Edible Arrangements, LLC v. Transure Enterprise Ltd
c/o Host Master
Claim Number: FA1001001303677
Complainant is Edible Arrangements, LLC (“Complainant”), represented by Richard
R. Michaud, of Michaud-Kinney Group LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <ediblearrnagments.com>, registered with Above, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 19, 2010; the National Arbitration Forum received a hard copy of the Complaint on January 22, 2010.
On January 19, 2010, Above, Inc. confirmed by e-mail to the National Arbitration Forum that the <ediblearrnagments.com> domain name is registered with Above, Inc. and that Respondent is the current registrant of the name. Above, Inc. has verified that Respondent is bound by the Above, 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 January 27, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 16, 2010 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@ediblearrnagments.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 24, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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." 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <ediblearrnagments.com> domain name is confusingly similar to Complainant’s EDIBLE ARRANGEMENTS mark.
2. Respondent does not have any rights or legitimate interests in the <ediblearrnagments.com> domain name.
3. Respondent registered and used the <ediblearrnagments.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Edible Arrangements, is an international designer and producer of floral arrangements with over 850 stores worldwide. Complainant owns numerous trademarks with the United States Patent and Trademark Office (“USPTO”) for the EDIBLE ARRANGEMENTS mark (e.g., Reg. No. 2,356,362 issued on June 6, 2000).
Respondent registered the <ediblearrnagments.com>
domain name
on July 22, 2009. Respondent’s disputed
domain name resolves to a website displaying third party links to commercial
websites offering products and services in competition with Complainant’s
business.
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 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.”).
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.
Complainant has obtained multiple trademark registrations for the EDIBLE ARRANGEMENTS mark with the USPTO (e.g., Reg. No. 2,356,362 issued on June 6, 2000). The Panel finds that Complainant has established rights in the EDIBLE ARRANGEMENTS mark for the purposes of Policy ¶ 4(a)(i) through its trademark registration with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). The Panel further finds that trademark registrations need not be in the country where Respondent resides for the purposes of Policy ¶ 4(a)(i). 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; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant argues that the disputed domain name <ediblearrnagments.com> is confusingly similar to
its EDIBLE ARRANGEMENTS mark.
Complainant contends that (1) tranposing the letters “a” and “n” as well
as leaving out the letter “e”in the word “arrangements,” (2) deleting the space
between the words of the mark, and (3) adding the generic top level domain
(“gTLD”) “.com” is not sufficient to distinguish the disputed domain name with
its mark. The Panel finds that
transposing letters of a trademark as well as misspelling the mark does not
distinguish the disputed domain name from the trademark for purposes of Policy
¶ 4(a)(i). See Google Inc. v. Jon G., FA 106084 (Nat. Arb.
Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to
the complainant’s GOOGLE mark and noting that “[t]he transposition of two
letters does not create a distinct mark capable of overcoming a claim of
confusing similarity, as the result reflects a very probable typographical
error”); see also Am. Online, Inc. v.
David, FA 104980 (Nat. Arb. Forum Apr. 10, 2002) (“The misspelling of a
famous mark does not diminish the confusingly similar nature between the marks
and the disputed domain names.”). The
Panel further finds that deleting the space between words of a mark and adding
a gTLD to a mark does not make the disputed domain name distinctive for
purposes of Policy ¶ 4(a)(i). See
The Panel finds that Policy ¶
4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights or legitimate interests in the disputed domain name. Complainant is required to make a prima facie case in support of these allegations. Once the Complainant has produced a prima facie case the burden shifts to the Respondent to show it does have rights or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). The Panel finds that the Complainant has produced a prima facie case. Due to the Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond).
Complaint argues that Respondent is neither commonly known by the disputed domain name, nor has Complainant given Respondent permission to use Complainant’s mark. The WHOIS information does not indicate, and there is no further evidence on record that Respondent is commonly known by the disputed domain name. The Panel finds that without affirmative evidence of Respondent being commonly known by the disputed domain name, Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant asserts that Respondent’s disputed domain name is not being used in connection with a bona fide offering of goods or services, nor is Respondent making a legitimate noncommercial or fair use of the domain name. Respondent’s disputed domain name resolves to a website that displays click through links to websites offering goods and services in competition with Complainant, presumably for profit. The Panel finds that Respondent’s use of the disputed name to redirect Internet users to Complainant’s competitors, presumably for financial gain, does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Respondent is taking advantage of Internet users that are
trying to reach Complainant’s website by using common misspellings of the
Complainant’s EDIBLE ARRANGEMENTS mark.
The Panel finds that Respondent’s engagement in what is commonly
referred to as typosquatting is evidence that Respondent lacks any rights or legitimate
interests in the disputed domain names under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain
Registration
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent’s use of the disputed
domain name to attract internet users to its website for commercial gain
disrupts Complainant’s business and is evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iii). The Panel finds that Respondent’s
registration and use of the disputed domain name constitutes bad faith because
Respondent’s disputed domain name disrupts Complainant’s business. See Tesco Pers. Fin. Ltd. v.
Domain Mgmt. Servs., FA
877982
(Nat. Arb. Forum Feb.
13, 2007) (concluding that the use of a confusingly similar domain name to
attract Internet users to a directory website containing commercial links to
the websites of a complainant’s competitors represents bad faith registration
and use under Policy ¶ 4(b)(iii)); see
also
Complainant further alleges that Respondent’s use of the disputed domain name to intentionally attract Internet users for commercial gain is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). Complainant argues that Respondent’s disputed domain name creates a likelihood of confusion between the disputed domain name and Complainant’s mark, and Respondent seeks to capitalize on that likelihood of confusion by making money on click-through fees paid by websites in competition with Complainant that are displayed on Respondent’s website. The Panel finds that Respondent has intentionally attempted to attract Internet users to its website for commercial gain and this use is evidence of bad faith and use pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
The Panel has already determined that Respondent has engaged
in typosquatting. This practice has been
found to constitute evidence by itself of bad faith registration and use under
Policy ¶ 4(a)(iii).
See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the
respondent’s registration and use of the <nextell.com> domain name was in
bad faith because the domain name epitomized typosquatting in its purest form);
see also Microsoft Corp. v.
Domain Registration
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ediblearrnagments.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: March 12, 2010
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