The Complainant is 1-800-F, Inc. of Carle Place, New York, United States of America (“United States”), represented by Kilpatrick Stockton, LLP, United States.
The Respondent is Gagan Patel of Nadiad, India. 2. The Domain Name and Registrar
The disputed domain name (the “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 May 16, 2017. On May.16, 2017, 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 the Respondent is listed as the registrant and providing the 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 the Respondent of the Complaint, and the proceedings commenced on May 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 7, 2017. The Center received an email communication from the Respondent on May 23, 2017. The Center received a supplemental filing from the Complainant on June 8, 2017. On June 9, 2017, the Center received two email communications from the Respondent.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on June 14, 2017. 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
The following facts are undisputed.
The Complainant is a floral and gift delivery company that was founded more than four decades ago.
The Complainant is the owner of a number of registrations for the 1-800-FLOWERS trademark in the United States, including but not limited to the United States Trademark 1-800-FLOWERS (word mark), registration number 1,009,717, registered on April 29, 1975, and the United States Trademark 1-800-FLOWERS.COM (word mark), registration number 2,434,592, registered on March 13, 2001 (hereinafter in singular referred to as the “Trademark”).
Furthermore, the Complainant owns and operates websites at several domain names incorporating the Trademark, for instance .
The Domain Name was registered by the Respondent on April 30, 2017. The Domain Name resolves to a webpage that seems to be an online flower shop and service (the “Website”). 5. Parties’ Contentions A. Complainant
Insofar as relevant, the Complainant contends the following.
Consumers that are confronted with the Domain Name will associate the Domain Name with the Complainant. The Domain Name incorporates the Trademark exactly and in its entirety. In such cases, confusing similarity must be presumed.
The Complainant has not authorized the Respondent to use the Trademark nor given the Respondent permission to register or use the Domain Name. There is no relationship between the Complainant and the Respondent giving rise to any license, permission, or other right by which the Respondent could own or use the Domain Name incorporating the Trademark. The Respondent is not a distributor, dealer, or representative of the Complainant’s products or services. The Complainant also does not sponsor or endorse the Respondent’s activities.
The Respondent registered the Domain Name to operate an online flower shop and service and thereby to draw on the commercial magnetism of the Trademark to entice consumers to its Website, which purports to offer floral products and gifts.
In view of the extensive use and widespread recognition of the Trademark, and the fact that the Respondent has no rights in the Trademark, the Respondent is not using the Domain Name for any legitimate noncommercial or fair use purpose. The use or intended use is for profit. Such use of the Domain Name does not constitute a legitimate, bona fide offering of goods or services.
The Respondent intentionally registered, and is intentionally using, the Domain Name in bad faith for commercial gain and to benefit from the goodwill associated with the Trademark. The Respondent’s bad faith registration and use of the Domain Name is made clear by the fact that the Domain Name purposefully incorporates the Trademark, and was registered well after the Trademark became well-known to consumers. Such registration and use of the Domain Name is, in and of itself, considered opportunistic bad faith. Moreover, the Respondent uses the Domain Name to divert consumers seeking the Complainant’s website to the Website at which the Respondent purports to offer the same services as the Complainant has long offered. That the Respondent is seeking to sell goods and services in direct competition with the Complainant is further demonstrated by the fact that: a) The Respondent has contacted the Complainant’s drop ship service provider to ask that company to drop ship the same products for the Respondent; and b) The Respondent is using the email address “vendors.1800flowers@[ ]”, that impersonates the Complainant by incorporating the Trademark. By registering and using the Domain Name for the purpose of directing Internet users to a site other than the Complainant’s, the Respondent has intentionally attempted to attract Internet users to the Website for commercial gain by creating a likelihood of confusion with the Trademark as to source, sponsorship, affiliation, or endorsement of the Website.
In its unsolicited supplemental filing of June 8, 2017, the Complainant alleges that following the submission of the Complaint, the Respondent contacted the Complainant stating that it was not his “intention to hurt [the Complainant’s] business”. Upon the request of the Complainant to transfer the Domain Name to the Complainant, the Respondent stated to be willing to transfer the Domain Name only for “some good amount”. B. Respondent
After receiving the Complaint in this matter the Respondent claimed that the Domain Name was suggested by GoDaddy when the Respondent was searching for a domain name to buy. The Respondent indicated that the “vendors.1800flowers@[ ]” email address was “also suggested by [G]oogle” and that upon receiving the Complaint in this matter, he “immediately stop [sic] working on this email and [he] deactivate [sic] this [e]mail.”
