Provide Commerce, Inc. v.
Flower Dealers International LLC c/o Miguel Saavedra
Claim Number: FA0610000828994
PARTIES
Complainant is Provide Commerce, Inc. (“Complainant”), represented by Lisa
M. Martens, of Fish & Richardson P.C., 12390 El
Camino Real,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <flowerfarmstogo.com>, registered
with Register.com,
Inc.
PANEL
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.
James Bridgeman as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 27, 2006; the
National Arbitration Forum received a hard copy of the Complaint on October 30, 2006.
On October 30, 2006, Register.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <flowerfarmstogo.com> domain name is
registered with Register.com, Inc. and
that the Respondent is the current registrant of the name. Register.com,
Inc. has verified that Respondent is bound by the Register.com, 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 November 7, 2006, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of November 27, 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@flowerfarmstogo.com by
e-mail.
A timely Response was received and determined to be complete on November 27, 2006.
An Additional
Written Statement was timely filed by Complainant on December 1, 2006.
On December 2, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed James Bridgeman as Panelist.
An Additional
Written Statement was filed by Respondent on December 5, 2006.
The Panel considered all submissions including
the Additional Written Statements filed by both Parties.
RELIEF SOUGHT
Complainant requests that the domain name <flowerfarmstogo.com>
be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is the owner of U.S. Federal
Trademark Registration No. 2,294,197 FLOWERFARM in international class 31 for
“cut flowers.” The application was made
by Flower Farm Direct Corporation
The application for registration of said
trademark was filed on June 4, 1998, it was published
for opposition on August 31, 1999 and registered on November 23, 1999. Complainant claims to have continuously used
that trademark in commerce since at least as early as March 3, 1999 in
connection with “cut flowers.”
Complainant also claims to be the owner of the
domain name <flowerfarm.com> and claims to have used that domain name
since 1998 as the address of an Internet site on which freshly cut flowers are
sold.
Complainant submits that it has developed
goodwill and reputation in the use of its FLOWERFARM registered trademark both
within the floral industry and among the consuming public at large.
Complainant submits that the domain name <flowerfarmstogo.com> is identical and/or
confusingly similar to its said registered trademark. The addition of the letter “s” to make the
plural of the element comprising the word “farm” and the addition of the
descriptive words “to go” is not sufficient to prevent confusion. Complainant submits that anyone viewing the
<flowerfarmstogo.com> domain
name would find it identical and/or confusingly similar to Complainant’s mark
and would be likely to be misled into believing that the website established at
that address was somehow connected with Complainant’s registered
trademark. The distinctive elements of
both the domain name in dispute and the mark are identical and/or confusingly
similar.
Complainant further submits that Respondent has
no rights or legitimate interests in the domain name <flowerfarmstogo.com> because
(i)
Respondent has neither used nor made any demonstrable
preparations to use the domain name or any corresponding name in connection
with a bona fide offering of goods or
services. Instead it has used this
confusingly similar domain name to offer goods and services that compete
directly with Complainant’s business;
(ii)
Respondent is not identified by the name FLOWERFARM or
FLOWERFARMSTOGO and there is nothing in the record to indicate otherwise.
Respondent is known as Flower Dealers International LLC and the domain name in
dispute is registered in that name;
(iii)
Respondent is not making any legitimate non-commercial
or fair use of the domain name in dispute.
Respondent’s use is clearly commercial.
Complainant submits that Respondent registered
and is using the domain name <flowerfarmstogo.com> in bad
faith.
The domain name <flowerfarmstogo.com>
was registered on June 28, 2001 long after Complainant had adopted,
used, and secured registration of its FLOWERFARM registered trademark on
November 23, 1999. Respondent registered
the said domain name with actual or constructive knowledge of Complainant’s
rights in said registered trademark.
Respondent has consistently used the domain
name in dispute to attract customers to its website, where it offers and sells
flowers in direct competition with Complainant.
