Florists' Transworld Delivery, Inc. v. Speedeenames c/o Andrew Morton
Claim Number: FA1008001343947
Complainant is Florists' Transworld Delivery, Inc. (“Complainant”), represented by Adam D. Mandell, of Millen, White, Zelano & Branigan, P.C., Virginia, USA. Respondent is Speedeenames c/o Andrew Morton (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <theftdflorists.com>, <ftdflowersworld.com>, <floristsftd.net>, <floristsftdonline.com>, <ftdflowersonline.net>, <ftd-florist.info>, <ftd-florists-online.com>, <ftd-florists.org>, <find-ftd-flowers.com>, and <buy-ftd-flowers.com>, registered with eNom, Inc.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 30, 2010.
On August 30, 2010, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <theftdflorists.com>, <ftdflowersworld.com>, <floristsftd.net>, <floristsftdonline.com>, <ftdflowersonline.net>, <ftd-florist.info>, <ftd-florists-online.com>, <ftd-florists.org>, <find-ftd-flowers.com>, and <buy-ftd-flowers.com> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, 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 September 1, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 21, 2010 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@theftdflorists.com, postmaster@ftdflowersworld.com, postmaster@floristsftd.net, postmaster@floristsftdonline.com, postmaster@ftdflowersonline.net, postmaster@ftd-florist.info, postmaster@ftd-florists-online.com, postmaster@ftd-florists.org, postmaster@find-ftd-flowers.com, postmaster@buy-ftd-flowers.com by e-mail. Also on September 1, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 7, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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" through submission of a Written Notice, as defined in Rule 1. 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <theftdflorists.com>, <ftdflowersworld.com>, <floristsftd.net>, <floristsftdonline.com>, <ftdflowersonline.net>, <ftd-florist.info>, <ftd-florists-online.com>, <ftd-florists.org>, <find-ftd-flowers.com>, and <buy-ftd-flowers.com> domain names are confusingly similar to Complainant’s FTD mark.
2. Respondent does not have any rights or legitimate interests in the <theftdflorists.com>, <ftdflowersworld.com>, <floristsftd.net>, <floristsftdonline.com>, <ftdflowersonline.net>, <ftd-florist.info>, <ftd-florists-online.com>, <ftd-florists.org>, <find-ftd-flowers.com>, and <buy-ftd-flowers.com> domain names.
3. Respondent registered and used the <theftdflorists.com>, <ftdflowersworld.com>, <floristsftd.net>, <floristsftdonline.com>, <ftdflowersonline.net>, <ftd-florist.info>, <ftd-florists-online.com>, <ftd-florists.org>, <find-ftd-flowers.com>, and <buy-ftd-flowers.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Florists' Transworld Delivery, Inc., is in the business of providing flowers by wire, participating in an international floral delivery network of approximately 54,000 affiliated florists in over 150 countries. Complainant owns trademark registrations for the FTD mark with the trademark authorities of countries around the world, including the Canadian Intellectual Property Office (“CIPO”), the Korean Intellectual Property Office (“KIPO”), the Intellectual Property Office of the Philippines (“IP Philippines”), the Vietnam National Office of Intellectual Property (“VNOIP”), the Chinese State Intellectual Property Office (“SIPO”), and the European Union Office for Harmonization in the Internal Market (“OHIM”).
CIPO
Reg. No. TMA378,974 issued November 14, 2005;
KIPO
Reg. No. 0020596 issued July 16, 1993;
IP Philippines
Reg. No. 60,740 issued June 20, 1995;
VNOIP
Reg. No. 33,748 issued April 13, 2000;
SIPO
Reg. No. 65,216 issued January 20, 1996; and
OHIM
Reg. No. 000909788 issued November 11, 1999.
Respondent, Speedeenames c/o Andrew Morton, registered the <theftdflorists.com>, <ftdflowersworld.com>, <floristsftd.net>, <floristsftdonline.com>, <ftdflowersonline.net>, <ftd-florist.info>, <ftd-florists-online.com>, <ftd-florists.org>, <find-ftd-flowers.com>, and <buy-ftd-flowers.com> domain names on or after April 3, 2010. The <theftdflorists.com>, <ftdflowersworld.com>, <floristsftd.net>, <ftdflowersonline.net>, <ftd-florists.info>, <ftd-florists-online.com>, <find-ftd-flowers.com> and <ftd-florists.org> domain names all resolve to websites displaying advertisements, information, and links to third-party websites, many of them competing with Complainant in the flower industry. The <floristsftdonline.com> and <buy-ftd-flowers.com> domain names do not currently resolve to an active website.
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 owns trademark registrations for the FTD mark with the trademark authorities of countries around the world, including the CIPO, the KIPO, the IP Philippines, the VNOIP, the SIPO, and the OHIM.
CIPO
Reg. No. TMA378,974 issued November 14, 2005;
KIPO
Reg. No. 0020596 issued July 16, 1993;
IP Philippines
Reg. No. 60,740 issued June 20, 1995;
VNOIP
Reg. No. 33,748 issued April 13, 2000;
SIPO
Reg. No. 65,216 issued January 20, 1996; and
OHIM
Reg. No. 000909788 issued November 11, 1999.
