DECISION

Worldwide Creations, L.L.C.  d/b/a FlowerHouse v. Michel Shawah

Claim Number: FA0404000263421

PARTIES

Complainant is Worldwide Creations, L.L.C. d/b/a FlowerHouse (“Complainant”), represented by Marshall G. MacFarlane, of Young & Basile, P.C., Suite 301, 2001 Commonwealth Blvd., Ann Arbor, MI 48105.  Respondent is Michel Shawah (“Respondent”), P.O. Box 60290, Dammam, 31545, Saudi Arabia.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is  <flowerhouse.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.

Alan L. Limbury as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 28, 2004; the Forum received a hard copy of the Complaint on April 28, 2004.

On April 28, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain name <flowerhouse.com> is registered with Enom, Inc. and that the Respondent is the current registrant of the name.  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 May 4, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 24, 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@flowerhouse.com by e-mail.

A timely Response was received and determined to be complete on May 24, 2004.

On June 3, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The disputed domain name is identical to Complainant’s trademark FLOWER HOUSE, in which Complainant has rights. On March 16, 2004, for a consideration of $10 “and other good and valuable considerations,” Complainant became entitled, by way of assignment from Ameristep, Inc., to the entire right, title and interest in and to United States trademark applications 76/502,832 FLOWER HOUSE filed on March 17, 2003 and 76/525,210 SPRINGHOUSE filed on June 23, 2003, “together with the good will of the business symbolized by said marks, and the right to sue and recover for past infringements thereof.”  A TARR database search conducted by Complainant on April 12, 2004 revealed that the trademark FLOWER HOUSE was first used by Ameristep Inc. on August 1, 2003 in relation to fabricated greenhouses and that, as at March 31, 2004, the application had not been published for opposition.

A WHOIS search conducted by Complainant on April 12, 2004 revealed that Respondent registered the disputed domain name <flowerhouse.com> on December 2, 1999.

Respondent has no rights or legitimate interests in the disputed domain name because (i) in the four years since the disputed domain name was registered in December 1999, Respondent has still not developed the website at that address; (ii) Respondent has admitted that its plans for developing the website at that address presently exist only in its mind; and (iii) in November 2003, Respondent expressed willingness to part with its registration of the disputed domain name for the extortionate price of $10,000.

Respondent registered and has used the disputed domain name in bad faith because (i) Respondent has been sitting on the domain name for over four years without having developed a website at that address; (ii) it has similarly registered other domain names, such as <thepromoagency.com> and parked them in a state of disuse for a period of years, thereby establishing a pattern of acquiring and parking domain names for claimed later use or sale for profit; and (iii) Respondent offered to sell the disputed domain name to Complainant for $10,000 when it knew of Complainant’s interest in it. This represents a bad faith effort to profit unreasonably on the sale of the disputed domain name to Complainant.

B. Respondent

The disputed domain name was registered prior to Complainant’s trademark registration. Respondent was entitled to register the generic domain name <flowerhouse.com> when it did. The subsequent trademark registration does not entitle Complainant to take over a domain name registered five years ago.

Respondent has other generic domain names in the field of flowers, which have been generating income for it since 2001, namely <rosesandroses.com>, registered on September 6, 1999; <aflowergarden.com>, <mothersdayroses.com>, registered on April 3, 2000; <valentinesdayroses.com>, registered on February 25, 2000; <aflowerbud.com>,<bouquetdefleurs.com>,<fleurdamour.com> and  <zouhour.com>.

Complainant’s legal representative initiated discussion about price for the disputed domain name in October 2003.  Respondent asked for Complainant’s price. It offered $1,000. Respondent then suggested a price to ward off their repetitive initiatives.

FINDINGS

Complainant has failed to establish entitlement to the relief sought.

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.

Rights in a trademark

This is not the occasion on which to contribute further to the conflicting views amongst panelists as to whether a complaint should be summarily dismissed when the evidence discloses that the trademark rights did not exist at the time when the domain name was registered, or whether Paragraph 4(a)(i) simply requires trademark rights to exist prior to the filing of the complaint.  See, for the range of views: Abt Elecs., Inc. v. Motherboards.com, FA 221239 (Nat. Arb. Forum Feb. 20, 2004); Iogen Corp. v. IOGEN, D2003-0544 (WIPO Sept. 7, 2003); Chiappetta v. Morales, D2002-1103 (WIPO Jan. 20, 2003); Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001); Digital Vision, Ltd. v. Advanced Chemill Sys., D2001-0827 (WIPO Sept. 23, 2001); Firstgate Internet A.G. v. Soung, D2000-1311 (WIPO Feb. 28, 2001); eGalaxy Multimedia Inc v. T1, FA 101823 (Nat. Arb. Forum Dec. 23, 2001); Travant Solutions Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003); Firstgate Internet AG v Soung, D2000-1311 (WIPO Feb. 28, 2001) and Global Print Exch. Pte. Ltd. v. Soden, AF-0275 (eRes. Sept. 7, 2000).

The reason why it is inappropriate on this occasion to contribute further to that debate is that Complainant has failed to establish that it has any trademark rights at all.

Although Complainant’s counsel asserted to Respondent in September 2003 that Complainant is the “owner” of the trademark FLOWER HOUSE and has “common law trademark rights,” the Complaint neither asserts nor contains any evidence to support the existence in Complainant of common law rights in that mark. In particular, there is no evidence of any use by Complainant of that mark at any time.

Instead, the Complaint relies solely upon asserted trademark rights arising out of Complainant’s pending application to register the mark FLOWER HOUSE. However, for the purposes of the Policy, trademark registration applications do not give rise to trademark rights: Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001); Spencer Douglass MGA v. Absolute Bonding Corp., D2001-0904 (WIPO Sept. 5, 2001); Skate House Ltd. v. Wright, FA 128795 (Nat. Arb. Forum Jan. 3, 2003).

Under these circumstances, Complainant has failed to establish any trademark rights and the Complaint must be dismissed.

DECISION

Complainant having failed to establish any trademark rights as required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Alan L. Limbury, Panelist
Dated: June 17, 2004

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