Such use of the domain name by Respondent clearly demonstrates an
intentional attempt to attract for commercial gain, Internet users to its
website by creating a likelihood of confusion with Complainant’s mark as to the
source, affiliation or endorsement of Respondent’s website.
Registration and use of a domain name that is
confusingly similar to the trademark of another to operate a website that
provides a market for goods and services in competition with the trademark
owner is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).
B. Respondent
Respondent is an established company, with
offices in
Addressing the similarity of the domain name
and Complainant’s mark, Respondent argues that the domain name <flowerfarmstogo.com>
is not identical or confusingly similar to Complainant’s trademark, FLOWERFARM
and although the domain name incorporates Complainant’s mark, there are
numerous, material differences that distinguish the domain name from
Complainant’s mark.
In particular Respondent argues that there are two significant
differences between the domain name and Complainant’s mark viz. the addition of an “s” at the end of the word “flowerfarm”,
and the addition of the words “to go” following the “s.” Although Complainant blithely states that the
domain name is “plainly identical and/or confusingly similar” to Respondent’s
mark, no National Arbitration Forum case has ever addressed whether the
addition of both the “s” and the “to go” suffixes would be sufficient to avoid
confusion between dispute and Complainant’s trademark.
Addressing its claim to have rights and legitimate interests in the
domain name, Respondent submits that it has used the domain name <flowerfarmstogo.com>
for five years and has conducted its business using the domain name without
complaint from Complainant until very recently.
Over those years Respondent has built a successful business using the
domain name. Respondent submits that
Complainant now unabashedly seeks to usurp the goodwill, tremendous customer
base and significant business interests that Respondent has established using
the domain name. To transfer the domain
name to Complainant as requested would be unjustified and unfair and would
provide Complainant with a windfall that it neither earned nor deserves. Respondent argues that it is extremely
unlikely that anyone would ever accidentally type the plural form of
Complainant’s mark, and then compound that accident by adding the words “to go”
to the end of the name.
Respondent submits that prior to any notice
to the Respondent of the instant dispute, Respondent
used the domain name <flowerfarmstogo.com> in connection
with a bona fide offering of goods
and services.
It was not until October 2005—more than four years after Respondent
began using the domain name—that Complainant, for the first time, raised the
issue of transferring the domain name to Complainant.
Notably, the facts that (i) Complainant waited more than four years to
contact Respondent about the domain name, and (ii) waited five years to
institute any sort of action relating to the domain name, are missing from the
Complaint in this matter. Complainant’s
obvious attempt to hide these facts from the Panel speaks volumes about the
legitimacy (or lack thereof) of Complainant’s claim that Respondent has no
rights in the domain name. In sum,
Respondent has been offering services and goods to the public since 2001 using
the domain name, and has rights in the domain name superior to those of any
other person or entity, including Complainant.
Respondent has been, and continues to be, commonly known by the domain name. Respondent is not generally known by its corporate name; but instead, it is almost exclusively known by the domain name <flowerfarmstogo.com>. Respondent uses the domain name in all of its advertising, website promotion, and packaging.
Respondent denies that the
domain name was registered and used in bad faith. Complainant and
Respondent have peacefully co-existed online for half a decade, without any
protest or objection from Complainant whatsoever. It is logical to assume that if Respondent’s
registration and use of the domain name prevented Complainant from using its
own trademarks, Complainant would have taken less than four years to raise such
objection. Indeed, if Complainant
brought this argument in a federal court in the United States, its claim would
be thrown out of court as falling outside of the Lanham Act’s statute of
limitations, which is generally regarded as being no longer than four years.
This leads to the
inescapable conclusion that Complainant never perceived Respondent’s use of the
domain name as a threat to Complainant’s business or to Complainant’s use of
its own trademarks. In fact, Respondent
is unaware of any occasion in which customers were confused between Respondent
and Complainant’s companies. Notably,
Complainant has failed to provide this Panel with any evidence that a single
event of confusion has ever occurred, or is likely to occur.
