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Generic Top Level Domain Name (gTLD) Decisions |
Interflora, Inc. v. Paul Bryan c/o
efloristsRus.com
Claim Number: FA0407000301386
PARTIES
Complainant
is Interflora, Inc. (“Complainant”),
represented by Scott J. Major of Millen, White, Zelano & Branigan, P.C.,
2200 Clarendon Boulevard, Suite 1400, Arlington, VA 22201. Respondent is Paul Bryan c/o
efloristsRus.com (“Respondent”), P.O. Box 142, West Perth, Western
Australia 6872.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <interfloraaustralia.com>,
registered with Onlinenic, 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.
Dennis
A. Foster as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 21, 2004; the Forum received
a hard copy of the
Complaint on July 22, 2004.
On
July 22, 2004, Onlinenic, Inc. confirmed by e-mail to the Forum that the domain
name <interfloraaustralia.com>
is registered with Onlinenic, Inc. and that the Respondent is the current
registrant of the name. Onlinenic, Inc.
has verified that Respondent is bound by the Onlinenic, 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
July 27, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of August 16,
2004 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@interfloraaustralia.com by e-mail.
A
timely Response was received and determined to be complete on August 12, 2004.
A
timely Additional Submission was received from Complainant on August 17, 2004.
A
timely Additional Submission was received from Respondent on August 18, 2004.
On August 26,
2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Dennis A. Foster as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
--As
part of its international association services, Complainant operates and
maintains a computerized clearinghouse that permits
its members to send, accept
and/or deliver flowers, floral arrangements, floral emblems, fruits and gifts
from or to customers in
distant geographic locations. Complainant's computerized clearinghouse processes, funds,
exchanges and credits amongst and between florists--both internationally
and in
the United States.
--In
addition, Complainant prepares the advertisements to promote the purchase of
floral arrangements from florists.
--The
INTERFLORA mark is Complainant's most significant asset. Complainant owns all right, title and
interest in and to the mark and has registrations for the mark in most major
jurisdictions. Its portfolio includes
an incontestable registration in the United States for association services,
clearinghouse services, and floral
product catalogs (U.S. Reg. No. 1,519,789;
copy of online record of the United States Patent and Trademark Office attached
as Exhibit
5), and a registration for the INTERFLORA mark in the European Union
covering seven international classes of goods and services (CTM
Reg. No. 909,
838; copy of the online record of the European Union's Office for Harmonization
attached as Exhibit 6).
--Complainant
has spent millions to market and promote the INTERFLORA mark and the goods and
services offered thereunder. As a
result of its substantial efforts, Complainant has been able to preserve the
unique and distinctive character of its mark.
--The
disputed domain name <interfloraaustralia.com> is at least
confusingly similar to Complainant's unique, highly distinctive and famous INTERFLORA
mark.
--If
the domain name at issue incorporates a complainant's distinctive mark in its
entirety, there is "sufficient similarity
between the mark and the domain
to render it confusingly similar."
Eauto, LLC v. Triple S Auto Parts
d/b/a Kung Fu Yea Enterprises, Inc., D2000-0047 (WIPO Mar. 24, 2000)
(finding the domain name <eautolamps.com > confusingly similar to the
EAUTO mark).
--A
finding of confusing similarity is particularly appropriate where the
second-level domain for the contested domain name comprises
the complainant's
mark in combination with a descriptive or generic term. AltaVista Company v. S.M.A., Inc., D2000-0927 (WIPO Oct. 4, 2000)
(finding the domain name <altavistausa.com> and Complainant's ALTAVISTA
mark confusingly similar;
the addition of the geographic descriptor
"USA" was deemed to have "little, if any, legal
significance").
--In
this instance, the disputed domain name incorporates the unique, famous and
highly distinctive INTERFLORA mark in its entirety. This alone is sufficient to support a finding of confusing
similarity.
--Moreover,
the term "Australia" is merely a geographic descriptor. The addition of this word and the top-level
domain ".com" to the INTERFLORA mark does not alter its overall
commercial impression
in any meaningful way.
--The
UDRP sets forth a list of circumstances that can demonstrate a right or
legitimate interest in a disputed domain name.
None of these circumstances is present in this case. Accordingly, the Panel must conclude that Respondent
has no right or legitimate interest in the disputed domain name.
