The Complainant is 1-800-F, Inc of Carle Place, New York, United States of America, represented by Kilpatrick Stockton, LLP, United States of America.
The Respondent is Hildegard Gruener of Vienna, Austria. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 15, 2016. On September 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 16, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 the Respondent of the Complaint, and the proceedings commenced on September 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 19, 2016.
The Center appointed Nicholas Weston as the sole panelist in this matter on October 31, 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.
The language of this administrative proceeding is English, being the language of the registration agreement. The Panel finds that appropriate notice of this proceeding has been given to the Respondent and that the Center has discharged its responsibility under paragraph 2(a) of the Rules. 4. Factual Background
The following facts are undisputed.
The Complainant operates a business in the U.S. selling and delivering flowers and offerings such as fruit, candy, balloons, stuffed animals, floral arrangements and other gifts. The Complainant holds registrations for the 1-800-FLOWERS trademark and variations of it in the in the U. S. The Complainant's U.S. trademark registration for the mark 1-800-FLOWERS has been in effect since 1975 and for the mark 800-FLOWERS since 1986. A sample of the U.S. registrations cited in evidence are set out below:
Registration No.
Trademark
Registration Date
IC
1,009,717
1-800-FLOWERS
April 29, 1975
35
1,398,787
800-FLOWERS
June 24, 1986
35
1,761,641
CALL 1-800-FLOWERS
March 30, 1993
35
2,014,298
1-800-FLOWERS & Design
November 5, 1996
35 & 42
3,155,701
1-800-FLOWERS (stylized)
October 17, 2006
35
4,058,345
1-800 FLOWERS.COM & Design
November 22, 2011
35 & 39
The Complainant conducts business on the Internet using numerous domain names containing its mark 800-FLOWERS including with its floral and gift delivery website resolving from these domain names.
The Disputed Domain Name was created on February 25, 2016. The Disputed Domain Name previously resolved to a website that displayed the Complainant's logo, and featured sponsored pay-per-click links. The Disputed Domain Name no longer resolves to an active website. 5. Parties' Contentions A. Complainant
The Complainant cites its U.S. trademark registration No. 1,398,787 for the mark 800-FLOWERS and variations of it as prima facie evidence of ownership.
The Complainant submits that the mark 800-FLOWERS is well-known and that its rights in that mark predate the Respondent's registration of the Disputed Domain Name . It submits that the Disputed Domain Name is confusingly similar to its trademarks, because the Disputed Domain Name incorporates in its entirety the 800-FLOWERS trademark and contending that, "in such cases, confusing similarity must be presumed (citing PepsiCo, Inc. v. PEPSI SRL (a/k/a P.E.P.S.I.) and EMS Computer Indus. (a/k/a EMS),WIPO Case No. D2003-0696).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it resolves to a website with content "that Respondent has copied …for Respondent's website from Complainant's website", and contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name (citing: Madonna Ciccione v. Dan Parisi, and "M",WIPO Case No. D2000-0847).
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the fame and long standing prior use of the Complainant's trademarks. On the issue of registration, the Complainant contends that the Respondent could not have registered the Disputed Domain Name without having the 800-FLOWERS mark and variations of it in mind given that the mark and its variants are well-known. On the issue of use, the gist of the Complainant's contention is that the Respondent uses the Disputed Domain Name to divert Internet users to a webpage composed of sponsored links in connection with the Complainant's mark and thereby attempting illegitimately to attract "for commercial gain, Internet users to its website, by creating this consumer confusion on the source, sponsorship, affiliation or endorsement of its website". According to the Complainant, the Respondent's website makes repeated uses of the Complainants marks and copyright content and, in so doing, suggests some kind of affiliation with the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the complainant has the burden of proving the following:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii)that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the 1-800-FLOWERS trademark acquired through use and registration which predate the date of registration of the Disputed Domain Name by more than forty years. The Panel finds that the Complainant has rights in the mark 1-800-FLOWERS trademark in the U.S. pursuant to Trademark Registration No. 1,009,717 registered from April 29, 1975. The Panel further finds that the Complainant has rights in the related 800-FLOWERS trademark acquired through use and registration which predate the date of registration of the Disputed Domain Name by more than 30 years. The Panel finds that the Complainant has rights in the mark 800-FLOWERS trademark in the U.S. pursuant to Trademark Registration No. 1,398,787 registered from June 24, 1986.