Respondent has not
registered the domain name for the purpose of disrupting Complainant’s
business. Its President has been using
the mark “FARMS TO GO” for over a decade.
Furthermore, Complainant has been sued in the past for claiming that it
offers the same services provided by Respondent (i.e., shipping flowers
directly from a flower farm and delivering them directly to customers). Respondent
refers to a complaint, filed in the Northern District
of Illinois against Complainant by Florists’ Transworld Delivery, Inc. (a/k/a
“FTD”) dated August 2005. In that
complaint, the famous flower distribution company FTD sued Complainant alleging
that Complainant was misleading consumers by claiming that Complainant obtained
flowers from a flower farm and delivered them directly to consumers.
According to
official court records, the case was settled out of court and as a result of
the lawsuit by FTD, Complainant apparently stopped
promoting itself as providing the same service as that provided by Respondent.
It is
inconceivable how Complainant could seriously allege that Respondent was trying
to disrupt its business, as the two companies operate in two different areas of
the flower industry. Complainant sells
pre-packaged floral bouquets that are decorative and ready for use “out of the
box.” Respondent, on the other hand,
sells flowers cut fresh from the farm, delivered in bulk, which are not
generally ready for display right out of the box.
Respondent
has never tried to attract Internet users to its website by creating a
likelihood of confusion with Complainant’s website. There has not been a single
incident in which a customer was confused by Respondent’s use of the Domain
Name. Moreover, Complainant has failed
to provide this arbitration panel with any evidence that such confusion has
ever occurred.
C. Additional Submissions of Complainant
The most pertinent element of Complainant’s
Additional Written Statement addressed the question of whether Respondent had
acquired rights or legitimate interest in the domain name through the delay by
Complainant in bringing these proceedings.
Complainant submits that the fact that it did not complain for four
years after the registration of the domain name in June 2001 and long after its
first use by Respondent is irrelevant.
Complainant submits that there is no
application of a defense of laches
in the Policy and cites numerous cases in that regard: Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13,
2006); citing F.W. Scripps Co. v.
Sinologic Indus.,
D2003-0447 (WIPO July 1, 2003); Hebrew
Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct 7, 2002); Those Characters From Cleveland Inc. v.
User51235 (38so92lf@whois-privacy.net), D2006-0950 (WIPO Oct. 10, 2006).
Even if the delay period was
applicable the delay would only run from the time a complainant first learns of
infringing conduct. In casu, Complainant sent a cease and desist letter promptly after
learning of Respondent’s registration and use of the domain name. The Parties negotiated for more than a year
before it became apparent to Complainant that no amicable resolution could be
reached. Time spent negotiating
settlement does not count either as delay for the purposes of a defense of laches.
D. Additional Submissions of Respondent
The main points in Respondent’s Additional Written Statement are that there has not been a single instance of confusion in five years, and while prior cases may hold that the addition of a word or letter does not distinguish otherwise confusingly similar names, here we have the addition of multiple letters and words which, apparently, have been more than sufficient to distinguish the domain name in dispute and Complainant’s mark.
Respondent restates that the companies have entirely different customer bases.
Respondent has presented sworn
testimony, supported by corporate documents on file with the State of
The descriptiveness of the domain name identically matches what Respondent does, which is strong evidence (if not conclusive evidence) that Respondent did not register the domain name to feed off of Complainant’s trademark.
Respondent has shown undisputed proof that it (i) has invested tens of thousands of dollars to promote the domain name, (ii) uses the domain name in its business, (iii) is known by its domain name, and (iv) has accumulated thousands of customers through its use of the domain name in furtherance of its legitimate flower business over the past five years. All of these facts are supported by sworn affidavit, corporate records, and state and federal records. It is unfathomable to imagine how anyone could argue that Respondent has no legitimate interests in the domain name.
FINDINGS
Complainant has established that it is the
registered owner of United
States Registered Trademark FLOWERFARM No. 2,294,197 issued November 23, 1999.
