Florists' Transworld Delivery v. Linda Malek
Claim Number: FA0604000676433
PARTIES
Complainant is Florists' Transworld Delivery, Inc. (“Complainant”), represented by Scott J. Major, of Millen, White, Zelano & Branigan, P.C., 2200 Clarendon Boulevard, Suite 1400, Arlington, VA 22201. Respondent is Linda Malek (“Respondent”), 2865 Hickory Cove, Cuyahoga Falls, OH 44223.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ftdflowers4less.com>
(the “Domain Name”), registered with Go
Daddy Software, Inc.
PANEL
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.
Christopher Gibson as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 7, 2006; the National Arbitration Forum received a hard
copy of the Complaint on April 11, 2006.
On April 10, 2006, Go Daddy Software, Inc. confirmed by e-mail to the
National Arbitration Forum that the <ftdflowers4less.com>
Domain Name is registered with Go Daddy Software, Inc. and that the Respondent
is the current registrant of the name. Go
Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy
Software, 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”). Go Daddy Software, Inc. indicates that the
Domain Name has been placed on “registrar lock.”
On April 20, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of May 10, 2006 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@ftdflowers4less.com by e-mail.
A timely Response was received and determined to be complete on May 9,
2006.
On May 19, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Christopher Gibson as Panelist.
RELIEF SOUGHT
Complainant requests that the Domain Name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant has set out statements and supporting evidence to
demonstrate the strong reputation, goodwill and distinctiveness of its
well-known and famous FTD trademark (the “Mark”), and highlights that it has
actively enforced its trademark rights over the years, including by filing UDRP
cases involving other domain names.
Complainant contends that confusing similarity exists between Complainant's Mark and the Domain Name. In particular, Complainant states that the “addition of the generic wording ‘flowers 4 less” does not create a distinct mark,” but instead generates the likelihood of confusion. The presence of the generic wording “reinforces the connection, as the Domain Name conveys the message that web users may buy authorized FTD flowers at a discount here at this website.”
Complainant also contends that
Respondent has no right or legitimate interests in the Domain Name. Complainant emphasizes that in view of “the
uniqueness and renown of the FTD Mark, the only plausible explanation for
Respondents registration and use of the Domain Name is that it constitutes a
deliberate attempt to trade on Complainant’s reputation and fame,” and that
this does not qualify as a bona fide offering
of goods or services. Complainant also
points out that Respondent’s registration does not match Respondent’s name, nor
has there been non-commercial or fair use made of the Domain Name. Instead, Respondent is in the florist
business (as evidenced by the web pages submitted by the Complainant) and
Complainant asserts that Respondent is attempting to divert consumers to its
own site for commercial gain.
Last, Complainant claims that the Domain Name was registered in bad
faith, contending that the Domain Name – which is confusingly similar to the
FTD Mark – is being “used by the Respondent in a deliberate attempt to confuse
web users, for its own commercial gain, into believing mistakenly that the site
to which [the Domain Name] resolves derives from, or is sponsored or endorsed
by, the owner of the famous FTD Mark.”
B. Respondent
As noted above, Respondent has submitted a Response and denied the
allegations made by Complainant. Respondent first denies that the Domain Name
is confusingly similar to the FTD Mark, noting that Respondent has not cited
any references to actual confusion and thus the confusion is wholly
speculative. Respondent further states
that its web site did not advertise any FTD arrangements or goods, and that
only three (of friends or family members) sales were made through the web site
since its inception on June 20, 2005.
Respondent further contends that Complainant “has no exclusive right to
restrict the sale or advertising of [flowers.].” In sum, Respondent asserts that Complainant has failed “to state
how the mere presence of the FTD words [in the Domain Name], with nothing else,
causes confusion.”
Respondent also emphasizes that, although Complainant contends it has
actively enforced its rights in the FTD Mark, Respondent is “unaware of any
action Complainant has taken against any domain name registrar that offers many
domain names with FTD and flowers for sale to the public.”
Second, Respondent contends that before notice of the dispute, she used
the Domain Name in connection with the bona
fide offering of goods or services, namely, the sale of flowers. Respondent explains that, when she purchased
the Domain Name from Go Daddy, she targeted a domain name with “flowers4less”
in the name, but upon several unsuccessful attempts, Go Daddy suggested many
FTD-related names and Respondent chose the Domain Name. Respondent further claims that she “was
unaware of what FTD specifically referred to as Respondent was primarily
interested in a domain name with ‘flowers4less’ as a web address.” Respondent was “unaware of what ‘ftd’ stood
for.” Respondent notes that, without
making any admissions, she has voluntarily ceased using the disputed domain
name and is currently using <www.findflowers4less.com>. She also re-emphasizes that “Complainant has
no exclusive right to sell flowers over the Internet.”
