Buy Easy Ltd. v. TTY c/o Sunny Adal
Claim Number: FA0610000823263
Complainant is Buy Easy Ltd. (“Complainant”), 400 Talbot Road East, Leamington, ON, N8H 3V 6. Respondent is TTY c/o Sunny Adal (“Respondent”), 1 Jala Kedai, Singapore, II, 15345, SG.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <growerflower.com>, registered with Enom, 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 October 19, 2006; the National Arbitration Forum received a hard copy of the Complaint October 20, 2006.
On October 19, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <growerflower.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. verified that Respondent is bound by the Enom, 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 October 26, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 15, 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@growerflower.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 17, 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, <growerflower.com>, is confusingly similar to Complainant’s GROWERFLOWERS.COM mark.
2. Respondent has no rights to or legitimate interests in the <growerflower.com> domain name.
3. Respondent registered and used the <growerflower.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Buy Easy Ltd., specializes in providing fresh floral arrangements to customers via a website at the <growerflowers.com> domain name. Complainant has been in business since 2000 and registered the GROWERFLOWERS.COM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,695,059 issued March 11, 2003, filed December 10, 2001).
Respondent registered the <growerflower.com> domain name September 7, 2001.
According to Complainant, Respondent registered the disputed domain name right before becoming a member of Complainant’s affiliate program. Respondent then used the disputed domain name to forward Internet users to another floral arrangement website that directly competes with Complainant. Complainant contacted Respondent and offered to enter into a trademark licensing agreement with Respondent, but Respondent did not respond to Complainant’s inquiry. The disputed domain name now resolves to a cancer website.
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.
Complainant has been in business since 2000 and applied for
a registration for the GROWERFLOWERS.COM mark December 10, 2001. The USPTO registered the mark March 11,
2003. Respondent registered the disputed
domain name September 7, 2001, three months before Complainant filed for its
trademark registration. The Panel holds
that ownership of a valid trademark registration is not necessary for
Complainant to demonstrate rights in the mark under Policy ¶ 4(a)(i), if
Complainant can establish common law rights in the mark. See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum
May 18, 2001) (“The Policy does not require that a trademark be registered by a
governmental authority for such rights to exist.”); see also SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the
complainant's trademark or service mark be registered by a government authority
or agency for such rights to exist).
Complainant submitted
evidence showing that it has been continuously using the GROWERFLOWERS.COM mark
since 2000 in connection with its online floral arrangement business. For purposes of satisfying Policy ¶ 4(a)(i),
the Panel finds that the mark acquired secondary meaning in association with
Complainant’s business and as a result, Complainant established common law
rights in the GROWERFLOWERS.COM mark. See
Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb.
Forum June 23, 2006) (holding that complainant’s VILLAGE AT SANDHILL mark
acquired secondary meaning among local consumers sufficient to establish common
law rights where the complainant had been continuously and extensively
promoting a real estate development under the mark for several years); see
also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum
Mar. 13, 2003) (holding that the complainant established rights in the
descriptive RESTORATION GLASS mark through proof of secondary meaning
associated with the mark).
Further, the domain name that Respondent registered, <growerflower.com>,
differs from Complainant’s GROWERFLOWERS.COM mark by one letter, the deletion
of the “s” at the end of flowers. In CEC
Entm’t, Inc. v. Peppler, FA 104208 (Nat. Arb. Forum Mar. 21, 2002), the panel
found that the <chuckcheese.com> domain name was confusingly similar to
the complainant’s CHUCK E. CHEESE mark because the domain name only differed
from the mark by one letter. Here,
Respondent failed to sufficiently distinguish its <growerflower.com>
domain name from Complainant’s GROWERFLOWERS.COM mark by merely deleting on
letter. Accordingly, the Panel holds
that the contested domain name is confusingly similar to Complainant’s mark
pursuant to Policy ¶ 4(a)(i). See
Intelius, Inc. v. Kim Sang Hyn, FA 703175 (Nat. Arb. Forum July 5, 2006)
(finding the <intellus.com> domain name to be confusingly similar to the
complainant’s INTELIUS mark because the domain name differed from the mark by
one letter and was visually similar).