--The
only "use" of the disputed domain name by Respondent to date is in
connection with a web site promoting its retail
floral services. As Respondent is not a member of Complainant's
network, the only plausible explanation for Respondent's registration and use
of the
disputed domain name in this manner is that it constitutes an
unauthorized attempt to trade on Complainant's reputation and fame. This cannot constitute a bona fide offering of goods or
services. See Madonna Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000). To conclude otherwise would be to permit a
respondent to "rely on intentional infringement to demonstrate a
legitimate interest,
an interpretation that is obviously contrary to the intent
of the [UDRP]".
--Finally,
the only other way this limb of the test under the UDRP could favor Respondent
is if it shows that it has made legitimate
non-commercial or fair use of the
domain name, without intent for commercial gain or to misleadingly divert
consumers or to tarnish
the mark at issue, pursuant to Policy paragraph
4(c)(iii). Respondent recently
deactivated the disputed domain name.
When it was active, its use was in connection with a retail floral web
site. Such use obviously was neither
non-commercial nor "fair."
Rather, Respondent was attempting to divert consumers to its site by
improperly using the INTERFLORA mark in the domain name. In summary, Respondent has no right or
legitimate interest in the disputed domain name.
--The
requisite bad faith is present where a respondent registers a domain name
primarily for the purpose of disrupting the business
of a competitor, pursuant
to Policy paragraph 4(b)(iii). The
disputed domain name directed web users to <efloristsrus.com> (copy of
home page attached as Exhibit 11). This
site promotes a floral business that is not licensed by, or otherwise
affiliated with, Complainant. Indeed,
it competed directly with Complainant and, in particular, its national unit in
Australia and the members thereof. This
alone is sufficient to establish that Respondent has registered and used the
domain name in bad faith.
--A
respondent also exhibits bad faith where it uses the pertinent domain name to
intentionally attempt to attract, for commercial
gain, Internet users to its
website by creating a likelihood of confusion with the complainant's mark as to
the source, sponsorship,
affiliation, or endorsement of respondent's website,
pursuant to Policy paragraph 4(b)(iv).
Respondent clearly is engaging in this practice. In this regard, the use of the domain name,
which is confusingly similar to the INTERFLORA mark, at a minimum is sufficient
to give
rise to initial interest confusion.
Brookfield Communications v. West
Coast Entertainment Corp., [1999] USCA9 225; 174 F. 3d 10, 50 USPQ2d 1545, 1559 (9th
Cir. 1999).
--Any
initial interest confusion was likely to yield a more traditional form of
confusion when the domain name directed a web user
to Respondent's retail
floral site at <efloristsrus.com>.
The content of the site is such that there is no reason to doubt that
the disputed domain name was registered and used by Respondent
in a deliberate
attempt to confuse web users, for its own commercial gain, into believing
mistakenly that the site to which the disputed
domain name led, and the
products and services promoted therein, derive from, are sponsored or endorsed
by, or are affiliated with
the owner of the INTERFLORA mark.
--A
finding of bad faith also is required where there is no plausible explanation
for the registration of a domain name other than
to trade on the goodwill of
the complainant. See Yahoo!Inc. v. Cupcakes, D2000-0777 (WIPO
Oct. 2, 2000).
B.
Respondent
--Respondent
designs and promotes transaction-based websites for florists across
Australia. Many of these members are
also members of INTERFLORA AUSTRALIA, as Complainant is well aware, therefore
Respondent believes they have
a legitimate right to use the domain name in
directing transactions to INTERFLORA members in Australia.
--Respondent
is of the opinion Complainant is bringing this dispute to the attention of the
NAF in order to discover the methods of
Respondent's transacting systems so as
to either restrict Respondent's ability to trade or to develop similar
processes.
--On
receipt of correspondence from Complainant (Exhibit 1) to desist using the
disputed domain name, Respondent replied in good faith
and took a considered
decision and made an offer for the disputed domain name to be transferred
without any cost to Complainant.
Complainant subsequently issued an order, demanding US$20,000 with the
condition that should the amount not be paid within 4 days,
legal action to the
full weight of the law would be pursued (Exhibit 3).
