Best Web Resources, Inc. v. Floral Craft,
Inc.
Claim Number: FA0404000264403
PARTIES
Complainant
is Best Web Resources, Inc. (“Complainant”),
represented by Judd Aronowitz, 1570
Madruga Ave., Suite 311, Coral Gables, FL 33146. Respondent is Floral
Craft, Inc. (“Respondent”), represented by Corby D. Bell, 1660 S. Stemmons Frwy, Suite 300,
Lewisville, TX 75067.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <bestflowersonline.com>,
registered with Domaindiscover.
PANEL
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.
David
E. Sorkin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on April 30, 2004; the Forum received a hard copy of the
Complaint on May 3, 2004.
On
April 30, 2004, Domaindiscover confirmed by e-mail to the Forum that the domain
name <bestflowersonline.com>
is registered with Domaindiscover and that Respondent is the current registrant
of the name. Domaindiscover has
verified that Respondent is bound by the Domaindiscover 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 4, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 24,
2004 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@bestflowersonline.com by e-mail.
A
timely Response was received and determined to be complete on May 24, 2004.
Complainant
submitted a proposed Additional Submission on June 1, 2004. The Panel has considered this submission to
the extent that its contents could not reasonably have been included in the
initial Complaint.
On June 3, 2004, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed David E. Sorkin as
Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant asserts that it possesses
common law trademark rights in “Best Flowers,” “Best Flowers.com,”
“BestFlowers.com,” and several related marks; and, with predecessors in
interest, has owned and used the domain name <bestflowers.com>
continuously since 1997. Complainant
has registered several of its common law marks as fictitious names in the State
of Florida, and has invested over $750,000 in developing and promoting its
online business at <bestflowers.com>.
Complainant alleges that the disputed domain name <bestflowersonline.com> is confusingly similar to
<bestflowers.com>. The disputed
domain name was registered to Complainant from 1999 until 2002, when the
registration was inadvertently permitted to lapse, and the name was then
registered by Respondent in June 2002.
Complainant further alleges that
Respondent lacks rights or legitimate interests in the disputed domain name,
that Complainant’s rights in the name predate Respondent’s registration of the
domain name, and that Respondent had an affirmative duty not to infringe
Complainant’s rights in the name.
Complainant asserts that Respondent does business as Floral Craft, Inc.;
Shaw Florist, Inc.; or Greg MacMillan; that Respondent is not commonly known by
the name <bestflowersonline.com>;
and that Respondent’s interchangeable use of these names is confusing to
consumers. Complainant alleges that the
value of the disputed domain name derives from its similarity to Complainant’s
mark, and that Respondent’s use of the disputed domain name has tarnished
Complainant’s reputation and caused consumer confusion.
As to bad faith, Complainant contends
that Respondent knew or should have known of Complainant’s prior registration
and use of the disputed domain name, and has continued to use the name despite
being aware of Complainant’s position regarding Respondent’s alleged
infringement of Complainant’s trademark rights. Complainant states that Respondent must have been aware of
Complainant’s reputation when Respondent selected the disputed domain name, and
alleges that Respondent selected the name in order to capitalize on
Respondent’s reputation and goodwill.
B.
Respondent
Respondent
has been in business as a florist since 1967, and states that since 2001 it has
sought to acquire “domain names of a generic nature” in order to market its
services. Since acquiring the disputed
domain name <bestflowersonline.com>
in 2002, Respondent has invested over $700,000 in advertising related to that
name.
Respondent
contends that the disputed domain name is not confusingly similar to
Complainant’s mark, asserting that a very small number of instances of actual
confusion is insufficient to prove confusing similarity, and that the domain
name and trademark must be considered in their entirety in order to determine
the question of confusing similarity.
Respondent argues that Complainant lacks sufficient trademark rights in
the term “Best Flowers,” contending that this is a generic term for retail
services featuring the sale of flowers and therefore is not protectible. Respondent points to numerous third party
uses of the term “best flowers” in support of this claim. Respondent further contends that Complainant
has failed to demonstrate that its claimed mark has in fact acquired secondary
meaning in the marketplace.