The Panel finds that such extensive evidence of trademark registration with trademark authorities around the world is sufficient to prove Complainant’s rights in the FTD mark, even though Respondent may not live or operate in a country where the mark is registered. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant alleges that all of the disputed domain names are confusingly similar to Complainant’s FTD mark. All of the disputed domain names incorporate the FTD mark combined with one or more of the following generic or descriptive terms: “the,” “flowers,” “florists,” “world,” “online,” “buy,” and “find.” In addition, the <ftd-florist.info>, <ftd-florists-online.com>, <ftd-florists.org>, <buy-ftd-flowers.com>, and <find-ftd-flowers.com> domain names include one or two hyphens. All of the domain names also append one of the following generic top-level domains (“gTLD”): “.com,” “.net,” “.info,” or “.org.” The Panel finds that the addition of descriptive or generic terms to Complainant’s mark does nothing to modify the confusingly similar nature of the disputed domain names. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”). The Panel also finds that hyphens and gTLDs have no effect on confusing similarity under a Policy ¶ 4(a)(i) analysis. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Respondent’s <theftdflorists.com>, <ftdflowersworld.com>, <floristsftd.net>, <floristsftdonline.com>, <ftdflowersonline.net>, <ftd-florist.info>, <ftd-florists-online.com>, <ftd-florists.org>, <find-ftd-flowers.com>, and <buy-ftd-flowers.com> domain names are confusingly similar to Complainant’s FTD mark according to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain names. Once Complainant has put forth a prima facie case, the burden shifts to Respondent to demonstrate its rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has adequately established a prima facie case in these proceedings. Since Respondent has failed to respond to the allegations against it, the Panel may assume that Respondent lacks any rights and legitimate interests in the disputed domain names. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that “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 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.”). The Panel, however, elects to consider the evidence presented in light of the Policy ¶ 4(c) factors to determine whether Respondent has any rights and legitimate interests in the disputed domain names.
Complainant asserts that Respondent is not an agent or licensee of Complainant, is not authorized to use Complainant’s mark, and is not known by a name consisting in whole or in part of “FTD.” The WHOIS information for the disputed domain names lists the registrant as “Speedeenames c/o Andrew Morton,” which reveals no association with either Complainant’s mark or any of the disputed domain names. Complainant therefore argues, and the Panel agrees, that Respondent is not commonly known by the disputed domain names and does not possess rights and legitimate interests in the disputed domain names pursuant to 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 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 respondent was commonly known by the disputed domain name).
Respondent’s <theftdflorists.com>, <ftdflowersworld.com>, <floristsftd.net>, <ftdflowersonline.net>, <ftd-florists.info>, <ftd-florists-online.com>, <find-ftd-flowers.com> and <ftd-florists.org> domain names resolve to websites featuring generic links to third-party websites, some of which compete with Complainant’s floral business. The Panel finds that Respondent’s use of the disputed domain names is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate non-commercial or fair use of the domain name); 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’s <floristsftdonline.com> and <buy-ftd-flowers.com> domain names do not currently resolve to an active website. The Panel finds that Respondent’s failure to actively use the disputed domain names does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶¶ 4(c)(i) and 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent’s registration of ten domain names appropriating Complainant’s mark demonstrates a pattern of registration in order to prevent Complainant from effectively reflecting its mark in corresponding domain names. The Panel finds that this evidence of such a pattern of registration indicates bad faith registration and use according to Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Yahoo! Inc. v. Deiana, FA 339579 (Nat. Arb. Forum Nov. 22, 2004) (“It is found and determined that Respondent is in violation of Policy ¶ 4(b)(ii) because Respondent registered the disputed domain names to prevent Complainant from reflecting its YAHOO! mark in the corresponding domain names. The registration of the [<ayhooo.com>, <ayhooo.net >, <ayhooo.org>, <ayhoooindia.com>, <ayhoookids.com>, <ayhooorealty.com>, <ayhooorealty.net>, <ayhoooshopping.com>, <ayhooo-uk.com>, and <searchayhooo.com>] domain names herein constitutes a pattern of registering trademark-related domain names in bad faith.”).
Respondent’s <theftdflorists.com>, <ftdflowersworld.com>, <floristsftd.net>, <ftdflowersonline.net>, <ftd-florists.info>, <ftd-florists-online.com>, <find-ftd-flowers.com> and <ftd-florists.org> domain names resolve to websites containing links to third-party websites, some of which compete with Complainant in the flower business. Such an activity clearly disrupts Complainant’s business, as Internet users seeking Complainant’s products will be diverted to websites featuring competing products. The Panel finds that this disruption of Complainant’s business and diversion of Internet users to Complainant’s competitors shows bad faith registration and use under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also 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)).
Complainant asserts that Respondent uses Complainant’s FTD mark in the disputed domain names in order to intentionally attempt to attract Internet users to its websites by creating a likelihood of confusion. Since the links advertised on the resolving websites are presumably pay-per-click links, the confused Internet users arriving at Respondent’s websites can potentially translate into commercial gain for Respondent as a result of click-through fees. The Panel finds that Respondent’s efforts to mislead Internet users and attract Complainant’s business in order to receive commercial gain constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Respondent’s <floristsftdonline.com> and <buy-ftd-flowers.com> domain names do not currently resolve to an active website. Complainant argues, and the Panel finds, that Respondent’s failure to make active of the disputed domain names indicates bad faith registration and use of the disputed domain names according to Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <theftdflorists.com>, <ftdflowersworld.com>, <floristsftd.net>, <floristsftdonline.com>, <ftdflowersonline.net>, <ftd-florist.info>, <ftd-florists-online.com>, <ftd-florists.org>, <find-ftd-flowers.com>, and <buy-ftd-flowers.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: October 17, 2010
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