Florists' Transworld
Delivery, Inc. v. United Pahlavi Trust
Claim Number: FA0610000811796
PARTIES
Complainant is Florists' Transworld Delivery, Inc. (“Complainant”), represented by Scott
J. Major, of Millen, White, Zelano & Branigan, P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name in dispute is <ftdgiftbaskets.com>, registered with
Moniker
Online Services, Inc.
PANEL
Bruce E. O’Connor 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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on September 28, 2006; the
National Arbitration Forum received a hard copy of the Complaint on September 28, 2006.
On September 29, 2006, Moniker Online Services, Inc. confirmed by
e-mail to the National Arbitration Forum that the <ftdgiftbaskets.com>
domain name is registered with Moniker Online
Services, Inc. and that the Respondent is the current registrant of the
name. Moniker
Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 October 3, 2006, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of October 23, 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@ftdgiftbaskets.com by
e-mail.
A timely Response was received and determined to be complete on October 23, 2006. In that response, Respondent requested a
three-judge panel. In doing so,
Respondent neither submitted the names and contact details of three candidates
to serve as one of the Panelists as required by Rule 5(b)(v) of ICANN’s Rules
for Uniform Domain Name Dispute Resolution Policy (the “Rules”), nor paid
one-half of the applicable fee for a three-member Panel as required by Rule 5(c) of the Rules, nor submitted
(5) hard copies of the Response as required by Rule 5(b) of NAF’s UDRP
Supplemental Rules (the “Supplemental Rules”).
The dispute is thus being decided by a single-member Panel as stated in
Rule 5(c) of the Rules.
Complainant’s timely Additional Submission was received and determined
to be complete on October 26, 2006.
On October 30, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Bruce E. O’Connor as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
Founded in 1920, Complainant was the world’s first flower-by-wire service. This service currently connects approximately 20,000 North American retail florists and Complainant participates in an international floral delivery network of approximately 54,000 affiliated florists in over 150 countries. In addition, Complainant has operated since 1995 the successful <ftd.com> retail website for direct marketing to consumers of floral arrangements, plants, gift baskets and other gift items.
Complainant operates and maintains a computerized clearinghouse that permits its member florists and gift shops to accept orders from and/or deliver floral arrangements, gift baskets and the like to customers in distant geographic locations. Complainant’s computerized clearinghouse also processes the exchange of credits and funds between florists. In furtherance of its services, Complainant has created branded lines of unique floral arrangements for sale by its florists. Complainant sells to retail florists items such as planters, baskets and other accessories necessary for the preparation of these arrangements. Complainant also commissions and prepares advertising to promote the purchase of floral arrangements and gift items from florists. Additionally, and of particular relevance to the case at bar, Complainant provides a range of consultation and business support services to its members, including website development, design and hosting, under its FTD FLORISTS ONLINE mark.
Complainant owns
a host of registrations in the
Registration No. 821,318
Issue Date: December
27, 1966
Mark: FTD and Mercury Man Emblem
Services: Clearinghouse
services; florist association services
Registration No.: 844,748
Issue Date: February 20, 1968
Mark: FTD
Services: Clearinghouse
services; florist association services
Registration No.: 1,231,300
Issue Date: March 15,
1983
Mark: FTD and Mercury Man Emblem
Services: Clearinghouse
services; florist association services
Registration No.: 1,576,429
Issue Date: January
9, 1990
Mark: FTD
Goods/Services: Mail order services featuring
florists’ products; telecommunication services; clothing; baskets and
other planters; bags
Registration No.: 1,729,683
Issue Date: November
3, 1992
Mark: FTD FLORISTS’ TRANSWORLD DELIVERY SINCE 1910
Services: Retail florist store services
Registration No.: 2,157,241
Issue Date: May
12, 1998
Marks: FTD
and Mercury Man Emblem
Services: Clearinghouse services;
association services; telecommunications
services;
educational services; gift baskets, knives, publications and other
goods
Registration No.: 2,170,061
Issue Date: June
30, 1998
Marks: FTD
SUNBURST
Goods: Live
cut floral arrangements
Registration No.: 2,403,957
Issue Date: November
14, 2000
Marks: FTD.COM
Services: Domestic
and international delivery of flowers, floral arrangements, plants, fruit, and gift orders;
clearinghouse services
Registration No.: 2,478,658
Issue Date: August
14, 2001
Marks: FTD
FRESH FLOWERS
Services: Distributorship
services in the field of fresh flowers
Registration No.: 3,006,400
Issue Date: October
11, 2005
Marks: FTD
and Mercury Man Emblem
Services: Flowers
and plants, and food and preservatives therefor
Complainant also owns other
registrations in the
Complainant, either directly, through its
predecessor-in-interest, and/or by the benefit of use by its authorized members/licensees,
continuously has used, and is using, these registered marks in commerce on the
goods and in connection with the services identified in the registrations since
at least as early as the date of first
use set forth therein, and well prior to the acts by Respondent complained of
herein. In this regard, the first nine
registrations identified above are "incontestable" and entitled to the privileges provided by 15 U.S.C.