Respondent
alleges that it has used the disputed domain name in connection with a bona
fide offering of goods or services since before October 2002, when it first
learned of the present dispute, and thereby has acquired rights or legitimate
interests therein. Respondent contends
that, even if Complainant had at one time held a domain name registration for
the disputed domain name, it never actually used the term “Best Flowers Online”
in commerce.
Respondent
denies that it registered or has used the disputed domain name in bad faith,
and states that it had not even heard of Complainant at the time it registered
the name. Respondent contends that none
of the bad faith criteria set forth in Paragraph 4(b) of the Policy are
applicable here.
C.
Additional Submission
In
its Additional Submission, Complainant alleges (inter alia) that Respondent’s online business grew exponentially
after Respondent began using the disputed domain name; that this growth was the
result of Respondent’s taking advantage of Complainant’s goodwill and
reputation rather than Respondent’s marketing expenditures; and that this
growth demonstrates the strength and secondary meaning of Complainant’s
mark. Complainant also states that it
did not actively use the disputed domain name during the period that it was
registered to Complainant, and that “by excluding that domain name from
commerce on the Internet [Complainant] only strengthened its primary domain
name BestFlowers.com.”
FINDINGS
The Panel finds that Complainant has
failed to sustain its burden of proof on any of the three elements set forth in
Paragraph 4(a) of the Policy.
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.
Common law trademark rights are
sufficient to support a complaint under the Policy, but the complainant bears
that burden of proving such rights.
(The issue here is not whether the claimed mark is weak or strong, but
whether there is sufficient evidence of a mark in the first place.) Under the present circumstances, the Panel
is of the view that Complainant has failed to prove that it possesses common
law trademark rights in “Best Flowers,” “BestFlowers.com,” or its other claimed
marks. Cf., e.g., Supremo n.v./s.a v. Tella, D2001-1357 (WIPO Feb. 15,
2002) (finding that Complainant failed to prove common law rights in
“Supremo”); EMONEY GROUP Inc. v. eMoney,
FA 96337 (Nat. Arb. Forum Mar. 26, 2001) (finding that the claimed mark
“EMONEY” was generic and had not acquired secondary meaning).
Although the disputed domain name is
quite clearly confusingly similar to “Best Flowers” and “BestFlowers.com,”
Complainant has failed to prove that it has trademark rights in those terms (or
its other claimed common law marks), and therefore its case fails on the first
element.
It appears to the Panel that Respondent
has made legitimate and bona fide use of the domain name for its retail florist
business, and that this use predates any notice of the present dispute. At most Complainant’s challenge represents a
legitimate dispute over trademark rights rather than a blatant case of
infringement; in fact, it appears to this Panel that Respondent would likely
prevail in a trademark action. In any
event, this forum is designed for clear cases of cybersquatting rather than
legitimate trademark disputes. See Second Staff Report on Implementation
Documents for the Uniform Dispute Resolution Policy (Oct. 24, 1999),
<http://www.icann.org/udrp/udrp-second-staff-report-24oct99.htm>, ¶
4.1(c) (noting that “the policy’s administrative dispute-resolution procedure
does not extend to cases where a registered domain name is subject to a
legitimate dispute (and may ultimately be found to violate the challenger's
trademark)”).
The Panel therefore concludes that
Complainant has failed to meet its burden of proving a lack of rights or
legitimate interests.
The Panel accepts Respondent’s claim that
it registered and is using the disputed domain name for its generic sense, and
considers implausible Complainant’s allegation that Respondent was instead
motivated by a desire to exploit Complainant’s reputation and goodwill. Furthermore, if Complainant’s prior
registration of the disputed domain name is relevant, it tends to support
Respondent’s position more than Complainant’s.
If Respondent had been aware of the previous registration, it might
quite reasonably have assumed that Complainant had intentionally abandoned the
domain name—especially where, as here, Complainant had not even made active use
of the domain name. See, e.g., Corbis Corp. v. Zest, FA98441
(Nat. Arb. Forum Sept. 12, 2001).
Accordingly, the Panel finds that
Complainant has failed to prove registration or use in bad faith.
DECISION
Having
determined that Complainant has failed to establish all three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED.
David E. Sorkin, Panelist
Dated: June 7, 2004
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