Finally, Respondent claims that she is an unsophisticated web user who
“in no way attempted to confuse web users for her own commercial gain.” Respondent has “abandoned the [Domain Name]
before commencement of these proceedings, and it is now once again for sale by
Go Daddy. Respondent asks that the
Expert rule against Complainant on the issue of Respondent’s bad faith.
FINDINGS
Complainant was founded in 1910 and is in the business of providing floral arrangements, plants and various gift items, all with associated flower-by-wire services under Complainant’s well-known and famous FTD Mark. Complainant owns registrations in more than 50 countries covering the FTD Mark and associated logos. Complainant has provided extensive documentary evidence in support of its trademarks. Complainant also promotes and advertises its services using its marks on its website located at <www.ftd.com>, which has been in operation since 1995.
The Domain Name was
registered by Respondent on June 20, 2005.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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 its
well-known FTD Mark. Because
Complainant has registered the FTD Mark with the United States Patent and
Trademark Office (“USPTO”) (Reg. No. 821,318 issued December 27, 1966; Reg. No.
844,748 issued February 20, 1968; Reg. No. 1,231,300 issued March 15, 1983;
Reg. No. 1,576,429 issued January 9, 1990), the Complainant has demonstrated
rights in the Mark pursuant to Policy ¶ 4(a)(i). See Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark”). A mark
that has been registered on the Principal Register of the USPTO for more than
five years is considered inconstestible under U.S. trademark law.
Complainant has argued that the Domain Name <ftdflowers4less.com> is confusingly similar to its FTD Mark
because it contains the entire registered FTD Mark and merely adds the terms
and numerals “flowers”, “4” and “less.”
The Panel agrees. The Domain
Name incorporates Complainant’s mark in its entirety and adds generic terms
that can be read to describe Respondent’s business offering, which is in direct
competition with Complainant’s business.
Such additions to Complainant’s registered Mark are insufficient to
negate the confusingly similar aspects of the Domain Name pursuant to Policy ¶
4(a)(i). In particular, the Expert
notes the inherent potential for confusion because of the incorporation of
“FTD” in a Domain Name which is used in relation to a competing business offering
florist services. If “FTD” had been
incorporated into a domain name used for some other line of business – for
example, tennis equipment – the outcome might possibly be different. See Am.
Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that the respondent’s
domain name <go2AOL.com> was confusingly similar to the complainant’s AOL
mark); see also Space Imaging LLC v. Brownell, AF-0298
(eResolution Sept. 22, 2000) (finding confusing similarity where the
respondent’s domain name combines the complainant’s mark with a generic term
that has an obvious relationship to the complainant’s business).
The Panel finds 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.
Complainant alleges that Respondent
is not commonly known by the <ftdflowers4less.com> Domain
Name, because Respondent registered the Domain Name as “Linda Malek,” and there
is no other evidence in the record suggesting that Respondent is commonly known
by the Domain Name. Complainant also
asserts that it has not authorized or licensed Respondent to register or use a
domain name incorporating Complainant’s FTD Mark or any variation. The
Respondent does not appear to contest these allegations. Instead, as noted above, Respondent contends
that before notice of the dispute, she used the Domain Name in connection with
the bona fide offering of goods or
services, namely, the sale of flowers.
Respondent argument appears to be that her selection of the Domain Name
was completely innocent, and that she had targeted a domain name with “flowers4less”
in it, but upon several unsuccessful attempts, Go Daddy suggested many
FTD-related domain names. Respondent
complains that the Complainant has brought no action against domain name
registrars such as Go Daddy, who offer domain names incorporating third-party
trademarks. She also states that
Complainant has no exclusive right to sell flowers over the Internet, and that
she has voluntarily ceased using the Domain Name.
Respondent’s arguments fail to establish, in the face of Complainant’s
evidence and allegations, that she has any rights or legitimate interests in
the Domain Name. First, Respondent is not authorized or
licensed to use Complainant’s Mark.
Second, Respondent has provided no evidence to show that it is commonly
known by the Domain Name, or that it operates a business or offers a service
that is commonly known by the Domain Name.
Third, the Domain Name incorporates Complainant’s distinctive Mark in
its entirety and the Domain Name is used in connection with a business that
directly competes with Complainant’s business.