The Respondent replied to the Complainant’s unsolicited supplemental filing in two identical emails, explaining that it requested a “good amount to transfer” because the “Complainant said that you have to transfer.” The Respondent also stated his “intension is not to get money for this domain we don’t want to sell this domain.” 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the 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. A. Preliminary Issue: Supplemental Filings
The Complainant has submitted an unsolicited supplemental filing, and the Respondent has replied to the same.
Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings. Paragraph 10(d) states: “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence”. Paragraph 12 states: “In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties”.
The Complainant’s supplemental filing was submitted to bring to the Panel’s attention facts that occurred subsequent to the filing of the Complaint that could not have been alleged in the initial Complaint and that further show the Respondent’s alleged intent to profit from the Domain Name.
The Respondent’s email communications (i.e., in reply to the Complainant’s supplemental filing) were submitted to address the new facts alleged in the Complainant’s supplemental filing.
Accordingly, the Panel has decided to admit the Complainant’s supplemental filing and the Respondent’s replies to the same. B. Identical or Confusingly Similar
The Complainant must demonstrate that it has rights in a trademark and, if so, the Domain Name must be shown to be identical or confusingly similar to the aforementioned trademark.
The Complainant has shown that it has registered rights in the Trademark.
The Domain Name incorporates the Trademark in its entirety (albeit leaving out the hyphens in the Trademark) and adds the word “shop”. The Panel finds that the dominant part of the Domain Name is “1800flowers” and that the element “shop” is descriptive. After all, “shop” associates to a (online) store in which products are sold to the public. Furthermore, the addition of the word “shop” after the Trademark does nothing to avoid the conclusion that the Domain Name is confusingly similar to the Trademark, see Hoffmann-La Roche Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923 and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8; see also Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”).
The addition of “.com” is generally irrelevant in the determination of the confusing similarity between the domain name and trademark and is typically disregarded.
Thus, the Panel finds that the Domain Name is confusingly similar to the Trademark.
For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out in particular, but without limitation, three circumstances which, if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii), namely:
(i) before any notice of the dispute to the Respondent, the Respondent’s use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; 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 or service mark at issue.
The Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that the Respondent is commonly known as “1-800-FLOWERS” or “1800flowers”. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever asked, or has ever been permitted in any way by the Complainant to register or use the Trademark, or to register or use any domain name incorporating the Trademark.
Furthermore, the use of the Domain Name cannot be considered a bona fide offering of goods and services. From the screenshot that was provided by the Complainant, it appears that the Domain Name resolves to a webpage that gives the impression to be an online flower shop (albeit it does not include the functional and / or technical possibility to order gifts and / or services), the same services offered by the Complainant.
The Complainant has made a prima facie case that none of the circumstances mentioned above apply and therefore the Panel has to assume that the Respondent lacks any right or legitimate interest. It would have been up to the Respondent to rebut such allegations, but although the Respondent clearly received the Complaint and even sent two emails, the Respondent did not use the opportunity given to him to demonstrate any right or legitimate interest.
Therefore, the Panel is satisfied that the second element of the Policy is met. D. Registered and Used in Bad Faith
The Panel finds that the Domain Name was registered and is being used in bad faith.
In light of the evidence filed by the Complainant, the Panel finds that the Trademark is, as well as the activities of the Complainant, well known particularly in the relevant industry. Accordingly, in the Panel’s view, the Respondent was aware of the Complainant’s existence and rights at the time of registering the Domain Name. Tellingly, the Respondent has contacted the Complainant’s drop ship provider to ask this company to drop ship similar products sold by the Complainant for the Respondent. Moreover, as the Respondent has indicated that it would transfer the Domain Name to the Complainant for a “good amount”, the Panel does not find credible the Respondent’s claim that it does not wish to sell the domain name. In light of the foregoing, the Panel is convinced that the Respondent has registered the Domain Name for the purpose of disrupting the Complainant’s business and/or for the purpose of selling the Domain Name to the Complainant for valuable consideration in excess of out-of-pocket expenses.
Further, the Panel finds that the Respondent has intentionally attempted to attract users to its Website for commercial gain by creating a likelihood of confusion with the Trademark. The fact that the Domain Name is registered in the “.com” space emphasizes the confusion, given that the Complainant has trademark registrations for 1-800-FLOWERS.COM and operates its website at “www.1800f”.
In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was registered and is being used 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 the Complainant.
Willem J. H. Leppink
Sole Panelist
Date: June 25, 2017
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