|Kläger||Phonenames Limited, 0800 Flowers Limited|
|Beklagter||0800 Blossoms Ltd.|
|Entscheider||Maier, Steven A.|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
0800 Flowers Limited, Phonenames Limited v. 0800 Blossoms Ltd.
Case No. D2003-0053
1. The Parties
1.1 The Complainants are 0800 Flowers Limited ("the First Complainant") and Phonenames Limited ("the Second Complainant") both of 143 Maple Road, Surbiton, Surrey KT6 4BJ, United Kingdom of Great Britain and Northern Ireland, represented by Field Fisher Waterhouse of United Kingdom of Great Britain and Northern Ireland.
1.2 The Respondent is 0800 Blossoms Limited of 21 Jerdan Place, London SW6 1BE, United Kingdom of Great Britain and Northern Ireland and 28-30 Jaggard Way, London SW12 8SB, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
2.1 The disputed domain name <0800-flowers.com> ("the Domain Name") is registered with BulkRegister.com.
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center ("the Center") on January 24, 2003. On January 24, 2003, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the Domain Name. On January 24, 2003, BulkRegister.com 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 and technical contacts. 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").
3.2 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 January 30, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was February 19, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondents default on February 25, 2003.
3.3 The Center appointed Steven A. Maier as the sole panelist in this matter on March 3, 2003. 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.
3.4 Having reviewed the communications in the light of the Respondents non-response, the Panel is satisfied that the Center has discharged its responsibility under paragraph 2 of the Rules to notify the Respondent of this Complaint. Under paragraph 14(a) of the Rules, where a party fails to comply with the time limits provided by the Rules, the Panel shall proceed to a decision on the Complaint in the absence of exceptional circumstances. The Panel is aware of no such circumstances in this case.
4. Factual Background
4.1 The First Complainant is a limited company registered in England and Wales. It was incorporated, under its present name, on August 9, 2002.
4.2 The Second Complainant is a limited company registered in England and Wales. It was incorporated on May 26, 1967.
4.3 The Respondent is a limited company registered in England and Wales. It was incorporated on March 11, 1997.
4.4 The Domain Name was registered by the Respondent on October 19, 1999.
4.5 The Second Complainant is the applicant for a Community Trademark in the mark 800 FLOWERS with a filing date of April 1, 1996 (application number E345389).
5. Parties Contentions
5.1 The Complainants make the following contentions which, in the absence of any Response, are accepted by the Panel as factually correct.
5.2 The Complainants have subscribed to the UK alphanumeric freephone number 0800 FLOWERS since February 1994, and have over the past five years granted licences to florist businesses to use the this number. From 1997, these licences comprised approximately 80 "shared service agreements" with florists in different regions but these arrangements were terminated in June 1999, when the Complainants entered into a licence agreement with Flowergram Limited for the whole of the UK. They have placed advertisements to promote the 0800 FLOWERS business in the Yellow Pages and other directories and estimate that they have spent 140,000 on advertising since 1997.
5.3 The Second Complainant has for the past nine years been in the business of registering, licensing and franchising alphanumeric telephone numbers (which it calls "phonenames") and has also registered, licensed and franchised corresponding trademarks, domain names and company names.
5.4 The Second Complainant has registered a number of domain names including <0800flowers.com>, <0800flowers.net>, <0800flowers.org> and <0800flowers.biz>, although the websites linking to each of these names are currently being updated. It has also applied for 800 FLOWERS to be registered as a Community Trademark and (the Complainants state that) "when this mark proceeds to registration it will have the priority date of April 1, 1996". The Second Complainant has set up the First Complainant as its sister company and has "commenced trading" under the brand 0800 FLOWERS.
5.5 The Complainants have spent time and money in protecting their brand and, for example, successfully opposed an application by an American company, 1-800 Flowers, Inc, to register the mark 800-FLOWERS in the UK.
5.6 As a result of the above matters, the Complainants have unregistered rights in the 0800 FLOWERS mark.
5.7 The Respondent is aware of the concept of alphanumeric numbers as it uses the mark 0800 BLOSSOMS and advertises accordingly.