The Panel finds that the domain name in
dispute is confusingly similar to the registered trademark FLOWERFARM in which
Complainant has rights.
There is no basis within the Policy on which
the Panel can either make a finding that a party has acquired rights in the use
of a domain name that is confusingly similar to a complainant’s registered
trademark due to delay or acquiescence on the part of the registered owner of
the mark or allow a defense of laches.
The jurisdiction of a panelist is very limited and restricted to making
findings within the Policy.
Complainant has made out a prima facie case that Respondent has no
rights or legitimate interests in said domain name and Respondent has failed to
discharge the burden of proof and establish that it has secured such rights.
Respondent had constructive knowledge of
Complainants trademark and on the balance of probabilities had actual knowledge
of Complainant’s domain name <flowerfarm.com> when it registered and
started use of the domain name in dispute.
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.”
Policy ¶ 4 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 is the registered owner of the
United States Registered Trademark FLOWERFARM No. 2,294,197 registered on
November 23, 1999 and consequently Complainant has established rights in the
FLOWERFARM mark through this registration under 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.”).
Complainant
contends that the <flowerfarmstogo.com> domain name is confusingly similar to
Complainant’s FLOWERFARM mark under Policy ¶ 4(a)(i). The disputed domain name is comprised of
Complainant’s mark in its entirety with the addition of the letter “s,” making
the plural form of the mark, and the addition of the common terms “to” and
“go.”
The domain name in dispute is clearly confusingly similar to Complainant’s trademark. This Panel accepts Complainant’s submission that these additions do not negate the confusing similarity between Complainant’s FLOWERFARM mark and Respondent’s <flowerfarmstogo.com> domain name. See Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to the complainant’s NATIONAL GEOGRAPHIC mark); see also Napster Inc. v. Mededovic, D2005-1263 (WIPO Jan. 17, 2006) (finding the <napstertogo.com> domain name confusingly similar to the NAPSTER mark).
Complainant has therefore established the
first element of the test in Policy ¶ 4(a).
Respondent claims that notwithstanding the
fact that Complainant is the owner of the FLOWERFARM registered trademark,
Respondent has acquired rights and legitimate interests in the domain name in
dispute by its unchallenged use of the domain name over a period of
four years after the registration of the domain name in June 2001.
Complainant submits that the four-year delay
by Complainant in raising any objection to the use of the domain name by
Respondent is irrelevant. The Panel
cannot accept such a broad statement. A
long delay in bringing proceedings must be a factor to be considered by a panel
and depending on the circumstances of any given case it will have varying relevance.
That being said there is a strong line of
decisions by panelists in cases brought under the Policy that there is no room
for a stand-alone defense of laches
in the Policy. Complainant has cited a number of such cases (supra).
In this regard a three-member panel in Yell Limited v. Ultimate Search, D2005-0091
(WIPO April 6, 2005) rejected a defense of laches in the Policy in the following terms:
“The Respondent raised the equitable defence of laches, and we will address that submission first. The argument is based on the Complainant’s alleged lengthy delay in challenging the <yel.com> domain name, which was registered over six years ago.
In the Panel’s view, while unreasonable
delays in bringing a case may constitute a factor in a panel’s determination,
there is no room in the Policy for the stand-alone application of a defence
such as laches. The Panel is concerned
only with the application of the three paragraphs of the Policy.
In that respect, the Panel respectfully
agrees with the decision of the three-member Panel in Edmunds.com, Inc. v. Ult.Search Inc, WIPO Case D2001-1319, where
the Panel said:
‘Although
the concept of “rights” under the second criterion in the Policy may include
some kind of equitable right conferred on a Respondent by a Complainant, there
is no room for general equitable doctrines under the Policy such as would be
possessed by Courts in common law jurisdictions. These doctrines, if applicable, could,
include for example, laches (which would operate against a Complainant tardy in
asserting its rights after it had known of an offending domain name) or
“unclean hands” by a Complainant.’”
