DECISION

Best Web Resources, Inc. v. Floral Craft, Inc.

Claim Number: FA0404000264403

PARTIES

Complainant is Best Web Resources, Inc. (“Complainant”), represented by Judd Aronowitz, 1570 Madruga Ave., Suite 311, Coral Gables, FL 33146.  Respondent is Floral Craft, Inc. (“Respondent”), represented by Corby D. Bell, 1660 S. Stemmons Frwy, Suite 300, Lewisville, TX 75067.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <bestflowersonline.com>, registered with Domaindiscover.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

David E. Sorkin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 30, 2004; the Forum received a hard copy of the Complaint on May 3, 2004.

On April 30, 2004, Domaindiscover confirmed by e-mail to the Forum that the domain name <bestflowersonline.com> is registered with Domaindiscover and that Respondent is the current registrant of the name.  Domaindiscover has verified that Respondent is bound by the Domaindiscover 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@bestflowersonline.com by e-mail.

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

Complainant submitted a proposed Additional Submission on June 1, 2004.  The Panel has considered this submission to the extent that its contents could not reasonably have been included in the initial Complaint.

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

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant asserts that it possesses common law trademark rights in “Best Flowers,” “Best Flowers.com,” “BestFlowers.com,” and several related marks; and, with predecessors in interest, has owned and used the domain name <bestflowers.com> continuously since 1997.  Complainant has registered several of its common law marks as fictitious names in the State of Florida, and has invested over $750,000 in developing and promoting its online business at <bestflowers.com>.  Complainant alleges that the disputed domain name <bestflowersonline.com> is confusingly similar to <bestflowers.com>.  The disputed domain name was registered to Complainant from 1999 until 2002, when the registration was inadvertently permitted to lapse, and the name was then registered by Respondent in June 2002.

Complainant further alleges that Respondent lacks rights or legitimate interests in the disputed domain name, that Complainant’s rights in the name predate Respondent’s registration of the domain name, and that Respondent had an affirmative duty not to infringe Complainant’s rights in the name.  Complainant asserts that Respondent does business as Floral Craft, Inc.; Shaw Florist, Inc.; or Greg MacMillan; that Respondent is not commonly known by the name <bestflowersonline.com>; and that Respondent’s interchangeable use of these names is confusing to consumers.  Complainant alleges that the value of the disputed domain name derives from its similarity to Complainant’s mark, and that Respondent’s use of the disputed domain name has tarnished Complainant’s reputation and caused consumer confusion.

As to bad faith, Complainant contends that Respondent knew or should have known of Complainant’s prior registration and use of the disputed domain name, and has continued to use the name despite being aware of Complainant’s position regarding Respondent’s alleged infringement of Complainant’s trademark rights.  Complainant states that Respondent must have been aware of Complainant’s reputation when Respondent selected the disputed domain name, and alleges that Respondent selected the name in order to capitalize on Respondent’s reputation and goodwill.

B. Respondent

Respondent has been in business as a florist since 1967, and states that since 2001 it has sought to acquire “domain names of a generic nature” in order to market its services.  Since acquiring the disputed domain name <bestflowersonline.com> in 2002, Respondent has invested over $700,000 in advertising related to that name.

Respondent contends that the disputed domain name is not confusingly similar to Complainant’s mark, asserting that a very small number of instances of actual confusion is insufficient to prove confusing similarity, and that the domain name and trademark must be considered in their entirety in order to determine the question of confusing similarity.  Respondent argues that Complainant lacks sufficient trademark rights in the term “Best Flowers,” contending that this is a generic term for retail services featuring the sale of flowers and therefore is not protectible.  Respondent points to numerous third party uses of the term “best flowers” in support of this claim.  Respondent further contends that Complainant has failed to demonstrate that its claimed mark has in fact acquired secondary meaning in the marketplace.

