Interflora, Inc. v. Whois Privacy Protection Service, Inc.
Claim Number: FA0609000796384
Complainant is Interflora, Inc. (“Complainant”), represented by Scott
J. Major of Millen, White, Zelano & Branigan, P.C.,
2200 Clarendon Boulevard, Suite 1400, Arlington, VA, 22201. Respondent is Whois Privacy Protection Service, Inc.
(“Respondent”), PMB 368,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <inteflora.com>, registered with Go Daddy Software, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically September 15, 2006; the National Arbitration Forum received a hard copy of the Complaint September 18, 2006.
On September 18, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <inteflora.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 21, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 11, 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@inteflora.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 18, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <inteflora.com>, is confusingly similar to Complainant’s INTERFLORA mark.
2. Respondent has no rights to or legitimate interests in the <inteflora.com> domain name.
3. Respondent registered and used the <inteflora.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Interflora, Inc., provides international florist association services. Complainant holds a registration with the United States Patent Office (“USPTO”) for the INTERFLORA mark (Reg. No. 1,519,789 issued January 10, 1989). Complainant uses the INTERFLORA mark in connection with its business, owning and operating a computerized clearinghouse that manages deliveries of flowers, floral arrangements, fruits, and gifts ordered by customers. Customers place orders by phone, in person with affiliated florists and online.
Respondent registered the <inteflora.com> domain name January 31, 2005. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website. Respondent’s website is composed entirely of links to third-party websites. Many of the linked third-party websites offer goods and services in direct competition with Complainant, for example “Flowers and Gift Delivery,” “Online Flower Delivery” and “Flower and Gift.”
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 will draw such inferences as the Panel 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.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
The Panel finds that Complainant established rights in the
INTERFLORA mark through registration 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 [or] have
acquired secondary meaning.”); see also Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”).
The disputed domain name, <inteflora.com>, is confusingly similar to Complainant’s INTERFLORA mark. The disputed domain name differs from Complainant’s mark by only one letter, a deleted letter “r.” By altering one letter of Complainant’s mark, Respondent has created a domain name that mimics a common typing or spelling error, and this does not distinguish the disputed domain name from Complainant’s mark. Further, the addition of the generic top-level domain “.com” does not differentiate the disputed domain name from Complainant’s mark because generic top-level domains are required in all domain names.
Thus, the Panel finds that the <inteflora.com> domain
name is confusingly similar to Complainant’s INTERFLORA mark pursuant to Policy
¶ 4(a)(i). See
Guinness UDV N. Am., Inc. v. Dallas Internet Servs., D2001-1055 (WIPO Dec. 12, 2001) (finding the
<smirnof.com> domain name confusingly similar to the complainant’s
SMIRNOFF mark because merely removing the letter “f” from the mark was
insignificant); see also Victoria’s Secret v. Zuccarini,
FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words
and adding letters to words, a respondent does not create a distinct mark but
nevertheless renders the domain name confusingly similar to the complainant’s
marks); 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 Complainant satisfied Policy ¶ 4(a)(i).
Complainant established with extrinsic evidence in this
proceeding that it has rights to and legitimate interests in the domain name
that contains in its entirety Complainant’s protected mark. Complainant asserts that Respondent lacks
such rights to or legitimate interests in the <inteflora.com>
domain name. Complainant’s assertion
constitutes a prima facie case for purposes of the Policy, and shifts
the burden to Respondent to demonstrate that it does have rights or legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Respondent is
provided with the opportunity to submit a Response in order to provide the
Panel with evidence of arguments that demonstrate Respondent’s rights or
legitimate interests in the disputed domain name. Respondent’s failure to provide a Response
suggests to the Panel that Respondent does not have rights or legitimate
interests in the disputed domain name. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(“Because Complainant’s Submission constitutes a prima facie case under
the Policy, the burden effectively shifts to Respondent. Respondent’s failure
to respond means that Respondent has not presented any circumstances that would
promote its rights or legitimate interests in the subject domain name under
Policy ¶ 4(a)(ii).”); 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.”).
Nonetheless, the Panel examines available evidence to determine whether Respondent has rights or legitimate interests as contemplated by Policy ¶ 4(c).
Respondent is using the <inteflora.com> domain
names to redirect Internet users to Respondent’s websites featuring links to
third-party websites. Many of the links
to third-party websites are to websites offering floral and gift services in
direct competition with Complainant.
Presumably, Respondent receives pay-per-click referral fees from the
links and advertisements on its websites.
The Panel finds that such use is not a bona fide offering of
goods or services as contemplated by Policy ¶ 4(c)(i)
and it is not a legitimate noncommercial or fair use as contemplated by Policy
¶ 4(c)(iii). See TM
Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec.
31, 2002) (finding that the respondent’s diversionary use of the complainant’s
marks to send Internet users to a website which displayed a series of links,
some of which linked to the complainant’s competitors, was not a bona fide
offering of goods or services); see also Wells
Fargo & Co. v. Lin Shun Shing, FA
205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to
direct Internet traffic to a website featuring pop-up advertisements and links
to various third-party websites is neither a bona fide offering of goods
or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant
presumably receives compensation for each misdirected Internet user).
No available evidence suggests that Respondent is commonly known by the disputed domain name and Respondent’s WHOIS information is shielded by, “Whois Privacy Protection Service, Inc..” It is thus impossible to know Respondent’s true identity. No evidence suggests that Respondent is commonly known by the <inteflora.com> domain name. In addition, Complainant asserts that Respondent is not affiliated with Complainant in any way and does not have permission from Complainant to use Complainant’s mark in a domain name.
For all of these reasons, the Panel finds that Respondent is
not commonly known by the disputed domain name and lacks rights or legitimate
interests pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee
Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that 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 interest 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 Complainant satisfied Policy ¶ 4(a)(ii).
Respondent is using the <inteflora.com> domain name to attract Internet users to its websites, which feature links to commercial third-party websites offering floral and gift services in direct competition with Complainant. Internet users seeking Complainant’s services may find themselves redirected to Respondent’s website when their intent was to visit Complainant’s website. Redirected Internet users then may follow the links on Respondent’s website to websites in competition with Complainant and may do business with those competitors instead of with Complainant, thus disrupting Complainant’s business. The Panel finds that such use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent’s <inteflora.com> domain name is
confusingly similar to Complainant’s INTERFLORA mark. Internet users seeking Complainant’s genuine
website may accidentally find themselves redirected instead to Respondent’s
website through their Internet search engine or web browser. Once redirected to Respondent’s website,
Internet users may mistakenly believe that Respondent’s website is somehow
affiliated with Complainant. Respondent
is profiting from this confusion by presumably receiving pay-per-click referral
fees from the links to third-party websites featured on its website. The Panel finds that such use is evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website
is <century21.com>, many Internet users are likely to use search engines
to find Complainant’s website, only to be mislead to Respondent’s website at
the <century21realty.biz> domain name, which features links for competing
real estate websites. Therefore, it is
likely that Internet users seeking Complainant’s website, but who end up at
Respondent’s website, will be confused as to the source, sponsorship,
affiliation or endorsement of Respondent’s website.”); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <inteflora.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 1, 2006.
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