This reasoning was also more recently accepted
by the learned panel in Givi Srl and G. Visenzi
Motomarket Srl v. Anup Shahi, D2005-0392 (WIPO
July 11, 2005).
While taken on their face, the
arguments of Respondent evoke the Panel’s sympathy, particularly given the fact
that there was substantial expenditure by Respondent on promoting its website,
and while there may be a relief available in another forum, this Panel cannot find in favour of Respondent on its delay
point.
Once Complainant makes out a prima facie
case in support of its allegations, the burden shifts to Respondent to
establish that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that,
where the complainant has asserted that the respondent has no rights or
legitimate interests with respect to the domain name, it is incumbent on the
respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); see also Clerical
Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28,
2000) (finding that, under certain circumstances, the mere assertion by the
complainant that the respondent has no right or legitimate interest is
sufficient to shift the burden of proof to the respondent to demonstrate that
such a right or legitimate interest does exist).
It follows that Complainant has made out a prima facie case that Respondent has no
rights or legitimate interest in said domain name.
Respondent has failed to discharge the burden
of proof and establish that it has secured any such rights. In the circumstances of this case, the Panel
cannot accept Respondent’s submission that prior to any notice to the
Respondent of the instant dispute, Respondent has used the domain name in
connection with a bona fide offering
of goods and services. The Panel is of the view that the use of the domain name
is not bona fide because of the
similarity of the domain name and Complainant’s registered trademark and
Complainant’s statutory rights.
In
casu, therefore Complainant
has made out a prima facie case that
Respondent has no rights or legitimate interest in said domain name and
Respondent has failed to discharge the burden of proof and establish that it
has secured such rights.
Complainant has therefore established the
second element of the test in Policy ¶ 4(a).
While there is an argument that Complainant’s
trademark is not the most distinctive of trademarks, nonetheless, while
Respondent may not have had actual knowledge of Complainant’s trademark
registration when it registered the disputed domain name, on the balance of
probabilities it had actual knowledge of Complainant’s business.
According to the results of a WHOIS search carried out by this Panel the domain name <flowerfarm.com> was created on May 16, 1996 and is registered to Proflowers at the same address as Complainant.
Respondent clearly chose a domain name that was confusingly similar to a domain name that had been registered and was being used in commerce by Complainant in the flower industry, and whatever about actual knowledge of Complainant’s registered trademark, it is most probable that Respondent became aware of Complainant’s domain name registration when the domain name in dispute was being registered.
It follows that Respondent registered the domain
name in dispute for the purpose of commercially benefiting from the good will
associated with Complainant’s mark.
Respondent’s <flowerfarmstogo.com>
domain name is capable of creating a likelihood of confusion as to the source
and affiliation of Complainant to the disputed domain name and corresponding
website and this is indicative of bad faith registration and use under Policy ¶
4(b)(iv).
This Panel is satisfied on the balance of probabilities that Respondent
knowingly registered the domain name in bad faith conscious that it would be
confusingly similar to Complainants trademark and domain name
<flowerfarm.com> and has since continued to use the domain name in
dispute in bad faith to attract customers to its website, where it offers
and sells flowers.
While the Panel is conscious that Respondent
has emphasised that there is a difference in the type of business carried out
by the respective parties in that Complainant sells ready packaged bouquets
while Respondent sells bulk flowers, the registration and use of the domain
name by Respondent in the circumstances outlined, on the balance of
probabilities, demonstrates an intentional attempt to attract for commercial
gain, Internet users to its website by creating a likelihood of confusion with
Complainant’s mark as to the source, affiliation or endorsement of Respondent’s
website.
Complainant has therefore satisfied all three
elements of the test in paragraph 4(a).
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 <flowerfarmstogo.com> domain name be TRANSFERRED
from Respondent to Complainant.
James Bridgeman Panelist
Dated: 18 December 2006
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