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Generic Top Level Domain Name (gTLD) Decisions |
Florists' Transworld Delivery, Inc. v.
Jesus Lizarazo
Claim Number: FA0203000105883
PARTIES
Complainant
is Florists' Transworld Delivery,
Downers Grove, IL (“Complainant”) represented by Scott J. Major, of Millen,
White, Zelano & Branigan, P.C.
Respondent is Jesus Lizarazo,
Potomac, MD (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <ftd-flores.com>,
registered with eNom, Inc.
PANEL
The
undersigned certifies that he as acted independently and impartially and to the
best of his knowledge, has no known conflict in
serving as Panelist in this
proceeding.
Judge
Ralph Yachnin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on March 13, 2002; the Forum received
a hard copy of the
Complaint on March 14, 2002.
On
March 18, 2002, eNom, Inc. confirmed by e-mail to the Forum that the domain
name <ftd-flores.com> is
registered with eNom, Inc. and that Respondent is the current registrant of the
name. 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
March 19, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of April 8,
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@ftd-flores.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
April 15,2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed Judge
Ralph Yachnin 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 Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
disputed domain name <ftd-flores.com> is confusingly similar to
FTD, a registered mark in which Complainant holds rights.
Respondent
has no rights or legitimate interests in respect of the disputed domain name.
Respondent
registered and used the disputed domain name in bad faith.
B.
Respondent
Respondent
did not submit a Response in this proceeding.
FINDINGS
Complainant operates the world’s oldest
flower-by-wire service, which was established in 1910. Since that time, it has used the acronym FTD
as a trade name, service mark, trademark, and collective membership mark in
association
with its tele-floral business and Internet website hosted at
<ftd.com>.
Complainant has registered several marks
incorporating FTD, including the FTD mark and “mercury man” emblem, registered
on the Principal
Register of the United States Patent and Trademark Office as
Reg. No. 821,318, on December 26, 1966.
Complainant oversees a network of
approximately 14,000 retail florists in North America and participates in an
international floral
delivery network of 42,000 affiliated florists in 150
countries. Together with its
subsidiary, Complainant has expended over $100 million in marketing and
promoting the FTD mark during its last three
fiscal years.
Respondent registered the disputed domain
name on May 3, 2000, and has made no apparent use of it.
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 its rights in
the FTD mark through registration with the U.S. Patent and Trademark Office and
continuous
subsequent use.
The disputed domain name is confusingly
similar to Complainant’s FTD mark, as it incorporates the mark in its entirety
and merely
adds the word “flores” (Spanish for “flowers”), and “.com.” The addition of generic words and terms does
not defeat a claim of confusing similarity when a domain name incorporates a
distinct
and unique trademark of another party. 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).
Further, Respondent’s use of the word “flores,” which directly relates
to Complainant’s international business operations, enhances
the possibility of
confusion. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the Respondent’s domain name combines the Complainant’s
mark
with a generic term that has an obvious relationship to the Complainant’s
business).
The Panel finds that Policy ¶
4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant has demonstrated its rights
to and interests in the FTD mark.
Because Respondent has not submitted a Response in this matter, the
Panel may presume it has no such rights or 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). Further, without the benefit of a Response,
the Panel may accept all of Complainant’s assertions as true, unless clearly contradicted
by the evidence in the record. 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”);
see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
(finding that failing to respond allows a presumption that Complainant’s
allegations are true unless
clearly contradicted by the evidence).
Complainant contends that, since
registration, Respondent has made no use of the disputed domain name
whatsoever. By passively holding the
domain name, Respondent has demonstrated that it has no rights or interests in
respect of the name and that
it will not use the domain name for a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) or for a legitimate
noncommercial
or fair use pursuant to Policy ¶ 4(c)(iii). See Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001)
(finding no rights or legitimate interests where Respondent made no use of the
infringing domain
names); see also Chanel,
Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001) (finding no rights or
legitimate interests where “Respondent registered the domain name and did
nothing with it”).
There is no evidence, pursuant to Policy
¶ 4(c)(ii), that Respondent is commonly known by FTD, FTD-FLORES, or <ftd-flores.com>;
Respondent is only known to this Panel as Jesus Lizarazo. Thus, Respondent has no rights or interests
pursuant to Policy ¶ 4(c)(ii). See 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); see also CBS Broadcasting, 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).
The Panel finds that Respondent has no
rights or legitimate interests in respect of the disputed domain name and,
thus, Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
Complainant’s FTD mark is famous in the
United States and well known worldwide.
Given the prominence of the mark, Respondent is considered to have been
aware of the mark at the time it registered the confusingly
similar domain
name. See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000)
(finding that Respondent had actual or constructive knowledge of Complainant’s
EXXON mark given
the world-wide prominence of the mark); see also Nintendo of Am. Inc v. Pokemon,
D2000-1230 (WIPO Nov. 23, 2000) (finding that Respondent, at the time of
registration, had notice of Complainant’s famous POKÉMON and PIKACHU
trademarks given their extreme popularity).
By registering a domain name that
infringes upon Complainant’s rights, Respondent has demonstrated bad faith
within the meaning of
the Policy. See
Exxon Mobil Corp. v. Fisher, supra;
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 constituted
bad faith).
Further, Respondent’s passive holding of
the disputed domain name for almost two years demonstrates a likely intent to
sell the domain
name to Complainant or to prevent Complainant from registering
a domain name reflecting its mark. Such
behavior further evidences bad faith registration and use under the
Policy. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228
(WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name
without active use can constitute use in
bad faith); see also Alitalia –Linee Aeree Italiane S.p.A v.
Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where
the Respondent made no use of the domain name in question and there are
no
other indications that the Respondent could have registered and used the domain
name in question for any non-infringing purpose).
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 <ftd-flores.com> domain name be transferred
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: April 24, 2002
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