Florists' Transworld Delivery, Inc. v. A
Day to Remember
Claim Number: FA0505000471892
Complainant is Florists' Transworld Delivery, Inc. (“Complainant”),
represented by Scott J. Major, of Millen, White, Zelano and Branigan, P.C.,
2200 Clarendon Boulevard, Suite 1400, Arlington, VA 22201. Respondent is A Day to Remember (“Respondent”), 3622 Jeanine Drive, Colorado Springs, CO 80917.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <orderftd.com>,
registered with Network Solutions, 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.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
4, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 5, 2005.
On
May 9, 2005, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <orderftd.com>
is registered with Network Solutions, Inc. and that Respondent is the current
registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
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
May 9, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 31, 2005 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@orderftd.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
June 6, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Judge Harold
Kalina (Ret.) 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 <orderftd.com> domain name is confusingly similar to
Complainant’s FTD mark.
2. Respondent does not have any rights or
legitimate interests in the <orderftd.com>
domain name.
3. Respondent registered and used the <orderftd.com> domain name in bad
faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Florists’ Transworld Delivery, was the world’s first flower-by-wire service.
Complainant’s service currently connects approximately 20,000 North American
retail florists. Complainant also
participates in an international floral delivery network of 54,000 affiliated
florists in over 150 countries.
Complainant has used the FTD mark in commerce since 1910 and has
expended considerable funds and made significant efforts on advertising and
promoting its FTD mark world-wide.
Complainant has
registered the FTD mark with the United States Patent and Trademark Office
(“USPTO”) (Reg. No. 844,748 issued February 20, 1968).
Respondent was a
member of Complainant’s network of retail florists until September 2004, when
its membership and all related licenses were terminated for failure to pay past
due accounts in excess of $114,234.84. Respondent registered the <orderftd.com> domain name while still a member of
Complainant’s network of florists, in violation of Complainant’s membership
rules,
Respondent
registered the <orderftd.com> domain
name on March 29, 2004. Respondent’s domain name resolves to a competing
website designed to take orders for floral arrangements and related items.
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.
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
established rights in the FTD mark through registration of the mark with the
USPTO. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept.
16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that
they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v.
Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions
have held that registration of a mark is prima
facie evidence of validity, which creates a rebuttable presumption that the
mark is inherently distinctive. The
respondent has the burden of refuting this assumption).
Respondent’s <orderftd.com> domain name is
confusingly similar to Complainant’s FTD mark.
Respondent’s <orderftd.com>
domain name incorporates Complainant’s FTD mark in its entirety and merely adds
the generic term “order.” Such a change
is not enough to overcome a finding of confusing similarity pursuant to Policy
¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of the complainant combined with a
generic word or term); see also Sony
Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that
“[n]either the addition of an ordinary descriptive
word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Tech. Props., Inc. v. Burris, FA 94424 (Nat. Arb. Forum
May 9, 2000) (finding that the domain name <radioshack.net> is identical
to Complainant’s RADIO SHACK mark).
Furthermore, the
addition of the generic top-level domain “.com” is insufficient to negate the
confusing similarity between Respondent’s domain name and Complainant’s mark
pursuant to Policy ¶ 4(a)(i). See Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) (“[T]he addition of the generic top-level
domain (gTLD) name ‘.com’ is . . . without legal significance since use of a
gTLD is required of domain name registrants.”); 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).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Thus, the Panel may accept all reasonable allegations and assertions set
forth by Complainant as true and accurate.
See Do the Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come
forward to [contest complainant’s allegations] is tantamount to admitting the
truth of complainant’s assertion in this regard.”); see also Vertical Solutions Mgmt., Inc. v. webnet-Mktg., 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).
Complainant has
asserted that Respondent has no rights or legitimate interests in the disputed
domain name, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may
interpret Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the <orderftd.com>
domain name pursuant to Policy ¶ 4(a)(ii).
