Florists' Transworld Delivery, Inc. v.
Domain Strategy, Inc.
Claim Number: FA0205000113974
PARTIES
Complainant
is Florists' Transworld Delivery, Inc.,
Downers Grove, IL, USA (“Complainant”) represented by Scott J. Major, of Millen,
White, Zelano & Branigan, P.C.
Respondent is Domain Strategy,
Bury, Qc, CANADA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <ftdassociation.org>,
registered with OnlineNIC.com.
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.
Judge
Harold Kalina (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on May 14, 2002; the Forum received a hard copy of the Complaint
on May 15, 2002.
On
May 16, 2002, OnlineNIC.com confirmed by e-mail to the Forum that the domain
name <ftdassociation.org> is
registered with OnlineNIC.com and that Respondent is the current registrant of
the name. OnlineNIC.com has verified
that Respondent is bound by the OnlineNIC.com 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
May 17, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 6,
2002 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@ftdassociation.org by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
June 25, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) 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.” Therefore, the Panel may issue
its decision based on the documents submitted and in accordance with the ICANN
Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <ftdassociation.org> domain name is confusingly similar to
Complainant’s FTD mark.
2. Respondent does not have rights or
legitimate interests in <ftdassociation.org>.
3. Respondent registered and used the <ftdassociation.org> domain name
in bad faith.
B. Respondent failed to submit a Response.
FINDINGS
Complainant has registered its FTD mark
in several countries in relation to its wide range of products and services
including bowls, baskets, floral arrangements, clothing, telecommunications
services, and mail order services featuring floral products. Complainant
registered FTD (Reg. No. 1,576,429) with the U.S. Patent and Trademark Office
(“USPTO”) on January 9, 1990.
Additionally, Complainant has been using
the FTD mark in relation to its floral goods and services since 1910. During
the three most recent fiscal years, Complainant and its subsidiary, FTD.com,
have spent in excess of $100 million dollars in marketing and promoting the FTD
mark and the goods and services offered through it. Due to the extensive
marketing and advertising of Complainant, FTD has developed into one of the
world’s most powerful commercial symbols. Moreover, Complainant has approximately
14,000 retail florists in North America, and participates in an international
floral delivery network of 42,000 florists in 150 countries. The FTD mark is
primarily responsible for Complainant’s overall goodwill estimated at $65
million dollars.
Respondent registered the disputed domain
name April 16, 2002. Until recently, the disputed domain name resolved to a
pornographic website, whereas it currently leads to a page indicating that the
DomainStrategy.com website is “coming soon.”
The subject domain name was originally
registered to and used by FTD Association, a non-profit trade association
affiliated with Complainant. Complainant effected what it thought was a proper
renewal of the registration for the domain name. However, the renewal was later
invalidated and Respondent secured its registration.
DISCUSSION
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 the 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.
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; and
(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 has established its rights in
the FTD mark through registration with numerous countries, registration on the
USPTO’s Principal Register and subsequent continuous use.
Respondent’s <ftdassociation.org> domain name includes Complainant’s FTD
mark in its entirety, and merely adds the generic term “association” and
top-level domain name “.org.” Because generic terms and top-level domain names
do not sufficiently distinguish domain names from trademarks for the purpose of
determining confusing similarity, Respondent’s <ftdassociation.org> domain name is confusingly similar to
Complainant’s FTD mark. See Sony Kabushiki
Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that
“[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Arthur Guinness Son &
Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of the Complainant combined with a
generic word or term).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Because Respondent has not submitted a
Response in this matter, the Panel may presume it has no rights or legitimate interests
in respect of the disputed domain name. See
Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4,
2000) (finding that Respondents’ failure to respond can be construed as an
admission that they have no legitimate interest in the domain names).
Given the popularity and notoriety of
Complainant’s FTD mark, it seems unlikely that Respondent could have any rights
or interests in a domain name incorporating the FTD mark. See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000)
(finding no rights or legitimate interests where one “would be hard pressed to
find a person who may show a right or legitimate interest” in a domain name
containing Complainant's distinct and famous NIKE trademark).
Respondent’s contested domain name
currently leads to a page indicating that the website is “coming soon.”
