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Fresh Intellectual Properties, Inc. v. Matt Braska [2005] GENDND 236 (18 March 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fresh Intellectual Properties, Inc. v. Matt Braska

Case No. D2005-0096

1. The Parties

The Complainant is Fresh Intellectual Properties, Inc., Westbury, New York of United States of America, represented by Kilpatrick Stockton, LLP, United States of America.

The Respondent is Matt Braska, Chatham, Massachusetts of United States of America.

2. The Domain Name and Registrar

The disputed domain name <18000flowers.com> (the “Domain Name”) is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2005. On January 28, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name at issue. On January 28, 2005, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 15, 2005. In accordance with the Rules, Paragraph 5(a), the due date for Response was March 7, 2005, the Respondent’ was notified of his default on March 8, 2005.

The Center appointed Michelle Brownlee as the sole panelist in this matter on March 10, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, Paragraph 7.

4. Factual Background

Complainant owns U.S. trademark registrations for 1-800-FLOWERS, 800-FLOWERS, 1-800-FLOWERS & Design, 1-800-FLOWERS.COM and CALL 1-800-FLOWERS (the “Trademarks”) in connection with receiving flower orders and arranging for them to be filled by local florists near the recipient. Complainant also owns registrations for 800 FLOWERS and 1-800-FLOWERS & Design in 12 other countries around the world. Since at least as early as 1984, Complainant’s affiliated company, 1-800-Flowers.com, Inc. and its predecessors in interest have provided these services through telemarketing and retail outlets operated under the Trademarks. Since 1992, Complainant has offered services over the Internet using the domain name 800flowers.com, and since that time, has also allowed the services to be accessed through other similar domain names, such as 1800flowers.com.

5. Parties’ Contentions

A. Complainant

Complainant’s Internet web site is extremely popular, averaging over 66 million page views per month. Complainant also spends a great deal on advertising the Trademarks. Complainant spent more than $400 million on advertising in the last five fiscal years. Complainant’s site is prominently displayed on web sites of 8,800 authorized online affiliates and by major portals such as Yahoo, Google, AOL and MSN, resulting in more than 30 billion Internet impressions in one fiscal year.

Complainant contends that the Domain Name is virtually identical to its 1-800-FLOWERS.COM trademark in that it merely deletes the hyphens and adds an extra zero, a typographical error that Internet users are likely to make. Complainant also contends that Respondent does not have any right or legitimate interest with respect to the Domain Name, and that Respondent registered the name in bad faith as Respondent must have been aware of Complainant’s well-known Trademarks. Complainant also submits that Respondent has pointed the Domain Name to Complainant’s site in order to collect a referral fee for orders placed on Complainant’s site that originated from other sites.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:

(1) the domain name 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.

A. Identical or Confusingly Similar

The Domain Name is confusingly similar to the Trademarks. The deletion of hyphens and addition of a zero are not material differences. The Domain Name is nearly identical to the Trademarks.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides that a respondent can demonstrate a legitimate interest in a domain name by demonstrating one of the following facts:

(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark at issue.

Respondent has not provided any evidence of rights or legitimate interest in the Domain Name. Respondent does not appear to be known by “18000Flowers” and his use of the Domain Name to point to Complainant’s site in order to collect referral fees cannot be considered a bona fide offering of goods or services, or a noncommercial or fair use. Accordingly, the Panel finds that Respondent does not have any right or legitimate interest in the Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.

Complainant has established bad faith under Paragraph 4(b)(iv) of the Policy. Respondent’s use of the Domain Name to point to Complainant’s site certainly does attract Internet users to Respondent’s site by creating confusion as to source and does result in commercial gain to Respondent through the collection of the referral fees. Accordingly, the Panel finds that the Domain Name was registered in bad faith.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.

Michelle Brownlee
Sole Panelist

Dated: March 18, 2005