DECISION

Florists' Transworld Delivery, Inc. v. Domain Strategy, Inc.

Claim Number: FA0205000113974

PARTIES

Complainant is Florists' Transworld Delivery, Inc., Downers Grove, IL, USA (“Complainant”) represented by Scott J. Major, of Millen, White, Zelano & Branigan, P.C.  Respondent is Domain Strategy, Bury, Qc, CANADA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ftdassociation.org>, registered with OnlineNIC.com.

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.

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 14, 2002; the Forum received a hard copy of the Complaint on May 15, 2002.

On May 16, 2002, OnlineNIC.com confirmed by e-mail to the Forum that the domain name <ftdassociation.org> is registered with OnlineNIC.com and that Respondent is the current registrant of the name.  OnlineNIC.com has verified that Respondent is bound by the OnlineNIC.com 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 May 17, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 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@ftdassociation.org 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 June 25, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) 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

1. Respondent’s <ftdassociation.org> domain name is confusingly similar to Complainant’s FTD mark.

2. Respondent does not have rights or legitimate interests in <ftdassociation.org>.

3. Respondent registered and used the <ftdassociation.org> domain name in bad faith.

B. Respondent failed to submit a Response.

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 U.S. Patent and Trademark Office (“USPTO”) 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 dollars 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 dollars.

Respondent registered the disputed domain name April 16, 2002. Until recently, the disputed domain name resolved to a pornographic website, whereas it currently leads to a page indicating that the DomainStrategy.com website is “coming soon.”

The subject domain name was originally registered to and used by FTD Association, a non-profit trade association affiliated with Complainant. Complainant effected what it thought was a proper renewal of the registration for the domain name. However, the renewal was later invalidated and Respondent secured its registration.

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 numerous countries, registration on the USPTO’s Principal Register and subsequent continuous use.

Respondent’s <ftdassociation.org> domain name includes Complainant’s FTD mark in its entirety, and merely adds the generic term “association” and top-level domain name “.org.” 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 <ftdassociation.org> domain name is confusingly similar to Complainant’s FTD mark. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also  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).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Because Respondent has not submitted a Response in this matter, the Panel may presume it has no rights or legitimate interests in respect of 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).

Given the popularity and notoriety of Complainant’s FTD mark, it seems unlikely that Respondent could have any rights or interests in a domain name incorporating the FTD mark. 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).

Respondent’s contested domain name currently leads to a page indicating that the website is “coming soon.” Respondent is not using, nor has Respondent made any demonstrable preparations to use the domain name or a name corresponding in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i). See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the Respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names).

Although Respondent has not provided evidence of present use of the disputed domain name Complainant has presented evidence that reveals that the contested domain name previously resolved to a pornographic website. Respondent’s actions do not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor do they represent a legitimate or fair use pursuant to Policy ¶ 4(c)(iii). See MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the Complainant’s mark); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use).

Respondent is not commonly known by “ftdassociation” or <ftdassociation.org> pursuant to Policy ¶ 4(c)(ii). Respondent is not an authorized agent or a licensee of Complainant. 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 Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the domain name <greatsouthernwood.com> where Respondent linked the domain name to <bestoftheweb.com>).

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

Because of the famous and distinctive nature of Complainant’s FTD mark, its listing on the USPTO’s Principal Register and Complainant’s continuous subsequent use since 1910, Respondent is thought to have had constructive notice as to the existence of Complainant’s mark at the time Respondent registered the infringing <ftdassociation.org> domain name. Because Respondent knew of Complainant’s trademark and preexisting rights, its registration and use of the contested domain name for commercial gain suggests opportunistic bad faith. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); 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); see also Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name).

Complainant has produced uncontested evidence that Respondent’s website originally resolved to a pornographic website. Respondent’s tarnishing of Complainant’s FTD mark by creating a perceived affiliation with pornography constitutes bad faith under Policy ¶ 4(a)(iii). Respondent undoubtedly monetarily benefited from the intentional diversion of Internet users. Respondent’s actions also constitute bad faith under Policy ¶ 4(b)(iv). See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that the association of a confusingly similar domain name with a pornographic website can constitute bad faith); see also CCA Indus., Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000) (finding that “this association with a pornographic web site can itself constitute bad faith”).

Complainant previously held the contested domain name before an inadvertent error allowed the registration to lapse. Respondent apparently took advantage of the presented opportunity and immediately registered the lapsed domain name. Respondent’s opportunistic actions exhibit bad faith under Policy ¶ 4(a)(iii). See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (finding that where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary); see also BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where Respondent took advantage of the Complainant’s failure to renew a domain name).

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 <ftdassociation.org> domain name be TRANSFERRED from Respondent to Complainant.

                                                                                                Judge Harold Kalina (Ret.), Panelist

Dated:  June 27, 2002

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