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Generic Top Level Domain Name (gTLD) Decisions |
Florists' Transworld Delivery, Inc. v.
DomainSource.com a/k/a Domain Source, Inc.
Claim Number: FA0203000105882
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 DomainSource.com
a/k/a Domain Source, Inc., Aptos, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <ftdflorist.com>
and <flowersftd.com>,
registered with eNom, 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.
James
Alan Crary 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 21, 2002, eNom, Inc. confirmed by e-mail to the Forum that the domain
names <ftdflorist.com> and <flowersftd.com> are registered
with eNom, Inc. and that Respondent is the current registrant of the
names. 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 25, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of April 15,
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@ftdflorist.com and postmaster@flowersftd.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 22, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed James
Alan Crary 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
The
disputed domain names <ftdflorist.com>
and <flowersftd.com> are 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 names.
Respondent
registered and used the disputed domain names 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 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
FTD.com, Complainant has expended over $100 million in marketing and promoting
the FTD mark during its
last three fiscal years.
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.
According to Complainant’s research, no other party owns a federal
registration in the United States for a mark incorporating, in
whole or in
part, the term FTD.
Respondent registered the <ftdflorist.com> domain name on
December 10, 2000 and the <flowersftd.com>
domain name on April 16, 2001, and has made no apparent use of either name.
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 names are confusingly
similar to Complainant’s mark as they merely add the generic terms “florist” or
“flowers”
to the mark along with the generic top level domain (“gTLD”)
“.com.”
The addition of a generic word to the
distinct FTD mark does not distinguish the domain names from the mark. Instead, because the terms are directly
related to Complainant’s business, the modification increases the likelihood 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); see also Marriott
Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding
that the Respondent’s domain name <marriott-hotel.com> is confusingly
similar
to Complainant’s MARRIOTT mark).
Additionally, the use of the gTLD “.com”
does not significantly alter the impression of the mark so as to defeat a claim
of confusing
similarity. See Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top level of the domain name such as
“.net” or “.com” does not affect the domain
name for the purpose of determining
whether it is identical or confusingly similar); see also Visit Am., Inc. v. Visit Am., FA 95093
(Nat. Arb. Forum Aug. 14, 2000) (finding that the “.com” is part of the
Internet address and does not add source identity
significance).
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 filed a Response in this matter, the Panel
may presume it holds no such rights or 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).
Complainant asserts that Respondent has
not made any use of the disputed domain names, except to passively hold
them. In the absence of a contrary
claim, the Panel will accept Complainant’s assertion as true. 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”).
Because Respondent has made no use of the
disputed domain names, both of which were registered over a year ago, it is not
making a
bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use pursuant to Policy
¶ 4(c)(iii). See Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001)
(finding that no rights or legitimate interest can be found when Respondent
fails to use
disputed domain names in any way); see also 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).
There is also no evidence that Respondent
is commonly known by the disputed domain names pursuant to Policy ¶
4(c)(ii). Respondent is only known to
this Panel as DomainSource.com a/k/a Domain Source, Inc. 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, and that Respondent has no rights or legitimate interests
in respect of
the disputed domain names.
Registration and Use in Bad Faith
Respondent has registered at least two
domain names that incorporate Complainant’s FTD mark in its entirety. Such behavior demonstrates a bad faith
attempt to prevent Complainant from registering domain names that reflect its
FTD mark. See YAHOO!
Inc. v. Syrynx, Inc., D2000-1675
(WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii)
in Respondent's registration of two domain
names incorporating Complainant's
YAHOO! mark).
Further,
Respondent’s passive holding of the domain names suggests that it registered
the domain names for the purpose of selling
them to Complainant for profit or
to Complainant’s competitor to disrupt Complainant’s business. Such passive holding thus permits a finding
of bad faith 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 DCI S.A. v. Link
Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the
Respondent’s passive holding of the domain name satisfies the requirement of
¶
4(a)(iii) of the Policy).
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 <ftdflorist.com> and <flowersftd.com> domain names be transferred
from Respondent to Complainant.
James Alan Crary, Panelist
Dated: May 1, 2002
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