Complainant is lnterflora INC. of Downers Grove, Illinois, United States of America ("United States"), represented by Pinsent Masons LLP, United Kingdom of Great Britain and Northern Ireland ("United Kingdom" or "UK").
Respondent is Marie Civitano, lnter Flora Inc of Rancho Cordova, California, United States. 2. The Domain Name and Registrar
The disputed domain name, (the "Domain Name"), is registered with Wild West Domains, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 25, 2016. On July 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing Respondent's contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 5, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2016. Respondent did not submit any response. Accordingly, the Center notified the Parties that it will proceed to appoint the Panel.
The Center appointed John C. McElwaine as the sole panelist in this matter on September 1, 2016. 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 is Interflora, Inc., which is an international fresh flower and gift ordering and delivery service. Since 1953, Complainant and its network have grown into the world's largest and most popular flower delivery network.
Complainant is the owner of several UK and European Union registered trademarks containing the mark INTERFLORA for variety of goods and services relating to natural plants and flowers and horticultural products. Complainant's registered trademarks are listed in the schedule provided as Annex 4 to the Complaint, including UK Registration 1329840 for the mark INTERFLORA, registered on April 12, 1991, in classes 16, 31, 35, 38, 39, 41, and 42 and EUTM Registration 909838 for the mark INTERFLORA, registered on November 11, 1999, in classes 16, 31, 35, 38, 39, 41, and 42.
Respondent registered the Domain Name on January 11, 2006. 5. Parties' Contentions A. Complainant
Complainant's British Unit was incorporated in 1935. In the United States, Complainant's sister company, FTD Companies, Inc., is a premier floral and gifting company providing floral and gift products to consumers in the United States and Canada. Complainant asserts that currently there are 58,000 florists worldwide delivering flowers and gifts in 140 countries in the Interflora network.
In 2009, Complainant discovered that Respondent was operating a website at the Domain Name. A demand letter was sent from counsel for Complainant on October 19, 2009. This letter claimed that Respondent was infringing upon Complainant's trademark rights in the United Kingdom because Respondent's website was accessible to users outside the United States and open to orders from customers located outside the United States.
Complainant provided a letter showing that Respondent replied on October 22, 2009, requesting time to re-brand. Complainant responded the same day agreeing that Respondent could have eight months to re-brand provided certain disclaimers were displayed, Respondent would trade only in the United States and Respondent would sign an agreement to transfer the Domain Name, which would be held in trust for eight months.
Complainant points out that Respondent replied on May 10, 2010, agreeing to change the name of its business from "Inter Flora" to "Pacific Silkscapes". Respondent, however, refused in this letter to transfer the Domain Name to Complainant, because (i) Respondent has used the name Inter Flora since 1999 allegedly without confusion or opposition, (ii) Respondent wanted to keep linking the Domain Name to the new Pacific Silkscapes website so customers could find the new website, (iii) Respondent needed to keep the Domain Name so email addresses did not need to be changed, and (iv) Respondent believed that its offer to change the name of business would avoid a likelihood of confusion.
Since this time, Complainant asserts that through its counsel it has been in correspondence with Respondent in a genuine attempt to encourage Respondent to complete the agreed re-branding exercise without the need for further action to be taken. In support, Complainant attached to the Complaint letters to Respondent dated February 18, 2015; July 27, 2015; and January 8, 2016.
Regarding the first element of the Policy, Complainant alleges that it owns many UK and European Union trademark registrations for the mark INTERFLORA for goods and services relating to natural plants. Complainant asserts that the Domain Name is identical and confusingly similar to Complainant's INTERFLORA trademark. Complainant points out that the Domain Name is identical but for the inclusion of "inc" at the end of the Domain Name, which does not avoid confusion and does not distinguish the Domain Name from Complainant's INTERFLORA trademark.
With respect to the second element of the Policy, Complainant asserts that the Domain Name is being used to automatically redirect Internet traffic to the website "". Complainant further asserts that Respondent agreed in a letter dated May 10, 2010 that Respondent "would under take a re-branding exercise which would include a transition of the Domain Name to Complainant by 29 June 2010". Thus, Complainant alleges that Respondent is not now known by the Domain Name. Further, Complainant contends that Respondent is not making a legitimate noncommercial or fair use of the Domain Name because Respondent is engaged in the sale of custom built artificial trees, silk plants, floral arrangements and themed plantscapes which are of a similar nature to the goods sold by Complainant.