Respondent is not using, nor has Respondent made any demonstrable preparations
to use the domain name or a name corresponding in connection with a bona fide
offering of goods or services under Policy ¶ 4(c)(i). See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244
(WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not
sufficient to establish rights or legitimate interests for purposes of
paragraph 4(a)(ii) of the Policy”); see
also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396
(Nat. Arb. Forum Sept. 8, 2000) (finding that the Respondent’s website, which
is blank but for links to other websites, is not a legitimate use of the domain
names).
Although Respondent has not provided
evidence of present use of the disputed domain name Complainant has presented
evidence that reveals that the contested domain name previously resolved to a
pornographic website. Respondent’s actions do not constitute a bona fide
offering of goods or services under Policy ¶ 4(c)(i), nor do they represent a
legitimate or fair use pursuant to Policy ¶ 4(c)(iii). See MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000)
(finding that it is not a bona fide offering of goods or services to use a
domain name for commercial gain by attracting Internet users to third party
sites offering sexually explicit and pornographic material, where such use is
calculated to mislead consumers and tarnish the Complainant’s mark); see also Brown & Bigelow, Inc. v.
Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on
another's well-known mark to provide a link to a pornographic site is not a
legitimate or fair use).
Respondent is not commonly known by
“ftdassociation” or <ftdassociation.org>
pursuant to Policy ¶ 4(c)(ii). Respondent is not an authorized agent or a
licensee of Complainant. See Gallup Inc.
v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding
that Respondent does not have rights in a domain name when Respondent is not
known by the mark); see also Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000)
(finding that Respondent was not commonly known by the domain name
<greatsouthernwood.com> where Respondent linked the domain name to
<bestoftheweb.com>).
The Panel finds
that Respondent has no rights or legitimate interests in respect of the
disputed domain name and, thus, Policy ¶ 4(a)(ii) has been satisfied.
Because of the famous and distinctive
nature of Complainant’s FTD mark, its listing on the USPTO’s Principal Register
and Complainant’s continuous subsequent use since 1910, Respondent is thought
to have had constructive notice as to the existence of Complainant’s mark at
the time Respondent registered the infringing <ftdassociation.org> domain name. Because Respondent knew of
Complainant’s trademark and preexisting rights, its registration and use of the
contested domain name for commercial gain suggests opportunistic bad faith. See Samsonite Corp. v. Colony Holding,
FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Nintendo of
Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that
Respondent, at the time of registration, had notice of Complainant’s famous
POKÉMON and PIKACHU trademarks given their extreme
popularity); see also Yahoo! Inc. v.
Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO!
mark negated any plausible explanation for Respondent’s registration of the
<yahooventures.com> domain name).
Complainant has produced uncontested
evidence that Respondent’s website originally resolved to a pornographic
website. Respondent’s tarnishing of Complainant’s FTD mark by creating a
perceived affiliation with pornography constitutes bad faith under Policy ¶
4(a)(iii). Respondent undoubtedly monetarily benefited from the intentional
diversion of Internet users. Respondent’s actions also constitute bad faith
under Policy ¶ 4(b)(iv). See MatchNet
plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that the
association of a confusingly similar domain name with a pornographic website
can constitute bad faith); see also CCA
Indus., Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000) (finding that “this
association with a pornographic web site can itself constitute bad faith”).
Complainant previously held the contested
domain name before an inadvertent error allowed the registration to lapse.
Respondent apparently took advantage of the presented opportunity and
immediately registered the lapsed domain name. Respondent’s opportunistic
actions exhibit bad faith under Policy ¶ 4(a)(iii). See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug.
30, 2000) (finding that where the domain name has been previously used by the
Complainant, subsequent registration of the domain name by anyone else
indicates bad faith, absent evidence to the contrary); see also BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17,
2000) (finding bad faith where Respondent took advantage of the Complainant’s
failure to renew a domain name).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that the requested relief should be hereby GRANTED.
Accordingly,
it is Ordered that the <ftdassociation.org>
domain name be TRANSFERRED from
Respondent to Complainant.
Judge
Harold Kalina (Ret.), Panelist
Dated:
June 27, 2002
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