DECISION

Florists' Transworld Delivery, Inc. v. BBIKOREA

Claim Number: FA0204000109572

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 BBIKOREA, Nam-gu, Pohang, Gyungbuk, KOREA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <phftd.com>, registered with Tucows, 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 April 12, 2002; the Forum received a hard copy of the Complaint on April 12, 2002.

On April 12, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <phftd.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name.  Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 April 15, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 6, 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@phftd.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 May 16, 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 name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The disputed domain name <phftd.com> is confusingly similar to FTD, a registered mark in which Complainant holds rights.

Respondent has no rights or legitimate interests in the disputed domain name.

Respondent registered and used the 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 in typed form for a wide range of products and services, registered on the Principal Register of the United States Patent and Trademark Office as Reg. No. 1,576,429, on January 9, 1990.  Also, Complainant has registered the FTD mark and “Mercury Man” emblem in conjunction with the United States Patent and Trademark Office as Reg. No. 821,318, on December 26, 1966.  Furthermore, Complainant asserts that the FTD mark has developed into one of the world’s most powerful commercial symbols. 

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 florist 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 November 6, 2001, and uses the website to sell flowers in competition with Complainant and as a means to link to other florist sites.

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 suffix “.com” and letters “ph.”  The use of “.com” as a generic top-level domain (“gTLD”) does not alter the impression of the mark so as to defeat a claim of confusing similarity.  See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants").

The mere addition of letters to a distinct and unique trademark does not defeat a confusing similarity claim.  See America Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com> are confusingly similar to Complainant’s mark, ICQ); see also Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR) (finding that <kelsonmd.com> is identical or confusingly similar to Complainant’s federally registered service mark, KELSON).  In addition, Complainant asserts that the letters “ph” may be an abbreviation for the city of Pohang, which is where Respondent is located.  The addition of a geographic location, however, does not defeat a confusing similarity claim.   See VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between the Complainant’s VERISIGN mark and the <verisignindia.com> and <verisignindia.net> domain names where Respondent added the word “India” to Complainant’s mark).

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).

Respondent’s use of the disputed domain name is an attempt to trade on Complainant’s reputation and fame.  This is due to the fact that Respondent uses the disputed domain name to sell flowers in competition with Complainant, which is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).  Respondent does not have legitimate interests in the disputed domain name, which incorporates Complainants trademark, when using it to compete with Complainant.  See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business”); see also Chip Merchant, 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).

There is 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 BBIKOREA and/or “Flower7942.com.”  Respondent, therefore, has no rights to the disputed domain name.  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).

Also, Respondent is not using the domain name in connection with legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  Respondent’s purpose is to divert consumers, because Respondent uses the disputed domain name to guide users to its flower business.  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 Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D.Mass 2002) (finding that, because the Respondent's sole purpose in selecting the domain names was to cause confusion with the Complainant's website and marks, it's use of the names was not in connection with the offering of goods or services or any other fair use).

The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name; 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.  Since the disputed domain name is substantially similar to Complainant’s FTD mark, Respondent’s registration and use of the disputed domain demonstrate bad faith because the domain name will confuse consumers for commercial gain.  Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).

Respondent uses the <phftd.com> website to confuse consumers and ultimately divert users to a site promoting Respondent’s flower business.  Such use of the disputed domain name is evidence of bad faith according to Policy ¶ 4(b)(iv).  See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with the Complainant’s mark and offering the same chat services via his website as the Complainant).

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 <phftd.com> domain name be transferred from Respondent to Complainant.

James Alan Crary, Panelist

Dated: May 22, 2002

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2002/752.html