Provide Commerce, Inc. v. e on Craze
Claim Number: FA1506001626318
Complainant is Provide Commerce, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is e on Craze (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <roflowers.com>, registered with Domain.com, LLC.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically June 26, 2015; the Forum received payment June 26, 2015.
On June 26, 2015, Domain.com, LLC confirmed by e-mail to the Forum that the <roflowers.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC verified that Respondent is bound by the Domain.com, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 29, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 20, 2015, 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@roflowers.com. Also on June 29, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On July 28, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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 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.
Complainant’s contentions in this Proceeding:
Complainant used the PROFLOWERS mark since 1998 in connection with its business as a leading provider of online gifts such as flowers, plants and chocolates. Complainant has rights in the PROFLOWERS mark through registration of the mark with trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,476,976, registered August 14, 2001). Respondent’s disputed <roflowers.com> domain name is confusingly similar to the PROFLOWERS mark in which Complainant has rights. Through merely removing the letter “P” from the mark and adding the generic top-level domain (“gTLD”) “.com,” Respondent has not created a domain distinguishable from the PROFLOWERS mark.
Respondent has no rights or legitimate interests in the disputed domain name. Based on WHOIS information, Respondent has not been commonly known by the disputed domain name. Nor has Respondent been affiliated with Complainant or authorized to use the PROFLOWERS mark in anyway. Further, Respondent’s use of the disputed <roflowers.com> domain name, to redirect internet users to a website hosting links to third-party websites, does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
Respondent has exhibited conduct that supports findings of bad faith registration and use of the disputed <roflowers.com> domain name. Respondent uses the domain to divert customers and potential customers away from Complainant’s legitimate business. Further, Respondent’s confusingly similar domain attracts and confuses internet users for Respondent’s commercial gain.
Respondent’s Contentions in this Proceeding:
Respondent failed to submit a Response in this proceeding.
The Panel notes that Respondent registered the disputed domain name August 12, 2002.
Complainant established that it has rights and legitimate interests in the mark contained in misspelled form within the disputed domain name.
Respondent has no rights or legitimate interests in the mark or disputed domain name.
Respondent registered a domain name that is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain name containing Complainant’s protected mark 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant contends that it established rights in the PROFLOWERS mark through registration of the mark with the USPTO (Reg. No. 2,476,976, registered August 14, 2001). Registration of a mark with the USPTO is sufficient to establish a Complainant’s rights in a mark pursuant to the Policy. See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)). Similarly, the Panel in this case finds that Complainant adequately shows its rights in the PROFLOWERS mark under Policy ¶ 4(a)(i).
Complainant further argues that Respondent’s disputed <roflowers.com> domain name is confusingly similar to the PROFLOWERS mark in which Complainant has rights. Respondent’s disputed domain appears to differ from the PROFLOWERS mark only through removal of the letter “P” and addition of the gTLD “.com”. Removal or addition of a singular letter does not distinguish a disputed domain name from a mark. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). Additionally, panels have held that the presence of a gTLD does not change the confusing similarity between a mark and a disputed domain name. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). The Panel therefore finds that Respondent’s disputed roflowers.com> domain name is confusingly similar to the PROFLOWERS mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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 contends that Respondent is not and has not been commonly known by the disputed domain name, and that Complainant has not authorized Respondent to use the PROFLOWERS mark in anyway. To support the contention, Complainant points to the WHOIS information associated with the disputed domain name, which indicates that Respondent’s name is “e on Craze” of the organization “e on Craze.” See Complainant’s Attached Ex. I. Panels have held that based on a lack of WHOIS and other relevant information to the contrary, a respondent is not commonly known by a disputed domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent’s use of the disputed <roflowers.com> domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent appears to use the disputed domain name to operate a website that hosts generic links to third-party websites some of which compete with Complainant’s business. See Complainant’s Attached Ex. H. Links displayed on Respondent’s domain include “Birthday Flowers,” “Roses Flowers,” “Order Flowers Online,” and “Pro Flowers com.” See Id. Using a confusingly similar domain name to operate a website hosting commercial links, some of which are links to a complainant’s competitors, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services). Accordingly, the Panel finds that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant argues that Respondent exhibited conduct that supports findings of bad faith registration and use of the disputed domain name through operating a website with generic links to Complainant’s competitors. See Complainant’s Attached Ex. H. Where a respondent displayed hyperlinks that competed with a complainant, a Policy ¶ 4(b)(iii) finding is appropriate. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“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).”). This Panel finds that Respondent’s use demonstrates bad faith registration and use under Policy ¶ 4(b)(iii).
Complainant also claims that Respondent’s use of the disputed domain name attracts and confuses Internet users who are seeking Complainant’s website and does so for Respondent’s commercial gain. The Panel notes Complainant’s Attached Ex. H showing various links, which Complainant displays, presumably receiving referral fees when users click on them. Panels have found bad faith registration and use where a respondent profits off the confusing similarity between a mark and a disputed domain name. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). The Panel finds that under Policy ¶ 4(b)(iv) Respondent registered and used the disputed domain name in bad faith.
Complainant lastly argues that Respondent’s typosquatting behavior evidences Respondent’s bad faith registration and use. The Panel notes that Respondent’s disputed <roflowers.com> domain name differs from the PROFLOWERS mark only through the removal of the letter “P” and the addition of the gTLD “.com”. The Panel finds that Respondent engaged in typosquatting, and the Panel finds that Respondent registered and uses the domain in bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
This Panel also finds that given the name chosen for the domain name as well as the use Respondent made of it, the evidence permits an inference that Respondent had actual notice and knowledge of Complainant’s rights in this mark before opportunistically using it in the disputed domain name to Respondent’s own wrongful gain
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <roflowers.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 11, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page