--Respondent
is fully aware of the trademarks held by Complainant. Respondent has not intentionally used the disputed domain name
for the purpose of gaining benefit nor has Respondent directly used
the
disputed domain name for confusing customers into attracting them to the
<efloristsrus.com> web site. It
must be noted that there is no reference anywhere on the
<efloristsrus.com> website implying or inferring to the general
public
that <efloristsrus.com> is in any way associated with Complainant. The main purpose of the
<efloristsrus.com> business is to re-direct transactions to
<efloristsrus.com> member's web sites,
with the majority of these
Respondent members being members of INTERFLORA in Australia. Precise statistics can be provided under a
confidentiality agreement.
--Minimum
searching by Respondent of the registered domain names that Complainant
apparently so vigorously protects, clearly illustrates
an extraordinary number
of examples using in part INTERFLORA or trademarks owned by Complainant, see
Exhibit 5. Respondent submits that the
domain names listed in Exhibit 5 appear to all be owned by entities other than
Complainant. Respondent therefore
submits that a website containing sequential letters such as
"interflora" do not constitute a breach
of the trademark as it is
obvious from this long list, that the "public" use of the sequential
letters "interflora"
is commonly used throughout the world wide web.
--Respondent
is of the opinion it has every right to the interest and exclusive ownership of
the disputed domain name. The domain name
assists in the re-directing of transactions to Interflora Australia web
sites.
--Complainant
states that the registration of the disputed domain name was for the purpose of
disrupting their business. This is
definitely not the case. Again, we restate
that the domain name had sat idle and not even registered for approximately
seven years by anyone, let alone Complainant
that claims it so fiercely
protects its trademark.
--In
fact, the confidential statistics will demonstrate that Interflora Australia
members have benefited greatly from being involved
in the business processes of
Respondent. Respondent whole-heartedly
rejects Complainant's suggestion that its business has been damaged. Respondent is confident that an independent
survey of Interflora Australia members who utilize Respondent's business
systems and methods
will whole-heartedly support and verify this claim in its
entirety.
--Complainant
also states that Respondent's website promotes a floral business that is not
licensed by, or otherwise affiliated with,
Complainant. Respondent agrees with this, i.e.,
Respondent's web site does not in any way whatsoever refer directly to
Complainant (Complaint Exhibit
11).
Therefore, Respondent certainly is not using the disputed domain name in
bad faith.
--When
Complainant was offered that the disputed domain name be transferred to it,
Complainant refused to accept Respondent's offer
without substantial financial
payment. This would indicate that
Complainant is not interested in the disputed domain name, only a
non-justifiable and unsubstantiated settlement
fee which is an attempt to
substantially compromise the financial stability of Respondent and the
sustainability of Respondent's
company.
--It
also appears from the anomalies in Exhibit 5 that Complainant is targeting only
Respondent's site and remaining silently passive
on others. Certainly this is a questionable practice
and one that needs to be viewed with skepticism.
--Respondent
is not yet a giant in the Internet trading space, but it is obvious from the
aggression of Complainant that they feel
threatened by the innovation and
overwhelming acceptance of Respondent's systems by the florists of Australia,
including many Interflora
florist members of Australia. Respondent is confident that they are
providing services that users and Interflora Australia members have been
longing for.
--Respondent
requests that this matter be dismissed and that the Panel recommend the disputed domain name not be transferred
to the Complainant.
C.
Additional Submissions
--Respondent
raises claims that have no relevance to any of the Policy elements. For example, it alleges that Complainant
initiated this proceeding under the Policy for the purpose of gathering information
about
Respondent's business methods, and that Complainant is seeking to
restrict trade.
--Complainant
also notes that Respondent's inclusion of settlement correspondence among
exhibits to its Response is inappropriate.
Such evidence should not be considered, as its admission would conflict
with the public policy of encouraging "parties to settle
their disputes
amicably by keeping confidential between them all evidence of their settlement
negotiations." Am. Online, Inc. v. Popixel Art,
D2001-0957 (WIPO Nov. 20, 2001).
--Respondent's
principal argument on the merits appears to be that it is entitled to use the
INTERFLORA mark in a domain name because
it allegedly provides services and
"directs transactions" to some Australian businesses that are members
of Complainant's
worldwide floral network.
This is entirely devoid of merit.
