DECISION

Interflora, Inc. v. Main

Claim Number: FA0205000114299

PARTIES

Complainant is Interflora, Inc., Downers Grove, IL, USA (“Complainant”) represented by Scott J. Major, of Miller, White, Zelano & Branigan, P.C.  Respondent is Main, Hamont, EUROPE (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain names at issue are <inteflora.org> and <inteflora.net>, registered with Bulkregister.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.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 16, 2002; the Forum received a hard copy of the Complaint on May 17, 2002.

On May 17, 2002, Bulkregister.com confirmed by e-mail to the Forum that the domain names <inteflora.org> and <inteflora.net> are registered with Bulkregister.com and that Respondent is the current registrant of the names.  Bulkregister.com has verified that Respondent is bound by the Bulkregister.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 20, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 10, 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@inteflora.org and postmaster@inteflora.net 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 20, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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 names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. Respondent’s <inteflora.org> and <inteflora.net> domain names are confusingly similar to Complainant’s INTERFLORA mark.

2. Respondent as no rights or legitimate interests in the <inteflora.org> and <inteflora.net> domain names.

3. Respondent registered and used the disputed domain names in bad faith.

 

B. Respondent did not submit a Response.

FINDINGS

Complainant owns numerous trademark registrations for its INTERFLORA mark, and has obtained registration in more than 100 countries. More specifically, its registration holdings include: U.S. Reg. No. 1,519,789 registered January 10, 1989; South Korea Reg. No. 19,071 registered February 5, 1993; and, United Kingdom Reg. No. 1,329,834 Reg. No. registered December 16, 1987, among others.

Additionally, Complainant has spent millions to market and promote its INTERFLORA mark and the goods and services offered thereunder. Since 1946, Complainant has provided international florist association services to each of its constituent owners, their national florist association members, and their individual member retail florists. As part of its international association services, Complainant operates and maintains a computerized clearinghouse that permits its members to send, accept and/or deliver flowers, floral arrangements and gifts from customers in distant geographic locations.

By virtue of Complainant’s extensive marketing and promotional activities, the substantial volume of sales of goods and services offered under the mark, and its strong enforcement and registration program, Complainant’s INTERFLORA mark represents a famous, distinct and internationally recognized mark.

Respondent registered the disputed domain name on March 19, 2002. Respondent has subsequently used the contested domain name in conjunction with a website that markets products of the “Flowering World” retail floral business. Respondent is not authorized or licensed to use Complainant’s INTERFLORA mark.

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.

Identical and/or Confusingly Similar

Complainant has established that it has rights in the INTERFLORA mark through completing numerous international registrations and subsequent continuous use of the mark.

Respondent’s <inteflora.org> and <inteflora.net> domain names are confusingly similar to Complainant’s INTERFLORA mark. Respondent’s domain names deviate slightly, namely, the subtraction of the letter “r” in the secondary domain name and the addition of generic top-level domain names. Neither alterations change the overall impression that Respondent’s domain names reflect Complainant’s INTERFLORA mark. See Pomellato S.P.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (“gTLD”) “.com” after the name POMELLATO is not relevant); see also Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such generic typos do not change the Respondent’s infringement on a core trademark held by Complainant).

Furthermore, the fact that Respondent is marketing similar goods as Complainant elevates the possibility of confusion among Internet users. See Slep-Tone Entm't Corp. v. Sounds Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (stating that “likelihood of confusion is further increased by the fact that the Respondent and [Complainant] operate within the same industry”).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to come forward with a Response. Therefore, it is presumed that Respondent has no rights or legitimate interests in the disputed domain names. 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). Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

Respondent registered the confusingly similar domain names in an attempt to opportunistically trade on the goodwill associated with Complainant’s INTERFLORA mark. Respondent’s motivations are to divert Complainant’s customers. Thus, Respondent fails in establishing a bona fide offering of goods or services in connection with the disputed domain name under Policy ¶ 4(c)(i). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).

Furthermore, Complainant and Respondent operate in the same industry. Respondent’s registration of a domain name confusingly similar to Complainant’s mark implies that Respondent was attempting to commercially benefit from Complainant’s fame. Respondent’s actions do not represent a legitimate noncommercial or fair use of the contested domain name pursuant to Policy ¶ 4(c)(iii). See Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).

Respondent is not commonly known as “inteflora,” <inteflora.org>, or <inteflora.net> pursuant to Policy ¶ 4(c)(ii). Due to Complainant’s international registrations, the fame associated with its INTERFLORA mark and subsequent continuous use of the mark since 1946, it is unlikely that Respondent could establish that it is commonly known by a name confusingly similar to Complainant’s mark. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959); see also 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).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Because of Complainant’s numerous international registrations and the fame associated with its INTERFLORA mark, Respondent is thought to have been on notice of Complainant’s preexisting rights in the INTERFLORA mark. Respondent’s registration and use of confusingly similar domain names represent a deliberate bad faith attempt to opportunistically trade on the fame of Complainant’s established mark. See Entrepreneur Media, Inc. v. Smith[2002] USCA9 115; , 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark and thus Respondent registered the domain name in bad faith).

Respondent and Complainant operate in the same floral industry, offering similar goods. Respondent’s registration of a domain name confusingly similar to Complainant’s established mark implies that Respondent registered the domain name for the purpose of disrupting the business of Complainant. Respondent’s actions evidence bad faith under  Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area).

           

Lastly, Respondent registered and used the disputed domain names in order to attract, for commercial gain, Internet users searching for Complainant’s products and services. Respondent’s unauthorized use of Complainant’s mark in order to commercially benefit represents bad faith registration and use under Policy ¶ 4(b)(iv). See State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intended to use Complainant’s marks to attract the public to the web site without permission from Complainant); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the Respondent directed Internet users seeking the Complainant’s site to its own website for commercial gain).

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 <inteflora.org> and <inteflora.net> domain names be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated: July 5, 2002

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