Complainant states it has not given Respondent any permission to use the Domain Name and contends that its continuous efforts to have Respondent transfer the Domain Name and cease use of the INTERFLORA trademark for the past seven years does not amount to a waiver of Complainant's rights to bring this proceeding.
With respect to the third element of the Policy, Complainant asserts it was prepared to allow Complainant eight months to re-brand, subject to several conditions being accepted, including the transfer of the Domain Name and the inclusion of a disclaimer on the website pending the completion of the re-branding exercise. However, Respondent has refused and has not engaged or replied to Complainant since 2010. Complainant asserts that, given the widespread use, reputation and notoriety of the INTERFLORA mark, Respondent must have been aware when registering the Domain Name that it was infringing upon the INTERFLORA trademarks. As such, Complainant asserts that Respondent's registration of the Domain Name has prevented Complainant from registering a domain name which corresponds to Complainant's trademark, contrary to paragraph 4(b)(ii) of the Policy. Moreover, Complainant asserts that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's trademarks in breach of paragraph 4(b)(iv) of the Policy. B. Respondent
Respondent did not reply to Complainant's contentions. However, the Panel finds that Respondent's position on certain factual issues in this matter can be understood from the evidence submitted by Complainant (i.e., prior correspondence between the Parties) attached to the Complaint. 6. Discussion and Findings
Even though Respondent has defaulted, paragraph 4 of the Policy requires that, to succeed in this UDRP proceeding, Complainant must still prove its assertions with actual evidence demonstrating:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Because of Respondent's default, the Panel may accept as true the factual allegations stated within the Complaint, and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited. v. Anonymous Speech LLC and Global House Inc.,WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International,WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules ("If a respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint"). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel's findings on each of the above-cited elements are as follows. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Here, the relevant trademark registrations owned by Complainant are UK Registration 1329840 for the mark INTERFLORA in classes 16, 31, 35, 38, 39, 41, and 42 and EUTM Registration 909838 for the mark INTERFLORA in classes 16, 31, 35, 38, 39, 41, and 42. The Panel finds that Complainant has rights in the INTERFLORA mark. Further, the addition of the term "inc" in the Domain Name does not distinguish it from the INTERFLORA mark. It is well-established that adding a descriptive word to a trademark in a domain name, does not avoid confusing similarity. See eBay Inc. v. ebayMoving / Izik Apo,WIPO Case No. D2006-1307. While the additional term "inc" does not relate directly to floral and gift delivery services, the Panel determines that such a generic term referencing an entity type does not distinguish or differentiate the Domain Name from Complainant's INTERFLORA mark.
Therefore, the Panel finds that Complainant has met its burden of showing that the Domain Name is confusingly similar to Complainant's INTERFLORA ,mark. B. Rights or Legitimate Interests
Under the Policy paragraph 4(a)(ii), a complainant has the burden of establishing that a respondent has no rights or legitimate interests in the disputed domain name. Complainant needs to make a prima facie showing on this element, at which point the burden of production shifts to Respondent to present evidence it has rights or legitimate interests in the Domain Name. If Respondent fails to do so, Complainant can be deemed to have satisfied this burden under Policy paragraph 4(a)(ii). See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a/ Cupcake Party,WIPO Case No. D2000-1415.
Complainant asserts that it has never given Respondent permission to use the INTERFLORA mark in the Domain Name and in fact Respondent has admitted that its prior use of the "Inter Flora" trade name was infringing. Although properly notified by the Center, Respondent submitted no response on this point or otherwise. The silence of Respondent may support a finding it has no rights or legitimate interests regarding the disputed domain name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond,WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S.,WIPO Case No. D2000-1011; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269. The Panel finds Complainant has made a prima facie showing concerning this element.
Under paragraph 4(c) of the Policy, a respondent's rights or legitimate interests in a domain name may be established by demonstrating any of the following three conditions: (i) before any notice to respondent of the dispute, respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or (iii) 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 or service mark at issue.