The members of the INTERFLORA network use the mark under license. Respondent has no such authorization. The fact that some of its clients may be
making legitimate use of the INTERFLORA mark certainly does not give Respondent
the right
to register and use to its own commercial advantage a domain name
that includes this valuable mark.
--Respondent
also points to third-party INTERFLORA domain name registrations and the fact
that Complainant had not registered the
domain name earlier as supportive of
its position. This is not the
case. Regarding the latter claim,
Complainant is under no obligation to register every possible domain name
permutation of the INTERFLORA
mark. With respect to the third-party domain registrations, Complainant
has not researched each of these. It is
confident that many, if not all, are registered to unrelated entities or
individuals. Respondent should not be permitted to
benefit from the transgressions
of others, and such information would not tilt the balance in favor of
Respondent on any of the UDRP
elements.
--Respondent
alleges as proof of its lack of bad faith that there is "no reference
anywhere on the <efloristsrus.com> website
implying or inferring to the
general public that the Respondent is in any way associated with Interflora
whatsoever." The lack of such a
reference on its website would not refute the overwhelming evidence of bad
faith. More important, this statement
by Respondent is blatantly false. The
metatags for the <efloristsrus.com> website include the INTERFLORA
trademark (printout attached as Exhibit 12, and supported
by Supplemental
Declaration of Scott J. Major). This is
an obvious attempt by Respondent to enhance the potential for consumer
confusion as to whether there is an association between
its business and the
owner of the INTERFLORA mark. Such use
of the mark is additional evidence of Respondent's bad faith. Microsoft
Corp v. Montrose Corp., D2000-1501 (WIPO Jan. 25, 2001).
--Respondent
notes that Complainant pleads for the exclusion of the settlement
correspondence and regards the inclusion of said correspondence
as not in the
interest of "parties settling disputes amicably." Respondent believes that what all this
correspondence really does is present the "real" picture in its
entirety.
--As
for the use of metatags in web sites, as Complainant should be aware, customers
definitely do not purchase products by analyzing
what metatags are being
utilized by the respective website and that is "drawing a long bow"
even assuming customers knew
how to analyze or access metatags.
FINDINGS
Complainant owns the trademark INTERFLORA
in the United States and many other countries, and uses it, directly or through
licensees,
all over the world for the delivery of flowers, floral arrangements,
and similar goods. Complainant has been
in this business over 50 years, and the INTERFLORA trademark is well-known all
over the world.
Respondent registered the disputed domain
name, <interfloraaustralia.com> on February 3, 2004. Respondent uses it to steer Internet users
to Complainant’s licensees in Australia, to Respondent’s website
<efloristsrus.com>,
and to competitors of Complainant and its licensees
in Australia.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
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;
(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.
Complainant has exhibited a copy of its
United States trademark registration for the name INTERFLORA, no. 1519789,
dated January 10,
1989 (Complaint Exhibit 5).
It is in international class 35 and includes the electronic transmission
of purchase orders for flowers.
Complainant also has exhibited the data for its INTERFLORA and FLEURIN
registrations all over the world (Complaint Exhibits 6 and
7) in countries such
as the Philippines, Japan and in the European Union member countries. Interestingly, and as the Respondent points
out, Complainant has not registered INTERFLORA in Australia, but rather the
French version
of this trademark, FLEURIN.
Complainant claims to have licensed various licensees to register and
use INTERFLORA in Australia, but Complainant has not troubled
itself to exhibit
a license agreement.
Respondent is located in Australia, and
has stated that its clientele is Australian. The disputed domain name <interfloraaustralia.com>
also leads the Panel to believe the clientele for the domain name is primarily
Australian. However, the Internet is at
once a national and an international medium, and Complainant's registrations
and use of its INTERFLORA
trademark are so international and ubiquitous that
the Panel does not doubt that Complainant's INTERFLORA trademark is well known
in Australia. Also, Response Exhibit 1
shows Complainant's Australian affiliate, Interflora Australian Unit Limited,
wrote to Respondent on June
22, 2004 to complain that Respondent's disputed
domain name infringed the affiliate’s trademark rights.
