DECISION

Teleflora LLC v. Registrant (187640) info@fashionid.com +1.25255572 Registrant

Claim Number:  FA0409000320376

PARTIES

Complainant is Teleflora LLC (“Complainant”), represented by William B. Colitre, 16161 Ventura Blvd., Suite 712, Encino, CA 91436.  Respondent is Registrant (187640) info@fashionid.com +1.25255572, KCPO, Hong Kong, Hong Kong, HK 852 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <telefora.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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 1, 2004; the Forum received a hard copy of the Complaint on September 2, 2004.

On September 2, 2004, Onlinenic, Inc. confirmed by e-mail to the Forum that the domain name <telefora.com> is registered with Onlinenic, Inc. and that 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 September 3, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 23, 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@telefora.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 October 4, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (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 makes the following assertions:

1. Respondent’s <telefora.com> domain name is confusingly similar to Complainant’s TELEFLORA mark.

2. Respondent does not have any rights or legitimate interests in the <telefora.com> domain name.

3. Respondent registered and used the <telefora.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Teleflora LLC, is a floral delivery clearinghouse and wire service with a large network of florists.  Complainant first registered the TELEFLORA family of marks on September 1, 1964 with the U.S. Patent and Trademark Office (“USPTO”) (Reg. No. 776,336).  Complainant extensively advertises its mark, including regular advertisements in newspapers and serials.

Respondent registered the <telefora.com> domain name on January 25, 2002.  The website at the <telefora.com> domain name lists a directory of flower delivery websites, including Complainant’s affiliates and competitors. 

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 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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 rights in the TELEFLORA mark through registration with the USPTO, pursuant to Policy ¶ 4(a)(i).  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

Respondent’s <telefora.com> domain name is confusingly similar to Complainant’s TELEFLORA mark.  The only difference is the omission of the second letter “L,” which does not significantly distinguish the domain name from the mark.  See State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to Complainant’s STATE FARM mark); see also Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to Complainant’s HEWLETT-PACKARD mark).

The Panel finds that Complainant has established Policy ¶ 4(a)(i)

Rights or Legitimate Interests

Respondent has not filed a Response in this matter.  The Panel finds that it may accept all reasonable assertions by Complainant to be 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.”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent is using the <telefora.com> to list Complainant’s competitors and affiliates in a directory page.  Appropriating someone else’s mark for the purpose of a directory or comparison shopping website is not a bona fide offering of goods or services, pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name, pursuant to Policy ¶ 4(c)(iii).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Winmark Corp. v. In The Zone, FA 128652 (Nat. Arb. Forum Dec. 6, 2002) (finding that Respondent had no rights or legitimate interests in a domain name that used Complainant’s mark to redirect Internet users to a competitor’s website).

There is nothing in the record, including Respondent’s WHOIS domain name registration information, which indicates that Respondent is commonly known by the disputed domain name.  Absent this information, the Panel concludes that Respondent is not commonly known by the <telefora.com> domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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 Complainant has established Policy ¶ 4(a)(ii)

Registration and Use in Bad Faith

Respondent is appropriating Complainant’s mark to lead Internet traffic to Complainaint’s competitors and affiliates.  Appropriating another’s mark to lead customers to its competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Gen. Media Communications, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor of Complainant registered and used a domain name confusingly similar to Complainant’s PENTHOUSE mark to host a pornographic web site); see also Nokia Corp. v. Lakhani, D2000-0833 (WIPO Oct. 19, 2000) (transferring <nokias.com> from Respondent cellular phone dealer to Complainant).

In addition, because Respondent’s <telefora> domain name only differs from Complainant’s TELEFLORA by one letter, the Panel infers that Respondent is creating Internet traffic by relying on Internet users to misspell Complainant’s mark.  Creating traffic on its website by relying on Internet users’ typographical errors is called “typosquatting,” and is evidence of bad faith registration and use.  See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (finding that Respondent registered and used the <zonelarm.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because the name was merely a typosquatted version of Complainant's ZONEALARM mark); see also K.R. USA, Inc. v. So So Domains, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names were typosquatted versions of Complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks, and “the very practice of typosquatting, in which Respondent has engaged, has been deemed behavior in bad faith").

The Panel finds that Complainant has established Policy ¶ 4(a)(iii)

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 <telefora.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  October 15, 2004

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