It does not appear as if Respondent is making a bona fide offering of services. Complainant has alleged that the INTERFLORA trademark is a well-known mark, a claim that is supported by Complainant's more than 80 years of use of the mark in international commerce. Moreover, in response to Complainant's 2009 demand letter, Respondent, which operates a business that is highly related to Complainant, decided to change its name. Thus, Respondent implicitly conceded that it did not have bona fida rights to continue to use the "Inter Flora" name. Likewise, Respondent is not engaging in a fair use of the INTERFLORA mark in the Domain Name. Without a response from Respondent, there is no other credible explanation to support such bona fide or fair use rights to use a domain name identical to a well-known trademark in connection with highly related services. See Peter Frampton v. Frampton Enterprises, Inc.,WIPO Case No. D2002-0141 (the use of a domain name which incorporates a registered mark in order to sell products in the same class as mark holder inherently and intentionally seeks to exploit user confusion, and therefore cannot constitute bona fide use). The Panel finds that Policy paragraph 4(c)(i) and Policy paragraph (4)(c)(iii) do not apply to Respondent.
Whether Respondent has been commonly known as "Inter Flora" is a closer call. As an initial matter, the only evidence that Respondent may be known as Inter Flora, Inc. is the entry of that information in the WhoIs record and allegations in correspondence attached to the Complaint. However, Complainant has made a prima facie case and it is up to Respondent "to demonstrate by submission of hard evidence that, prior to disputed domain name registration, its business was commonly known by the name listed as registrant". See BHP Billiton Innovation v. BHP / PrivacyP,WIPO Case No. D2011-0465 and Banco Espírito Santo S.A. v. Bancovic,WIPO Case No. D2004-0890 ("It is not sufficient for the Respondent to merely assert that he or she has been commonly known by the domain name in order to show a legitimate interest. The Respondent must produce evidence in order to show that he or she has been 'commonly known' by the domain name [prior to registration of the domain name in issue]").
Finally, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.5 instructs that a "panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision". The Panel accessed the California Secretary of State's business search, which provides "access to domestic stock, domestic nonprofit and qualified foreign corporations, limited liability company and limited partnership information of record with the California Secretary of State". A search was performed for "Inter Flora" which returned only one result of a corporation formed in 1997, under the laws of California, entity number C2061196, which was dissolved and with no apparent other connection with this Respondent. Since Respondent has submitted no evidence of any kind it is commonly known by Inter Flora, the Panel concludes that Respondent has failed to establish paragraph 4(c)(ii) of the Policy. C. Registered and Used in Bad Faith
Complainant must show that Respondent registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
Complainant first argues that Respondent's registration of the Domain Name has prevented Complainant from registering a domain name which corresponds to Complainant's trademarks, contrary to paragraph 4(b)(ii) of the Policy. This claim fails because Complainant has not demonstrated that Respondent has "engaged in a pattern of such conduct."
However, Complainant also contends that Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with Complainant's INTERFLORA mark in violation of paragraph 4(b)(iv) of the Policy. Paragraph 4(b)(iv) of the Policy specifies that bad faith exists where a respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
There is substantial authority that registration of a domain name that is confusingly similar to a well-known trademark by any entity that has no relationship to that mark, is itself sufficient evidence of bad faith registration and use. See Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael,WIPO Case No. D2009-0942 ("the Panel concurs with previous WIPO UDRP decisions holding that registration of a well-known trademark as a domain name is a clear indication of bad faith in itself"), citing, Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Pepsico, Inc. v. "null", aka Alexander Zhavoronkov,WIPO Case No. D2002-0562; and Pepsico, Inc. v. Domain Admin,WIPO Case No. D2006-0435. Likewise, bad faith can be found where respondents "knew or should have known" of complainant's trademark rights and nevertheless registered a domain name in which it had no rights or legitimate interests. See Accor S.A. v. Kristen Hoerl,WIPO Case No. D2007-1722.
Here, the Panel finds that the INTERFLORA mark is well-known in the field of online floral delivery services by virtue of its long-standing use and significant international market penetration. Respondent, who is active in the same industry, knew or certainly should have known that the Domain Name it was registering was confusingly similar to Complainant's INTERFLORA mark. As mentioned earlier, after registering the Domain Name, Respondent received a demand letter alleging it was trading off Complainant's INTERFLORA mark. Its response to agree to change its name supports an acknowledgement that Respondent himself could appreciate the impermissible confusion engendered by such name choice. Respondent has filed no response rebutting Complainant's arguments of bad faith or providing legal justification for changing its name but retaining the Domain Name.
For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith. 7. Decision
For 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 Complainant.
John C McElwaine
Sole Panelist
Date: October 10, 2016
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