5.8 When it set up in business in 1997, the Respondent must have been aware that the Complainants used the 0800 FLOWERS number, or it would itself have sought to acquire that number, which is the best in the florist industry. The Respondent would also have seen the Complainants advertisements as it advertises in the same sections of relevant directories. (These contentions are of course speculation, although uncontradicted.) Nevertheless, the Respondent registered the Domain Name in October 1999.
5.9 The Respondent approached the Complainants in July 2001, regarding the 0800 FLOWERS phonename. Although there was dialogue between the parties in July and August 2001, concerning a possible licence agreement, no agreement resulted and no further negotiations took place.
5.10 The Complainants discovered the Respondents registration of the Domain Name in November 2002, and that traffic aimed at the URL "www.0800-flowers.com" was being redirected to the Respondents site at "www.0800-blossoms.com". The Respondents business, ie the ordering of flowers and related goods online, is directly competitive with that of the Complainants licensees.
5.11 On November 19, 2002, the Complainants contacted the Respondent to seek a transfer of the Domain Name, but were asked to make an approach through solicitors. The Complainants solicitors wrote to the Respondent on November 22, 2002, requesting a response by December 6, 2002, but no response was received. Two subsequent attempts were made by the Complainants to contact the Respondent by telephone but these calls were neither taken or returned. On December 11, 2002, the Complainants faxed the Respondent offering a final opportunity to respond to their solicitors letter, but no response has been made.
5.12 The Complainants make the following submissions with specific reference to the conditions to be satisfied under paragraph 4a of the Policy.
5.13 As a result of the matters set out above, the Complainants have unregistered rights in the mark 0800 FLOWERS. They rely in particular on the goodwill and reputation they have acquired through advertising and the course of trade. There is authority for the propositions (i) that it is possible to have common law trademark rights in an alphanumeric telephone number and (ii) that it is not necessary to have a registered trademark or protectable trademark rights for the purposes of the Policy (eg Gorstew Limited and Unique Vacations, Inc v- Berkshire Trust (NAF Case No FA008000095430)). The Domain Name is identical or confusingly similar to the 0800 FLOWERS mark.
5.14 The Respondent has no rights or legitimate interest in the Domain Name. In particular, it is not making legitimate non-commercial or fair use of the Domain Name and is not commonly known by the Domain Name. It is using the Domain Name, which is similar to the Complainants mark, in connection with a business that competes with that of the Complainants and this is not a bona fide offering of goods or services for the purposes of the Policy (America Online, Inc v- Fu (WIPO Case No D2000-1374)).
5.15 The Respondent is using the Domain Name in bad faith. In particular:
(a) The Domain Name was registered primarily for the purpose of disrupting the business of a competitor, namely the Complainants. The Respondent registered the Domain Name in knowledge of the Complainants rights in the mark 0800 FLOWERS and is now failing to respond to communications from the Complainants and their solicitors. The Respondent is disrupting the Complainants business by forcing them to issue these proceedings and by using the Domain Name to give access to its, competitive, 0800 Blossoms website.
(b) The Respondent is using the Domain name for a website which is directly competitive with the Complainants 0800 FLOWERS business. The Respondent is therefore using the Domain Name intentionally to attempt to attract, for commercial gain, Internet users to the Respondents website by creating a likelihood of confusion with the Complainants mark as to the source, sponsorship, affiliation or endorsement of the Respondents website.
(c) The Respondent must have known that the registration of the Domain Name would prevent the Complainants from reflecting their telephone number, which incorporates their phonename and mark, on the Internet. This was found to constitute bad faith in the Gorstew case (above) where the domain name <1800beaches.com> was transferred to the subscriber to the 1800 BEACHES telephone number.
5.16 The Complainants seek a transfer of the Domain Name to the Second Complainant.
5.17 No Response has been filed in this case.
6. Discussion and Findings
6.1 As a preliminary matter, the Panel observes that the Complaint refers extensively to "the Complainants" without always distinguishing between them. In a number of respects this is technically inaccurate because the First Complainant did not come into being until August 9, 2002, which is relatively late in the narrative. However, the Panel does not consider that the distinction between the First and Second Complainants is material to any of its findings in the matter and, for the sake of convenience, the Panel therefore adopts the practice of referring to the Complainants together.