Under these circumstances, the use of the Domain Name prior to notice of
the dispute cannot be said to have given rise to any legitimate interest in the
Domain Name by Respondent. See America
Online, Inc. v. Xianfeng, D2000-1374 (WIPO Dec. 11, 2000) (“It would
be unconscionable to find a bona fide offering of services in a respondent’s
operation of [a] web-site using a domain name which is confusingly similar to
the complainant’s mark and for the same business”). Again, if the “FTD”
acronym had been used in a domain name by the Respondent in relation to a
completely different line of business, the outcome might possibly be
different.
In view of the Parties’ contentions, the Panel determines that
Respondent does not have any rights or legitimate interests in the Domain Name.
Complainant alleges
that Respondent has registered and is using the Domain Name in bad faith
pursuant to Policy ¶ 4(b)(iv), because Respondent is diverting Internet users
seeking Complainant’s floral arrangements and related products to a competing
website. Respondent, however, asserts
that she innocently selected and registered the Domain Name which is primarily made up of generic terms;
was not aware of FTD’s famous trademark; did not intend to misleadingly divert Internet users, including
Complainant’s customers, to its website; and has abandoned the disputed Domain
Name. See Lowestfare.com LLC v. US Tours & Travel, Inc., AF-0284
(eResolution Sept. 9, 2000) (finding no bad faith where the respondent was
using the descriptive domain name <thelowestfare.com> to lead consumers
to a source of lowest fares in good faith).
The problem in the instant case is that:
Complainant’s FTD
Mark is arbitrary, fanciful and unique. It also is famous and has been so
for decades. Moreover, it is the subject of numerous registrations in the
United States and around the world for floral products and services. Florists’
Transworld Delivery, Inc. v. Shibata Kenyu, FA 103573 (Nat. Arb. Forum Feb. 2002).
It thus strains credibility that Respondent – in the very same line of business as Complainant – would not be aware of Complainant and its famous FTD Mark and related services, at the time when Respondent selected and registered the Domain Name. The Panelist, however, need not decide the issue of actual knowledge. Although it may not be appropriate in every case, in this case where: (i) the Complainant relies on a famous and distinctive trademark (the FTD Mark); (ii) the trademark is incorporated in its entirety into the Domain Name whose other terms relate to business of the Complainant; (iii) the Respondent is in the same line of business as the Complainant; (iv) the Respondent has used the Domain Name to promote and sell goods and services that directly compete with the Complainant’s goods and services, and (v) the Complainant and Respondent are both located in the United States, the Panel finds that there should be “constructive notice” of the Complainant’s FTD Mark. See The Sportsman’s Guide, Inc. v. Modern Limited, Cayman Islands, D2003-0305 (WIPO June 18, 2003) ("constructive knowledge" exists in principle under United States trademark law and is valid, especially in the situation when the Complainant and the Registrant of the disputed domain name are located in the United States). Thus, while as indicated by Respondent, Complainant “has no exclusive right to sell flowers over the Internet,” Complainant it is entitled to protect its trademark rights on the Internet. Respondent should pursue its on-line florist business using a domain name that does not incorporate Complainant’s FTD Mark (the Respondent indicates that it has now chosen a new domain name to achieve this end).
Finally, Respondent has questioned why Complainant has not brought legal action against Go Daddy Software, Inc. as the registrar of domain names that may incorporate the FTD Mark. However, under the ICANN system, the burden is placed on the domain name registrant to determine whether the registration and use of a particular domain name will infringe upon the rights of a third-party. This policy favors the ease of registration and recognizes that any particular domain name may be used for very different reasons, but it does not excuse domain name registrants, particularly those in business, from exercising the same level of diligence that should be exercised in selecting a particular name or trademark for their business or for their goods or services. Ease of registration is not the same thing as ensuring the legal validity of a particular registration. The Go Daddy registration agreement (which is the contract that the Respondent entered into when registering the Domain Name) specifically states: “You also warrant that each registration You make is being done so in good faith and that You have no knowledge of it infringing upon or conflicting with the legal rights of a third party or a third party’s registration.”
Finally, Respondent has indicated that she has abandoned the Domain Name. The submission from Go Daddy Software Inc., which confirmed Respondent as registrant of the Domain Name, however, indicates that the Domain Name has been placed on “registrar lock.” Thus, the Domain Name is still registered to Respondent.
In view of all of the above circumstances, the Panel finds that the Domain Name was registered and being used in bad faith.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ftdflowers4less.com>
Domain Name be TRANSFERRED from Respondent to Complainant.
Christopher Gibson, Panelist
Dated: June 6, 2006
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