DECISION

Florists' Transworld Delivery, Inc. v. Denson Hudgens

Claim Number: FA0201000104123

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 Denson Hudgens, Cambridge, MA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <ftdshop.com>, registered with Network Solutions, Inc.

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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 28, 2002; the Forum received a hard copy of the Complaint on January 29, 2002.

On February 1, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <ftdshop.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 February 1, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 21, 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@ftdshop.com 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 March 4, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 name be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Respondent’s <ftdshop.com> domain name is confusingly similar to Complainant’s FTD trademark.

Respondent does not have rights or legitiamte interests in <ftdshop.com>.

Respondent registered and used the <ftdshop.com> domain name in bad faith.

B. Respondent

No Response was submitted.

FINDINGS

Complainant has registered its FTD mark in several countries in relation to its wide range of products and services including bowls, baskets, floral arrangements, clothing, telecommunications services, and mail order services featuring floral products.  Complainant registered FTD (Reg. No. 1,576,429) with the United States Patent and Trademark Office on January 9, 1990.

Additionally, Complainant has been using the FTD mark in relation to its floral goods and services since 1910.  During the three most recent fiscal years, Complainant and its subsidiary, FTD.com, have spent in excess of $100 million in marketing and promoting the FTD mark and the goods and services offered through it.  Due to the extensive marketing and advertising of Complainant, FTD has developed into one of the world’s most powerful commercial symbols.  Moreover, Complainant has approximately 14,000 retail florists in North America, and participates in an international floral delivery network of 42,000 florists in 150 countries.  The FTD mark is primarily responsible for Complainant’s overall goodwill estimated at $65 million.

Respondent registered the disputed domain name on December 1, 1999, well after Complainant registered and began using the FTD mark.  Respondent’s website appears to advertise a mail-order bride service.

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 rights to FTD through continuous use as well as its federal registration of the mark.

Complainant’s FTD mark includes the FTD mark in its entirety, and mererly adds the generic term “shop” and the top-level domain name “.com.”  Because generic terms and top-level domain names do not sufficiently distinguish domain names from trademarks for the purpose of determining confusing similarity, Respondent’s  <ftdshop.com> domain name is confusingly similar to Complainant’s FTD mark.  See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); see also Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name ROBOHELP.COM is identical to complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"); see also Prudential Ins. Co. of Am. v. Irvine, FA 95768 (Nat. Arb. Forum Nov. 6, 2000) (finding that the root of the domain name, namely the word "Prudential," is identical to Complainant’s mark, and as a result, the domain name in its entirety is confusingly similar to the Complainant’s family of marks).

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

Rights or Legitimate Interests

Respondent is presumed not to have any rights or legitimate interests in the disputed domain name because it did not submit a Response.  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).

Respondent’s use of the website as a way to advertise a mail-order bride service unrelated to the FTD mark indicates that Respondent intends to trade on the goodwill of Complainant’s FTD mark in order to attract Internet users who are confused as to the affiliation and sponsorship of Respondent’s website.  This is not a bona fide offering of goods pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to ¶ 4(c)(iii).  See 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); see also Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent had an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).

Respondent, known as Denson Hudgens, is not commonly known as FTD or <ftdshop.com>, and therefore, has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

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

Registration and Use in Bad Faith

Respondent’s use of the website as a way to advertise and promote its mail-order bride service by luring Internet users who falsely believe Respondent’s website is affiliated with Complainant’s famous FTD mark indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the Respondent registered the domain name <bigtex.net> to infringe on the Complainant’s goodwill and attract Internet users to the Respondent’s website).

Moreover, because Complainant’s FTD mark is so well-known throughout the world, Respondent’s registration and use of such a famous mark cannot be considered in good faith.  See Northwest Airlines, Inc. v. Koch, FA 95688 (Nat. Arb. Forum Oct. 27, 2000) (“the selection of a domain name [northwest-airlines.com] which entirely incorporates the name of the world’s fourth largest airline could not have been done in good faith”); see also Singapore Airlines Ltd v. P & P Servicios de Communicacion S.L., D2000-0643 (WIPO Aug. 29, 2000) (“The domain name ‘singaporeairlines.com’ is so obviously connected with a well-known airline that its very registration and use by someone with no connection to the airline suggests opportunistic bad faith.  Indeed, it is hard to imagine a more blatant exercise in ‘cybersquatting.’”).

 

 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 shall be hereby granted.

Accordingly, it is Ordered that the domain name <ftdshop.com> be transferred from Respondent to Complainant.

John J. Upchurch, Panelist

Dated: March 6, 2002

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