Interflora, Inc. / Interflora British Unit v. Dimas Ade Wibowo / Interflorasia
Claim Number: FA1707001742293
Complainant is Interflora, Inc. / Interflora British Unit (“Complainant”), represented by Scott J. Major of Millen, White, Zelano & Branigan, P.C., Virginia, USA. Respondent is Dimas Ade Wibowo / Interflorasia (“Respondent”), acting Pro Se, Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <interflorasia.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Richard DiSalle as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 31, 2017; the Forum received payment on July 31, 2017.
On August 1, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <interflorasia.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 August 1, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 21, 2017 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@interflorasia.com. Also on August 1, 2017, 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.
A timely Response was received and determined to be complete on August 7, 2017.
On August 10, 2017 and August 11, 2017 Complainant submitted additional submissions,
On August 8, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard DiSalle as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the INTERFLORA mark on or in connection with operating and maintaining a computerized clearinghouse that permits its members to send, accept, and/or deliver flowers, floral arrangements, floral emblems, fruits and gifts from or to customers in distant geographic locations. Complainant has a robust portfolio of registrations with respect to the INTERFLORA mark, for example, with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,519,789, registered Jan. 10, 1989). Respondent’s <interflorasia.com> incorporates the INTERFLORA mark in its entirety, while simply telescoping the “a” in the mark, followed by “sia,” to create a geographically descriptive identifier, “asia.” This addition, coupled with the “.com” generic top-level domain (“gTLD”) creates confusing similarity under Policy ¶ 4(a)(i).
Respondent has no rights or legitimate interests in <interflorasia.com>. While Respondent is identified by the WHOIS information as “Dimas Ade Wibowo,” Respondent cannot be commonly known by the domain name under Policy ¶ 4(c)(ii). Furthermore, Respondent’s only use of the domain name is to promote its own retail floral services. Competing use in this manner distinguishes Respondent’s use as an attempt to trade off the goodwill associated with Complainant’s mark, and therefore represents neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Respondent registered and used <interflorasia.com> in bad faith. Respondent competes with Complainant for commercial gain, intending to cause confusion, thus both Policy ¶¶ 4(b)(iii) and (iv) are implicated. Confusion is enhanced by Respondent’s incorporation of Complainant’s “Mercury Man Emblem” in multiple places, including in the “o” of “interflorasia.” Respondent falsely claims association with Complainant, which adds to the presumption of bad faith because Respondent had actual knowledge of Complainant when registering and using the domain name.
B. Respondent
Respondent never alluded to any affiliation with Complainant’s brand; in fact, Respondent made a good faith attempt to change the webpage, social media links, and business name in response to Complainant’s complaints. Respondent registered the domain name because it corresponds to the use Respondent intends to engage in: “Inter” (for “International”), “Flora” (for “flowers”), and “Asia”—becoming “InterFlorasia.”
Respondent states, “I hereby relinquish my ownership and use of <interflorasia.com>. It has been replaced with IndoFlorasia.com and I have ensured that my small business can, in no way, either online or otherwise, be confused with your multi-national organization.” The Panel notes that <interflorasia.com> was registered on January 30, 2012.
C. Additional Submissions
Complainant’s additional submission claims Respondent was contacted by Complainant’s counsel , his ‘error’ was intentional and he is proficient in English.
(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.
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.
Preliminary Issue: Multiple Complainants
In the instant proceeding, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” Complainant in Exhibit 3 (Declaration of Scott D. Levin): Interflora, Inc. is a Michigan corporation jointly and equally owned by (a) Florists’ Transworld Delivery, Inc., a Michigan corporation with a principal place of business in Downers Grove, Illinois, (b) Fleurop-Interflora, a corporation organized and existing under the laws of Switzerland with its principal place of business in Zurich, Switzerland; and (c) Interflora British Unit, a company of the United Kingdom with its principal place of business in Sleaford, England. It is alleged that the INTERFLORA mark is used by each of the foregoing owners pursuant to license agreements in which each is assigned an exclusive license to use the mark in a specific geographic territory.
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and treats them all as a single entity in this proceeding. Respondent has admitted in his response to the complaint of Complainant that he is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, the Panel will analyze the case under the elements of the UDRP.
Complainant claims it has rights in the INTERFLORA mark with the USPTO (e.g., Reg. No. 1,519,789, registered Jan. 10, 1989). Registration with a trademark agency such as the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). The Panel therefore finds Complainant has rights in the INTERFLORA mark under Policy ¶ 4(a)(i).
Complainant also asserts Respondent’s <interflorasia.com> incorporates the INTERFLORA mark in its entirety, while simply telescoping the “a” in the mark, followed by “sia,” to create a geographically descriptive identifier, “asia.” This addition, coupled with the “.com” gTLD, allegedly creates confusing similarity under Policy ¶ 4(a)(i). See, for example, Skype Ltd. v. Sacramento, FA 747948 (Forum Aug. 30, 2006) (“The addition of the geographic term [“Brasil”] does not avoid confusing similarity pursuant to Policy ¶ 4(a)(i).”), and Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Accordingly, the Panel agrees that <interflorasia.com> is confusingly similar to the INTERFLORA mark under Policy ¶ 4(a)(i).
The Panel notes 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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 argues that Respondent has no rights or legitimate interests in <interflorasia.com>. Absent information in the record to the contrary, WHOIS information can support a finding that a respondent has not been commonly known by a disputed domain name. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”). The WHOIS information of record names the registrant as “Dimas Ade Wibowo,” so the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Furthermore, Complainant asserts that Respondent’s only use of the domain name is to promote its own retail floral services. Competing use has been considered to fail in representing a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Florists’ Transworld Delivery v. Malek, FA 676433 (Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name). The Panel agrees that the facts align with those in the foregoing case, and that Respondent’s use therefore does not create any legitimate interests or rights in the domain name.
Complainant contends that Respondent registered and used <interflorasia.com> in bad faith. While Respondent purports to compete with Complainant for commercial gain, intending to cause confusion, both Policy ¶¶ 4(b)(iii) and (iv) are implicated. Confusion is enhanced by Respondent’s incorporation of Complainant’s “Mercury Man Emblem” in multiple places, including in the “o” of “interflorasia.” See Disney Enters., Inc. v. Noel, FA 198805 (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).”). The Panel agrees that Respondent clearly intended to compete with Complainant by incorporating Complainant’s own business model and marks for commercial gain in bad faith under Policy ¶¶ 4(b)(iii) and/or (iv).
Complainant lastly argues that the INTERFLORA mark is inherently distinctive and famous, and that Respondent had actual knowledge of Complainant when registering and using the domain name. Complainant further argues that the attempt to pursue retail floral services, which are the same types of services offered by Complainant, indicate that Respondent had actual knowledge of Complainant and its rights. The Panel agrees with Complainant regarding Respondent's actual knowledge, concluding that Respondent registered the <interflorasia.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
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 <interflorasia.com> domain name be TRANSFERRED from Respondent to Complainant
Richard DiSalle Panelist
Dated: August 21, 2017
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