6.2 In order to succeed in its complaint, a complainant is required to show that all three of the elements set out under paragraph 4a of the Policy are present. Those elements are:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
Identical or Confusingly Similar
6.3 The Complainants do not claim to have a registered trademark or service mark in this matter. However, they refer to their application for a Community Trademark in the mark 800 FLOWERS and state that "when this mark proceeds to registration" it will have a priority date of April 1, 1996. The Complainants also say that they successfully opposed an application by 1-800 Flowers, Inc to register the trademark 800-FLOWERS in the UK and that this dispute is the reason why the Community Trademark has not yet proceeded to registration.
6.4 The trademark position appears to the Panel to be less than straightforward, however. First, the trademark opposition to which the Complainants refer was the subject of a decision in the Court of Appeal in 1-800 Flowers, Inc v- Phonenames Ltd  FSR 12. In that case, on the issue of distinctiveness, the Court held that, judged as at 1993 but against the background of the increasingly widespread use of phonenames in the UK, the mark 800-FLOWERS did not have the requisite inherent capacity to distinguish, being in substance no more than an encoded telephone number. It was, however, relevant to that decision that 1-800 Flowers, Inc was not the owner of the 800 FLOWERS phonename in the UK.
6.5 Further, the following matters appear from the records of the relevant trademark registries:
(a) that the Second Complainants application is opposed by 1-800 Flowers, Inc;
(b) that 1-800 Flowers, Inc is the applicant for a Community Trademark in the mark 800-FLOWERS with a filing date of April 1, 1996, (application E210161), which application is opposed by the Second Complainant; and
(c) that Quelle Aktiengesellschaft is the applicant for an International Trademark in the mark 0800 FLOWERS with a UK designation date of April 18, 2002, (application M784796).
6.6 While the Panel draws no particular conclusions from the above, it does not accept, as the Complainants appear to imply, that the Complainants will be successful in their application for a Community Trademark as a matter of course.
6.7 The Complainants case is, however, based primarily upon their claim to unregistered rights in the mark 0800 FLOWERS. In this regard, the Panel finds it to be clearly established (i) that a complainant may demonstrate rights for the purposes of paragraph 4a(i) of the Policy without having a registered trademark or service mark; and (ii) that such rights may be demonstrated even where the criteria for the registration of a trademark or service mark are unable to be met. For example, it is likely to be sufficient for a complainant to demonstrate that it has rights which are protectable in the UK under the law of passing off, under which the criteria for demonstrating distinctiveness are more flexible than in the case of trademark registration.
6.8 A complainant must, nevertheless, still demonstrate that its mark is distinctive. The more descriptive the mark in nature, the greater will be the burden upon the complainant to show that it is truly distinctive of its goods or services and that it has built up reputation and goodwill attaching to the mark itself.
6.9 In this case, the Complainants evidence of public awareness of the 0800 FLOWERS mark is somewhat scant. There is no information concerning sales or sales enquiries. The websites relating to the mark are not operating and there is no information concerning hits. The only evidence of public advertising is an entry from the Yellow Pages and no information is provided as to the date or geographical distribution of that entry.
6.10 Nevertheless, it is still possible for a complainant to establish rights protectable under the law of passing off if it can show that its mark is distinctive within a particular class of individuals. Here, there is uncontradicted evidence of two relevant matters: (i) that the Complainants are the subscriber to the UK telephone number which corresponds to the 0800 FLOWERS mark, and (ii) that the Complainants have "franchised" their business relating to the mark and the telephone number to, initially, 80 regional florists and subsequently to one nationwide licensee. On this basis, the Panel finds, on balance, that the Complainants do have sufficient rights in the 0800 FLOWERS mark to found an action for passing off and do therefore have rights for the purposes of paragraph 4a(i) of the Policy.
6.11 The Domain Name is identical to the Complainants 0800 FLOWERS mark, but for the hyphen which is insignificant, or in any event confusingly similar to the mark. In those circumstances the Panel finds that the requirements of paragraph 4a(i) are satisfied.