The Panel concludes that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established by extrinsic evidence in this
proceeding that it has common law rights to and legal rights by registration to
the mark contained in its entirety within the disputed domain name. Complainant also set out facts to show that
Respondent does not have rights to or legitimate interests in the disputed
domain name. Complainant has the
initial burden of proof in establishing that Respondent has no rights or legitimate
interests in the domain name. Once
Complainant makes a prima facie case in support of its allegations, the
burden then shifts to Respondent to show it does have rights or legitimate
interests pursuant to Policy ¶ 4(a)(ii).
See Document Tech., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270
(WIPO Jun. 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the
Complainant prove the presence of this element (along with the other two), once
a Complainant makes out a prima facie showing, the burden of production
on this factor shifts to the Respondent to rebut the showing by providing
concrete evidence that it has rights to or legitimate interests in the Domain
Name.”); see also 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 Policy
¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have
rights or legitimate interests in a domain name).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <growerflower.com>
domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9,
2000) (finding that by not submitting a response, the respondent has failed to
invoke any circumstance which could demonstrate any rights or legitimate
interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that the respondents’ failure to respond can be
construed as an admission that they have no legitimate interest in the domain
names). However,
the Panel examines the record to determine if Respondent has rights or
legitimate interests under Policy ¶ 4(c).
Because the WHOIS information lists the domain name
registrant as “TTY c/o Sunny Adal,” and no other evidence in the record
suggests that Respondent is commonly known by the disputed domain name, the
Panel finds that Respondent has not established rights or legitimate interests
in the disputed domain name under Policy ¶ 4(c)(ii). See Great S. Wood Preserving, Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000)
(finding that the respondent was not commonly known by the domain name
<greatsouthernwood.com> where the respondent linked the domain name to
<bestoftheweb.com>); see also M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding
that the respondent was not commonly known by the <cigaraficionada.com>
domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other
evidence in the record).
Respondent has used the disputed domain name in the past to
redirect Internet users to floral arrangement websites that compete with
Complainant. Respondent is now
redirecting Internet users to a cancer website. The Panel does not find that either of these two uses constitute
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 Wal-Mart Stores, Inc. v. Power of
Choice Holding Co., FA 621292 (Nat.
Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names
confusingly similar to complainant WAL-MART’s mark to divert Internet users
seeking the complainant’s goods and services to websites competing with the
complainant did 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 also Seiko Kabushiki
Kaisha v. CS into Tech, FA 198795 (Nat.
Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products
relating to the famous SEIKO mark, to a website unrelated to the mark is not a
bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it
represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel concludes that Complainant satisfied Policy ¶ 4(a)(ii).
Furthermore, by registering the <growerflower.com> domain name before joining Complainant’s affiliate program, Respondent attempted opportunistically to seize benefit from registering and using the disputed domain name containing Complainant’s protected mark. The Panel finds Respondent’s registration and use of the disputed domain name constitutes bad faith under Policy ¶ 4(a)(iii). See Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding the respondent registered and used the <deluxeform.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) by redirecting its users to the complainant’s <deluxeforms.com> domain name, thus receiving a commission from the complainant through its affiliate program); see also Hotwire, Inc. v. Cierra Burke, FA 741895 (Nat. Arb. Forum Aug. 15, 2006) (concluding that the respondent’s use of the <hotwiew.com> domain name, when combined with its participation in the complainant’s affiliate program under the HOTWIRE mark, demonstrated bad faith registration and use).
Respondent’s use of the <growerflower.com>
domain name to redirect Internet users to Complainant’s competitors in the
floral arrangement industry demonstrates bad faith registration and use under
Policy ¶ 4(b)(iii); Respondent demonstrated the intent to disrupt Complainant’s
business. See EBAY, Inc. v. MEOdesigns, D2000-1368
(WIPO Dec. 15, 2000) (finding that the respondent registered and used the
domain name <eebay.com> in bad faith where the respondent used the domain
name to promote competing auction sites); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000)
(finding the respondent diverted business from complainant to a competitor’s
website in violation of Policy ¶ 4(b)(iii)).
The Panel concludes 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 <growerflower.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 1, 2006.
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