Having decided Complainant does have
trademark rights in the name INTERFLORA, the Panel must decide whether the
disputed domain name
<interfloraaustralia.com> is identical or confusingly similar to
Complainant's trademark. The Panel
agrees with Complainant that the disputed domain name <interfloraaustralia.com>
is confusingly similar to Complainant's trademark, INTERFLORA, because
Respondent has only added a geographic name, Australia, used
in its geographic
sense. It is widely recognized under
the Policy that this type of addition does not create a new, distinctive name. On the contrary, Respondent's disputed
domain name <interfloraaustralia.com> merely leads the public to
believe Respondent is the Australian branch of Complainant. The Panel therefore finds Complainant has
carried its burden of proof under Policy paragraph 4(a)(i). See, e.g., CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding the
domain name <cmgiasia.com> confusingly similar to the Complainant's CMGI
trademark);
see also AltaVista Company v.
S.M.A., Inc., D2000-0927 (WIPO Oct. 4, 2000) (stating that adding “USA” to
a trademark does not create a new, distinctive name).
Complainant asserts it has licensed its
INTERFLORA trademark to various business partners in Australia, but that
Respondent is not
among them. For its
part, Respondent contends it does have rights and legitimate interests in the
disputed domain name per paragraph 4(c)(i) of
the Policy. That is to say, Respondent contends that,
before it received notice of this dispute, it had already begun making a bona
fide offer
of goods and services to Complainant’s affiliates in Australia and
to other floral businesses.
In the Respondent's own words,
The
Respondent utilises this domain name to re-direct transactions to INTERFLORA
AUSTRALIA customers. The Respondent has
been authorised by INTERFLORA members in Australia to assist them in promoting
their internet trading. These members
are independent members of INTERFLORA AUSTRALIA and as such have legitimate
right to transact on the internet using
this domain name.
Respondent offers no proof that the
either Complainant or one of its licensees in Australia licensed Respondent to
use Complainant's
trademark that has been in constant international use for
over a half century. Furthermore,
Respondent readily acknowledges that it knew of Complainant's trademark when it
registered the disputed domain name.
Thus, Respondent not being authorized to use Complainant's trademark,
and Respondent being well aware of Complainant's trademark rights
when
Respondent registered the disputed domain name, the Panel finds Respondent
could not have been making a bona fide
offering of its goods and services. The
Panel believes Respondent is being deceptively disingenuous when it claims it
has a right to use Complainant’s trademark without
permission. Respondent is, in effect, posing as
Complainant’s licensee and at times funnels business to Complainant’s
competitors (Complaint Exhibit
11 and Response Exhibit 6).
The Panel finds the Complainant also has
carried its burden of proof, under paragraph 4(a)(ii) of the Policy, to show
that Respondent
has no legitimate rights or interests in the disputed domain
name.
Complainant asserts several grounds under
which Respondent registered and is using the disputed domain name in bad faith,
i.e., in
violation of the Policy at paragraph 4(a)(iii).
Initially, Complainant states Respondent
registered the disputed domain name primarily for the purpose of disrupting
Respondent’s
business, in violation of the Policy at paragraph 4(b)(iii). However, the Panel does not find this to be
so. On the contrary, Respondent does
not seek to disturb Complainant’s business, but instead wants to meld into the
business of Complainant
and its affiliates in Australia. While it is true that Respondent uses the
disputed domain name to direct the public to licensees of Complainant as well
as competitors
of Complainant’s licensees, it does not appear to the Panel that
Respondent’s primary goal is to disrupt Complainant’s business.
The Panel does however agree with
Complainant that Respondent has registered and is using the disputed domain
name in violation of
the bad faith provisions of the Policy at paragraph
4(b)(iv). Respondent is well aware that
the disputed domain name will lead the public to believe it is affiliated with
Complainant and Complainant’s
Australian licensees, and Respondent seeks to
gain commercially from this confusing similarity. See G.D. Searle & Co.
v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum, Nov. 21, 2002) (finding
bad faith where Respondent directed Internet users seeking Complainant’s web
site to its own web site for commercial gain); see also CMG Worlwide, Inc. v. Lombardi, FA 95966 (Nat. Arb. Forum Jan. 12,
2001) (finding that Respondent’s use of the VINCE LOMBARDI trademark to divert
Internet users to
its commercial website constituted bad faith use and
registration of the disputed domain name).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <interfloraaustralia.com> domain
name be TRANSFERRED from Respondent
to Complainant.
Dennis A. Foster, Panelist
Dated: September 7, 2004
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