The Panel finds that the Disputed Domain Name, which contains the 800-FLOWERS trademark in its entirety, is confusingly similar to the 800-FLOWERS trademark. The confusion is compounded having regard to the similarity of the Disputed Domain Name with the Complainant's registered trademarks 1-800FLOWERS and 1-800 FLOWERS.COM & Design as well as the deliberate inclusion of a redundant "com" in addition to the generic Top-Level Domain ("gTLD") ".com".
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or a legitimate interest in the disputed domain name. The Policy also places the burden on the complainant to establish the absence of respondent's rights or legitimate interest in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to a to a website that displays the Complainant's trademark 1-800-FLOWERS and variations of that mark, purports to offer for sale floral products and has links through which Respondent obtains click-through revenues. The Complainant asserts also that it has not licensed, permitted or authorized the Respondent to use the Complainant's trademarks. The Complainant provided evidence that typing in the Disputed Domain Name diverts traffic to a website of the nature outlined.
This conduct is compounded by the Respondent's advertising of services that were either those of the Complainant or directly competing with the Complainant's through the same website. In ACCOR v. Nick V, ActionStudio,WIPO Case No. D2008-0644, the UDRP panel found that a disputed domain name which resolved to a webpage displaying competing goods or services in the same field of activities as the complainant "cannot be considered a bona fide offering of goods or services."
In the absence of a Response, there has been no evidence adduced to show that the Respondent has been commonly known by the Disputed Domain Name or to demonstrate that it is making any legitimate noncommercial or fair use of the Disputed Domain Name.
The Panel therefore finds for the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith
The third element of the Policy that the complainant must also demonstrate is that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
The evidence that the Respondent registered and has used the Disputed Domain Name in bad faith is overwhelming. The trademark 1-800-FLOWERS is so widely known for flowers and gifts that it would be inconceivable that the Respondent might have registered the mark without knowing of it (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
Further, a gap of ten years between registration of a complainant's trademarks and a respondent's registration of the disputed domain name (containing the trademark) can indicate bad faith (see Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). In this case, the Respondent registered the Disputed Domain Name more than 40 years after the Complainant established trademark rights in the 1-800-FLOWERS mark.
In this Panel's assessment, two conclusions can therefore be drawn about the Respondent from its use of the Disputed Domain Name resolving to the Respondent's website. First, its conduct is a deliberate attempt to suggest some sponsorship, affiliation or endorsement by the Complainant of the products and services promoted on the Respondent's websites aimed as they are at the very same sector in which the Complainant operates and making use of the Complainant's trademarks on the website to which the Disputed Domain Name resolves. Second, in this Panel's view, it is also in breach of the "GoDaddy Domain Name Registration Agreement" registration for breach of the warranty: "You represent and warrant to the best of your knowledge that, neither the registration of the domain nor the manner it is directly or indirectly used, infringes the legal rights of any third party."
The diversion of Internet users for commercial gain is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions, see Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc.,WIPO Case No. D2005-0623; and Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814. Steering unsuspecting Internet visitors to competing products and services, taking advantage of the confusion created by the similarity of the Disputed Domain Name to the Complainant's trademark is the very essence of bad faith use under the Policy.
This Panel finds that the Respondent must have been aware of the Complainant's widely-known trademark. This Panel finds that the Respondent has taken the Complainant's trademark and incorporated it into the Disputed Domain Name without the Complainant's consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users away from the Complainant's webpage to the Respondent's website for commercial gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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 Disputed Doamain Name, be transferred to the Complainant.
Nicholas Weston
Sole Panelist
Date: November 8, 2016
Full & Egal Universal Law Academy