Provide Commerce, Inc. v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1311001529487
Complainant is Provide Commerce, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <oproflowers.com> and <proflowerts.com>, registered with Internet.bs Corp.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 12, 2013; the National Arbitration Forum received payment on November 12, 2013.
On November 15, 2013, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <oproflowers.com> and <proflowerts.com> domain names are registered with Internet.bs Corp. and that Respondent is the current registrant of the names. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 21, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 11, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@oproflowers.com, postmaster@proflowerts.com. Also on November 21, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 17, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 names be transferred from Respondent to Complainant.
i. Respondent has not been commonly known by the disputed domain names.
ii. Respondent is using the disputed domain names to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, many of which directly compete with Complainant’s business.
i. Respondent is a recalcitrant, serial cybersquatter.
ii. Respondent’s advertised pay-per-click links displayed on the resolving websites promote products that compete with Complainant.
iii. Respondent has registered and used the disputed domain names to attract and mislead consumers for its own profit.
iv. Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith.
v. Respondent had actual knowledge of Complainant and its rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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."
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.
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. 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.”).
Complainant argues that it is a leading online provider of high quality gifts such as flowers, chocolates, jewelry, clothing, housewares, and other unique gift selections. Complainant contends that it is the owner of a trademark registration with the USPTO for the PROFLOWERS mark (Reg. No. 2,476,976, registered August 14, 2001). The Panel finds that although Respondent appears to operate in Panama, Policy ¶ 4(a)(i) does not require that Complainant register its mark in the country in which Respondent operates, so long as it establishes rights in the mark in some jurisdiction. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). The Panel determines that Complainant’s registration of the PROFLOWERS mark with the USPTO sufficiently evidences its rights in the mark pursuant to Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant claims that Respondent’s <oproflowers.com> and <proflowerts.com> domain names are confusingly similar to Complainant’s mark because they differ by only a single character from Complainant’s mark. The Panel notes that Respondent adds additional characters, such as “o” or “t,” to Complainant’s PROFLOWERS mark in the disputed domain names. The Panel holds that Respondent’s inclusion of additional letters does not differentiate Respondent’s domain names from Complainant’s mark under Policy ¶ 4(a)(i). See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)). The Panel observes that Respondent has added the generic top-level domain (“gTLD”) “.com” to each of the disputed domain names. The Panel determines that Respondent’s addition of a gTLD is inconsequential to a Policy ¶ 4(a)(i) analysis. See Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Nat. Arb. Forum Oct. 17, 2007) (“[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.”). The Panel finds that Respondent’s <oproflowers.com> and <proflowerts.com> domain names are confusingly similar to Complainant’s PROFLOWERS mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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. See 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent has not been commonly known by the <oproflowers.com> and <proflowerts.com> domain names. Complainant contends that Respondent is not sponsored by or legitimately affiliated with Complainant in any way. The Panel notes that the WHOIS information for the disputed domain names identifies “Fundacion Private Whois / Domain Administrator” as the registrant. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel found that 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. Therefore, the Panel finds that Respondent is not commonly known by the <oproflowers.com> and <proflowerts.com> domain names pursuant to Policy ¶ 4(c)(ii).
Complainant alleges that Respondent is using the <oproflowers.com> and <proflowerts.com> domain names to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, many of which directly compete with Complainant’s business. The Panel notes that Respondent’s disputed domain names resolve to websites featuring competing links titled “Flowers at 1-800-FLOWERS,” “20% Off ProFlowers Coupon,” and “Teleflora Official Site.” Complainant argues that Respondent presumably receives pay-per-click fees from these linked websites. Prior panels have held that a respondent’s use of a disputed domain name to provide competing hyperlinks does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). Consequently, the Panel finds that Respondent is not using the <oproflowers.com> and <proflowerts.com> domain names in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant has proven this element.
Complainant asserts that Respondent is a recalcitrant, serial cybersquatter. Complainant contends that searches through the NAF and WIPO UDRP decision databases reveal that Respondent has engaged in an ongoing pattern of such behavior. Provide Commerce, Inc. v. Fundacion Private Whois / Domain Administrator, FA 1473936 (Nat. Arb. Forum Jan. 27, 2013); Google Inc. v. Fundacion Private Whois / Domain Administrator, FA 1473954 (Nat. Arb. Forum Jan. 22, 2013); Google Inc. v. Fundacion Private Whois / Domain Administrator, FA 1473976 (Nat. Arb. Forum Jan. 18, 2013). Therefore, the Panel finds that Respondent’s prior UDRP proceedings resulting in findings of bad faith and transfer evidence bad faith use and registration under Policy ¶ 4(b)(ii). See Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (Nat. Arb. Forum Feb. 18, 2008) (determining that the respondent’s forty-one prior UDRP rulings were evidence of bad faith registration under Policy ¶ 4(b)(ii)).
Complainant contends that Respondent’s advertised pay-per-click links displayed on the resolving websites promotes products that compete with Complainant. The Panel notes that Respondent’s <oproflowers.com> and <proflowerts.com> domain names resolve to websites featuring competing hyperlinks titled “Flowers at 1-800-FLOWERS,” “20% Off ProFlowers Coupon,” and “Teleflora Official Site.” Complainant asserts that these links therefore divert potential customers away from Complainant to third-party websites, which disrupts Complainant’s business. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel determined that “The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).” Therefore, the Panel finds that Respondent’s use of the <oproflowers.com> and <proflowerts.com> domain names disrupts Complainant’s business, demonstrating bad faith under Policy ¶ 4(b)(iii).
Complainant alleges that Respondent has registered and used the <oproflowers.com> and <proflowerts.com> domain names to attract and mislead consumers for its own profit. Complainant argues that Respondent has set up a “click through” website for which it likely receives revenue for each misdirected Internet user. The Panel notes that Respondent’s disputed domain names resolve to websites containing competing hyperlinks such as “Sorority Rush Flowers,” “Send flowers for $19.99,” and others. The Panel finds that Respondent is using the <oproflowers.com> and <proflowerts.com> domain names to attract Internet users to its website for the purpose of collecting click-through fees, the Panel holds that Respondent has registered and is using the disputed domain names in bad faith according to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant argues that Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith. The Panel notes that Respondent uses Complainant’s PROFLOWERS mark in its entirety and merely adds the letter “o” or “t” in the domain names. The Panel notes that previous panels have traditionally found typosquatting where there is a disputed domain name representing a typographical error with respect to a complainant’s mark or correlation between an incorrect letter found in the disputed domain name and its placement on a computer keyboard near the correct letter as found in the complainant’s mark. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Complainant claims that Respondent had actual knowledge of Complainant and its rights. Complainant argues that Respondent’s knowledge of Complainant’s rights in the PROFLOWERS mark is evidenced by Respondent’s offering of the same types of services as Complainant through its <oproflowers.com> and <proflowerts.com> domain names. Consequently, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <oproflowers.com> and <proflowerts.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: December 19, 2013
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