§§ 1065 and 1115(b). The incontestable
registrations constitute conclusive evidence of Complainant's exclusive right to use
the respective marks featured therein
throughout the entire
Throughout many years, Complainant has expended considerable funds and made significant efforts in promoting and advertising
its goods and services identified by the FTD Mark. As a result of these
efforts, as well as its tremendous market penetration, Complainant
's strict quality control requirements, and active trademark enforcement
program, Complainant has established an enviable reputation, acquired
substantial goodwill, and attained distinctiveness in its marks throughout the
entire United States. Indeed, the FTD Mark is among the most well-known and famous
trademarks in existence.
Complainant also has actively
enforced its rights in the FTD Mark. It
routinely sends “cease and desist” letters to other parties attempting to use a
confusingly similar designation. Complainant also has filed numerous lawsuits
over the years against unauthorized users of “FTD” or a confusingly similar
term as a mark, trade name, domain name and/or metatag. It also has pursued a number of cases under
the UDRP in which Complainant has been successful in forcing the transfer of a
domain name consisting in part of the term “FTD.” E.g, Florists’
Transworld Delivery, Inc. v. Linda Malek, FA676433 (Nat. Arb. Forum June 6, 2006)
(<ftdflowers4less.com>); Florists’ Transworld Delivery, Inc. v.
A Day to Remember, FA471892
(Nat. Arb. Forum June 17, 2005); Florists’
Transworld Delivery, Inc. v. Shibata Kenyu, FA103573 (Nat. Arb. Forum Feb. 25, 2002) (<ftd-j.com>); Florists’ Transworld
Delivery, Inc. v. Cubatech, FA103983 (Nat. Arb. Forum
February 25, 2002) (<ftd.net>); Florists' Transworld Delivery, Inc. v.
Denson Hudgens, FA104123 (Nat. Arb. Forum March 6,
2002) (<ftdshop.com>); Florists' Transworld Delivery, Inc. v. Seocho,
FA104976 (Nat. Arb. Forum March 25, 2002)
(<wwwftd.com>); Florists' Transworld Delivery, Inc. v. Jesus Lizarazo,
FA105883 (Nat. Arb. Forum April 24, 2002)
(<ftd-flores.com>); Florists' Transworld Delivery, Inc. v.
DomainSource.com aka Domain Source, Inc., FA105882 (Nat. Arb. Forum May 1, 2002) (<ftdflorist.com> and <flowersftd.com>);
Florists' Transworld Delivery, Inc. v. BBIKOREA, FA109572 (Nat. Arb.
Forum May 22, 2002) (<phftd.com>); Florists'
Transworld Delivery, Inc. v. Domain Strategy, Inc., FA113974 (Nat. Arb.
Forum June 27, 2002) (<ftdassociation.org>).
Additionally, Complainant has pursued claims against
other users of the FTD mark or a similar designation in the courts under the
trademark laws and, where a domain name has been involved, the
Anticybersquatting Consumer Protection Act. As a result of these substantial
efforts, Complainant has been able to preserve the unique and distinctive
character of its mark.
In sum, by virtue of Complainant’s extensive marketing and promotional activities, the substantial sales volume for services and products offered under the mark, and its strong enforcement and registration program, the FTD Mark has developed into one of the world's most powerful commercial symbols.
B. Respondent
Respondent owns and operates over 500 top-level gift baskets domains
and Web sites. In 2004, Respondent
purchased the domain name in issue. For
the past year, Respondent's programmers are developing a Web site for the
domain name in dispute, which will be used as an online database for people
wanting to find gift basket stores worldwide.
So far, Respondent has spent over $10,000 on its programmers to develop
this idea.
Respondent has been in contact via e-mail and telephone with lawyers
for Complainant since being notified of the dispute by e-mail. The date of the trademark that describes
"gifts" is after the registration date for the domain name in
dispute, which is not associated with products such as flowers and will be a
service site.
C. Additional Submissions
Complainant contends that Respondent's suggestion that Complainant has
no rights in the FTD mark in connection with gift baskets is absurd, and that
Complainant and its members have offered gift baskets and other gift items
under the FTD Mark since long before registration of the domain name in
dispute. Complainant also has provided
for many years consultation, cooperative advertising, and delivery and
clearinghouse services to its members in connection with, among other things,
the sale of gift baskets.
Complainant contends that the signatory to the Response contacted
lawyers for the Complainant after filing of the Complaint to invite Complainant
to make an offer for a purchase of the domain name in dispute, and that the
offer was declined.