No Rights or Legitimate Interest
6.12 Under paragraph 4c of the Policy, there are three sets of circumstances in particular (but without limitation) to which a respondent may point to demonstrate a legitimate interest in the domain name in dispute. These are:
(i) before any notice to the respondent of the dispute, its 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) that the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) that the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.
6.13 In the absence of a Response, and based on the uncontradicted evidence of the Complainants, there is no evidence in support of the circumstances set out in sub-paragraphs (ii) and (iii) above.
6.14 With regard to sub-paragraph (i), it is the Complainants evidence that the Respondent approached them in July 2001, to seek a licence in connection with the 0800 FLOWERS phonename. The Respondent was not notified of this dispute until November 2002, because, on the Complainants case, they were not aware of the registration of the Domain Name until that time. It is arguable, therefore, that the Respondent made preparations to use the Domain Name in connection with an offering of goods or services before being made aware of this dispute. The question, therefore, is whether any such offering would be "bona fide". The Complainants say not, because the Respondent is using the Domain Name, which is similar to the Complainants mark, in connection with a business that competes with that of the Complainants.
6.15 Absent a Response, the Panel does not have the benefit of the Respondents submissions on the matter. It is for the Respondent to point to relevant circumstances for the purposes of paragraph 4c of the Policy and the facts alluded to by the Complainants do not, of themselves, support a finding of a legitimate interest on the part of the Respondent.
6.16 In the light of the above, and in the absence of any other circumstances which would tend to point to the Respondent having a legitimate interest in the Domain Name, the Panel finds that the requirements of paragraph 4a(ii) of the Policy are satisfied.
Registration and Use in Bad Faith
6.17 Paragraph 4b of the policy sets out examples of circumstances which, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The Complainants rely on sub-paragraphs 4b(iii) and (iv) of the Policy, which provide:
"(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainants mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
6.18 Looking first at the date of registration of the Domain Name, November 1999, the Complainants say that the Respondent, which traded competitively with them as 0800 BLOSSOMS, must have been aware of their 0800 FLOWERS mark at that date. In the absence of any contradiction by the Respondent, the Panel accepts this submission. The Panel does not, however, accept the Complainants further submission that the Respondent must have known that the registration would prevent the Complainants from reflecting their 0800 FLOWERS phonename on the Internet. The Complainants have been able to do so under a number of similar domain names, including <0800flowers.com>.
6.19 Not does the Panel accept that the Respondent registered the Domain Name primarily for the purpose of disrupting the business of the Complainants (the Panels emphasis). The Complainants evidence does not support such a finding and it cannot be right that the Complainant can rely on being forced to issue the present proceedings under the Policy: this is a self-serving argument which could be made in any case.
6.20 With regard to sub-paragraph (iv), the Panel accepts that the Respondents use of the Domain Name does give rise to a likelihood of confusion with the Complainants mark as to a relevant connection with the Respondents website. The Domain Name is comfortably within the range of names that an Internet user would be likely to input in seeking to access the Complainants site and (on the Complainants uncontradicted evidence) the Respondents site offers goods and services which are closely competitive with those of the Complainants licensees. While the Panel does not consider that an Internet user who visited the Respondents site would believe it to be the Complainants, the mere fact of being attracted to the competitive site amounts to "initial interest confusion" which, in the view of the Panel, is sufficient for the purpose of the sub-paragraph.
6.21 The Panel also has regard to the Respondents failure to reply to correspondence received from the Complainants and their solicitors. There had been earlier commercial negotiations between the parties. Further, the Respondent specifically invited the Complainant to write to it through solicitors concerning the Domain Name. In these circumstances, the Panel finds that failure to respond was unreasonable and operates to bolster the allegation of bad faith. The Respondents failure to respond to the Complaint, which is a matter from which the Panel is entitled to draw inferences under paragraph 14(b) of the Rules, is of similar effect.
6.22 The Panel therefore finds that the requirements of paragraph 4a(iii) of the Policy are established.
For the foregoing reasons, in accordance with paragraph 4a of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name, <0800-flowers.com>, be transferred to the Second Complainant.
Steven A. Maier
Date: March 17, 2003