See Parfums Christian Dior v. QTR
Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a
Response, Respondent has failed to invoke any circumstance which could
demonstrate any rights or legitimate interests in the domain name); see also 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.”).
Respondent is
using the confusingly similar domain name to operate a competing website that
features floral arrangements and related items. Such competitive use is 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). See
Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11,
2002) (finding that Respondent’s use of the disputed domain name to redirect
Internet users to a financial services website, which competed with Complainant,
was not a bona fide offering of goods or services); see also Avery
Dennison Corp. v. Steele,
FA 133626 (Nat. Arb. Forum Jan 10, 2003) (finding that Respondent had no rights
or legitimate interests in the disputed domain name where it used Complainant’s
mark, without authorization, to attract Internet users to its business, which
competed with Complainant).
Furthermore,
nothing in the record indicates that Respondent is either commonly known by the
disputed domain name or authorized to register domain names featuring
Complainant’s famous mark. Even though
Respondent was a member of Complainant’s network of retail florists, all
members are strictly prohibited from using any of Complainant’s marks,
including the FTD mark. Thus, the Panel
finds that Respondent has not established rights and legitimate interests in
the <orderftd.com> domain name
pursuant to Policy ¶ 4(c)(ii). See
Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating
“nothing in the respondent’s WHOIS information implies that the respondent is
‘commonly known by’ the disputed domain name” as one factor in determining that
Policy ¶ 4(c)(ii) does not apply); see
also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interests where the respondent was
not commonly known by the mark and never applied for a license or permission
from the complainant to use the trademarked name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has
registered and used the <orderftd.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by using the domain
name, which contains a confusingly similar version of Complainant’s FTD mark,
to market competing services, floral arrangements and related items. Such use constitutes disruption and is
evidence that Respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iii). See S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business); see
also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385
(Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from
Complainant's marks suggests that Respondent, Complainant’s competitor,
registered the names primarily for the purpose of disrupting Complainant's
business).
Since Respondent’s <orderftd.com>
domain name is confusingly similar to
Complainant’s FTD mark, consumers accessing Respondent’s domain name may
become confused as to Complainant’s affiliation with the resulting
website. Thus, the Panel finds that
Respondent’s commercial use of the disputed domain name constitutes bad faith registration
and use pursuant to Policy ¶
4(b)(iv). See Qwest Communications Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent's attempt to commercially benefit from the misleading
domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”); see also Drs.
Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the
respondent directed Internet users seeking the complainant’s site to its own
website for commercial gain).
Furthermore, Respondent registered the <orderftd.com> domain name with actual or constructive
knowledge of Complainant’s rights in the FTD mark due to Complainant’s
registration of the mark with the USPTO.
Respondent registered the <orderftd.com>
domain name while still a member of Complainant’s network of florists, in
violation of Complainant’s membership rules, therefore it is clear that
Respondent had actual notice of Complainant’s rights in the mark. Furthermore, the Panel infers that
Respondent registered the disputed domain name with actual knowledge of
Complainant’s rights in the mark due to the connection between the extent of
Respondent’s website and Complainant’s business. Registration of a domain name
featuring another’s mark despite actual or constructive knowledge of the mark
holder’s rights is evidence of bad faith registration and use pursuant to
Policy ¶ 4(a)(iii). See Samsonite
Corp. v. Colony Holding,
FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Exxon Mobil
Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that the
respondent had actual and constructive knowledge of the complainant’s EXXON
mark given the worldwide prominence of the mark); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct.
4, 2002) (“[T]he complainant’s OXICLEAN mark is listed on the Principal
Register of the USPTO, a status that confers constructive notice on those seeking
to register or use the mark or any confusingly similar variation thereof.”); see also Pfizer, Inc. v. Suger,
D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the
complainant’s mark and the content advertised on the respondent’s website was
obvious, the respondent “must have known about the complainant’s mark when it
registered the subject domain name”).
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 <orderftd.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
June 17, 2005
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