FINDINGS
The Panel accepts as true all of the contentions of the parties, with
the exception of Respondent's contentions as to the effective date of
protection for Complainant's FTD Mark in conjunction with
"gifts". The record clearly
indicates that "FTD"
was registered for baskets in 1990 and that "FTD and Mercury Man
Emblem" was registered for "gift baskets” in 1998. Both of these dates precede registration of
the domain name in dispute in 2004.
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.”
Paragraph 4(a) of the Policy 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.
The Panel finds that Complainant has established rights in the FTD Mark. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also 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.”).
The Panel finds that the domain name in dispute is confusingly similar to the Complainant's trademark. Respondent’s <ftdgiftbaskets.com> is simply the combination of the FTD Mark and the generic term "gift baskets" that is included in Complainant's trademark registrations. Respondent's website to which the user is directed by entering the domain name in dispute is <egiftbaskets.com>. At that site, Respondent says that it is in the business of helping others to establish online gift basket businesses. In its Response, Respondent states that it intends to use the domain name in dispute in conjunction with the service of allowing others to find gift baskets. The actual services being provided by Respondent using the domain name in dispute are clearly within the purview of the FTD Mark, because Complainant has established that it is providing similar services. The stated services to be provided by Respondent are clearly within the purview of the FTD Mark, because the FTD Mark has been registered for similar services ("educational services"). The Panel also notes that the FTD Mark has been registered for "gift baskets". Confusing similarity is apparent when the services being provided by Respondent are directly related to the goods for which the FTD Mark has been protected. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).
Finally, Respondent contends that the domain name in dispute is not associated with flowers. The Panel takes notice that online purveyors of flowers, other than Complainant, sell both gift baskets and flowers at their Web site. See http://ww4.1800flowers.com/dataset.do?dataset=10163&cm_mmc=tagged-_-na-_na&bannerBeacon=true.
The cases cited by Respondent have no bearing on the facts in this dispute.
Paragraph 4(c) of the Policy lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interest of a domain name registrant to a domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the Respondent is making a legitimate non‑commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant’s assertion that Respondent lacks rights or legitimate interests in the disputed domain name establishes a prima facie case under the Policy. Once a prima facie case has been established, the burden shifts to Respondent to demonstrate that it does have rights or legitimate interests pursuant to Policy ¶ 4(c). 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 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).”).
As established by
Complainant, Respondent is using the domain name in dispute to operate a rival,
commercial website and to redirect Internet users to its website featuring
competing gift basket goods and services. Such use is not a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i),
because Respondent is utilizing the FTD Mark in its domain name to attract and
confuse Internet users. As established by Complainant, Respondent’s use is not a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), because Respondent’s
website is commercial. See G.D. Searle & Co. v. Mahony,
FA 112559 (Nat. Arb. Forum June 12, 2002) (finding the respondent’s use
of the disputed domain name to solicit pharmaceutical orders without a license
or authorization from the complainant does not constitute a bona fide
offering of goods or services under Policy ¶ 4(c)(i)); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that
the respondent was not using the domain name within the parameters of Policy ¶
4(c)(i) or (iii) because the respondent used the domain name to take advantage
of the complainant's mark by diverting Internet users to a competing commercial
site).
As established by Complainant, Respondent is not an agent or licensee of Complainant. Respondent’s WHOIS information identifies Respondent as “United Pahlavi Trust” and is evidence that Respondent is not commonly known by the disputed domain name. Respondent has not established the circumstances of 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 cases cited by Respondent have
no bearing on the facts in this dispute.
The fact that Respondent has expended significant funds in the
development of its Web site to use the domain name in dispute is irrelevant,
given the clear evidence of a lack of rights or legitimate interest as
established by Complainant. Further,
Respondent offers no evidence as to why it chose to incorporate the FTD Mark
into the domain name in dispute.
Paragraph 4(b) of the Policy lists four circumstances in particular, without limitation, that demonstrate evidence of the registration and use of a domain name in bad faith. The circumstances of paragraph 4(b)(iv) appear to be pertinent:
(iv) By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on‑line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
As established by Complainant, the confusing similarity between the domain name in dispute and the FTD Mark makes it likely that Internet users attracted to Respondent’s website will mistakenly believe that Respondent’s website is sponsored by Complainant. Respondent is profiting from this confusion by selling goods and services in competition with Complainant, thus evidencing bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
As established by Complainant, one additional example of bad faith is the inclusion of false information in a WHOIS registration. Respondent used a false phone number, “1.1234567890,” in its WHOIS registration. This is further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith.”); see also Home Dir., Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000) (finding that providing false or misleading information in connection with the registration of the domain name is evidence of bad faith); see also Quixtar Invs., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that use of false registration information constitutes bad faith).
The cases cited by Respondent have no bearing on the facts in this dispute. Further, Respondent offers no evidence as to why it chose to incorporate the FTD Mark into the domain name in dispute.
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 <ftdgiftbaskets.com> domain name be TRANSFERRED
from Respondent to Complainant.
Bruce E. O'Connor, Panelist
Dated: November 13, 2006
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