Respondent alleges that it has used the disputed domain name in connection with a bona fide offering of goods or services since before October 2002, when it first learned of the present dispute, and thereby has acquired rights or legitimate interests therein.  Respondent contends that, even if Complainant had at one time held a domain name registration for the disputed domain name, it never actually used the term “Best Flowers Online” in commerce.

Respondent denies that it registered or has used the disputed domain name in bad faith, and states that it had not even heard of Complainant at the time it registered the name.  Respondent contends that none of the bad faith criteria set forth in Paragraph 4(b) of the Policy are applicable here.

C. Additional Submission

In its Additional Submission, Complainant alleges (inter alia) that Respondent’s online business grew exponentially after Respondent began using the disputed domain name; that this growth was the result of Respondent’s taking advantage of Complainant’s goodwill and reputation rather than Respondent’s marketing expenditures; and that this growth demonstrates the strength and secondary meaning of Complainant’s mark.  Complainant also states that it did not actively use the disputed domain name during the period that it was registered to Complainant, and that “by excluding that domain name from commerce on the Internet [Complainant] only strengthened its primary domain name BestFlowers.com.”

FINDINGS

The Panel finds that Complainant has failed to sustain its burden of proof on any of the three elements set forth in Paragraph 4(a) of the Policy.

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.

Identical and/or Confusingly Similar

Common law trademark rights are sufficient to support a complaint under the Policy, but the complainant bears that burden of proving such rights.  (The issue here is not whether the claimed mark is weak or strong, but whether there is sufficient evidence of a mark in the first place.)  Under the present circumstances, the Panel is of the view that Complainant has failed to prove that it possesses common law trademark rights in “Best Flowers,” “BestFlowers.com,” or its other claimed marks.  Cf., e.g., Supremo n.v./s.a v. Tella, D2001-1357 (WIPO Feb. 15, 2002) (finding that Complainant failed to prove common law rights in “Supremo”); EMONEY GROUP Inc. v. eMoney, FA 96337 (Nat. Arb. Forum Mar. 26, 2001) (finding that the claimed mark “EMONEY” was generic and had not acquired secondary meaning).

Although the disputed domain name is quite clearly confusingly similar to “Best Flowers” and “BestFlowers.com,” Complainant has failed to prove that it has trademark rights in those terms (or its other claimed common law marks), and therefore its case fails on the first element.

Rights or Legitimate Interests

It appears to the Panel that Respondent has made legitimate and bona fide use of the domain name for its retail florist business, and that this use predates any notice of the present dispute.  At most Complainant’s challenge represents a legitimate dispute over trademark rights rather than a blatant case of infringement; in fact, it appears to this Panel that Respondent would likely prevail in a trademark action.  In any event, this forum is designed for clear cases of cybersquatting rather than legitimate trademark disputes.  See Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy (Oct. 24, 1999), <http://www.icann.org/udrp/udrp-second-staff-report-24oct99.htm>, ¶ 4.1(c) (noting that “the policy’s administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute (and may ultimately be found to violate the challenger's trademark)”).

The Panel therefore concludes that Complainant has failed to meet its burden of proving a lack of rights or legitimate interests. 

Registration and Use in Bad Faith

The Panel accepts Respondent’s claim that it registered and is using the disputed domain name for its generic sense, and considers implausible Complainant’s allegation that Respondent was instead motivated by a desire to exploit Complainant’s reputation and goodwill.  Furthermore, if Complainant’s prior registration of the disputed domain name is relevant, it tends to support Respondent’s position more than Complainant’s.  If Respondent had been aware of the previous registration, it might quite reasonably have assumed that Complainant had intentionally abandoned the domain name—especially where, as here, Complainant had not even made active use of the domain name.  See, e.g., Corbis Corp. v. Zest, FA98441 (Nat. Arb. Forum Sept. 12, 2001).

Accordingly, the Panel finds that Complainant has failed to prove registration or use in bad faith.

DECISION

Having determined that Complainant has failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

David E. Sorkin, Panelist
Dated:  June 7, 2004

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