. v. Brusasco-Mackenzie, D2000-1772 (WIPO Apr. 10, 2001) where the panel rejected the Mission KwaSizabantu approach and held that “a respondent can ‘disrupt the business of a competitor’ only if it offers goods or services that can compete with or rival the goods or services offered by the trademark owner.” As the Panel determines Respondent to be competing with and subsequently disrupting Complianant’s business, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Thirdly, Complainant additionally argues that Respondent’s use of the PROFLOWERS mark in connection with revenue-generating websites misleads consumers by creating confusion with Complainant for commercial gain. Complainant asserts that Respondent uses <proflowerrs.com> to feature generic links to third-party websites offering services and products similar to those offered by Complainant, from which Respondent may be gaining revenue. The Panel finds that Respondent’s use of the mark in such a way does constitute bad faith pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Fourthly, Complainant contends Respondent had actual knowledge of Complainant’s right in the PROFLOWERS mark. Complainant argues that Respondent’s actual knowledge is evidenced by the fact that the resolving website offers the same types of services offered by Complainant. The Panel finds that Respondent did have actual knowledge of Complainant’s rights in the mark upon registration of the <proflowerrs.com> domain name. As the Panel so finds, the Panel holds that Respondent registered the disputed domain name in bad faith according to Policy ¶ 4(a)(iii). See Radio & Records, Inc. v. Nat'l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant's rights in the mark, and therefore registered the disputed domain name in bad faith, since Complainant's magazine covers an industry towards which Respondent's services are marketed).
Fifthly, Complainant argues that Respondent’s use of the disputed domain name is a classic example of typosquatting. Complainant contends Respondent’s typosquatting behavior is evidence of bad faith. The Panel finds that Respondent is using the disputed domain name in bath faith pursuant to Policy ¶ 4(a)(iii) by merely adding a second “r” to what would otherwise form the Complainant’s <proflowers.com> domain name. See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form).
Sixthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the Complainant’s trademark and its subsequent use of the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <proflowerrs.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 27, 2013
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