START-UP TRADEMARK OPPOSITION POLICY

DECISION

Florists' Transworld Delivery, Inc. v. dotPartners LLC

Claim Number: FA0205000114367

PARTIES

Complainant is Florists' Transworld Delivery, Inc., Downers Grove, IL (“Complainant”) represented by Scott J. Major, of Millen, White, Zelano & Branigan, P.C.  Respondent is dotPartners LLC, Livingston, NJ (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <ftd.biz>, registered with TLDS Inc.

PANEL

The undersigned certifies that she has 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.

PROCEDURAL HISTORY

Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel.  As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).

Complainant submitted a Complaint to the Forum electronically on May 20, 2002; the Forum received a hard copy of the Complaint on May 21, 2002.

On May 23, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 12, 2002, by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).

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 July 2, 2002, pursuant to STOP Rule 6(b), the Forum appointed Hon. Carolyn Marks Johnson as the single 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 STOP Rules.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the STOP Policy, STOP Rules, the Forum’s STOP 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 seeks transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant makes the following allegations in this proceeding:

The <ftd.biz> domain name is identical to Complainant's FTD mark.  Respondent has no rights or legitimate interests in the <ftd.biz> domain name.  Respondent registered the <ftd.biz> domain name in bad faith.

B. Respondent failed to submit a Response to the Complaint.

FINDINGS

Complainant has used its FTD mark since 1910.  Complainant was the first flower-by-wire service.  Currently, Complainant oversees a network of 14,000 retail florists in North America, and participates in an international floral delivery network of 42,000 affiliated florists in 150 countries. 

Complainant uses the FTD mark as a trade name, service mark, trademark and collective membership mark.  Complainant owns various registrations for the mark including United States Patent and Trademark Office Registration Number 1,576,429 and 844,748.  Complainant also owns numerous international registrations for the FTD mark in Brazil, Canada, Vietnam, Japan, Mexico, the European Union and South Korea.  Complainant has expended considerable sums of money over the years to promote its mark and has established exceptional good will in the FTD mark.

Respondent registered the disputed domain name on March 27, 2002.  Respondent is not licensed by Complainant to use Complainant’s FTD mark.  Complainant’s investigation found no evidence that Respondent intends to use the domain name in relation to a business.

DISCUSSION

Paragraph 15(a) of the STOP 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 STOP Rules and may draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the STOP Rules.

Paragraph 4(a) of the STOP Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:

(1) the domain name is identical 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 or is being used in bad faith.

Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.

Under the STOP proceedings, a STOP Complaint may be filed only when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form.  Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights.  The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which Complainant asserts rights.

Complainant’s Rights in the Mark

Complainant established in this proceeding that it has rights in the FTD mark through registration and continuous use.  Furthermore, Respondent’s <ftd.biz> domain name is identical to Complainant’s FTD mark. 

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

Rights or Legitimate Interests

Respondent did not file a Response and therefore the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain name.  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 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”).

Complainant has established that it has rights in the disputed domain name because it has used its FTD mark in commerce since 1910 and is the owner of a trademark in the United States.  Respondent has not come forward to offer evidence that it has used the FTD mark in connection with its business, or that it owns any trademarks or service marks incorporating the word anywhere in the world.  Respondent has not demonstrated any rights or legitimate interests in the <ftd.biz> domain name as is required by STOP Policy ¶ 4(c)(i). See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests under the UDRP where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any right or interest it may possess).

Furthermore, based on the famous and distinctive nature of Complainant's FTD mark, any planned use by Respondent of the <ftd.biz> domain name, which is identical to Complainant's famous mark, would be an opportunistic attempt to attract customer's by using Complainant's famous mark, which is not a bona fide offering of goods or services pursuant to STOP Policy ¶ 4(c)(ii).  See 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).

No evidence on this record suggests and Respondent has not come forward to establish evidence that it is commonly known by the <ftd.biz> domain name and pursuant to STOP Policy ¶ 4(c)(iii). Respondent has no such rights.  See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent has 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).

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

Registration or Use in Bad Faith

The <ftd.biz> domain name is identical to Complainant's FTD mark and an Internet user will likely believe that an affiliation exists between Respondent and Complainant.  Registration of the <ftd.biz> domain name despite it being identical to Complainant’s mark is evidence of Respondent’s bad faith pursuant to STOP Policy ¶ 4(b)(iv).  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”).

Furthermore, because of the famous and distinctive nature of Complainant's FTD mark, Respondent was on actual or constructive notice of the existence of Complainant's mark at the time Respondent registered the infringing <ftd.biz> domain name. Therefore, Respondent’s registration of the disputed domain name despite this notice is evidence of bad faith registration pursuant to STOP Policy ¶ 4(a)(iii).  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constitutes bad faith).

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

DECISION

Having established all three elements required under the Start-up Trademark Opposition Policy, the Panel concludes that relief shall be hereby granted.

Accordingly, it is Ordered that the domain name <ftd.biz> be transferred from Respondent to Complainant and subsequent challenges under the STOP Policy against this domain name shall not be permitted.

                                                                        Hon. Carolyn Marks Johnson, Panelist

Dated: July 16, 2002.

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