|Beklagter||Domain Admin, Abadaba S.A.|
The Complainant is 1-800-Flowers.com, Inc. of United States of America, represented by Kilpatrick Stockton, LLP, United States.
The Respondent is Domain Admin, Abadaba S.A. of Panama.
The disputed domain name <1800flowers.org> (the “Domain Name”) is registered with Fabulous.com Pty Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2009. On March 12, 2009, the Center transmitted by email to Fabulous.com Pty Ltd a request for registrar verification in connection with the disputed domain name. On March 13, 2009, Fabulous.com Pty Ltd transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center indicating that the Complaint was administratively deficient, the Complainant filed an Amended Complaint on March 18, 2009. The Center verified that the Amended 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 25, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 14, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 15, 2009.
The Center appointed Nicoletta Colombo as the sole panelist in this matter on April 23, 2009. 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 Complainant owns several trademarks comprehensive of the expression “1-800-FLOWERS” in the United States.
The Complainant has used the 1-800-FLOWERS marks since at least 1975 in connection with a floral product and gift delivery service operating through retail outlets and a telemarketing system. Since 1992, the Complainant has also used its 1-800 FLOWERS marks online, and since 1994 has made its goods and services available in numerous countries throughout the world through the site “www.800flowers.com” as well as through “www.1800flowers.com” and other “800 flowers” addresses.
The Respondent registered the disputed domain name <1800flowers.org> on March 15, 2000.
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to the domain name that is the subject of this dispute.
In relation to element (i) of paragraph 4(a) of the Policy, the Complainant contends that the Domain Name is identical to the trademark 1-800-FLOWERS and confusingly similar to it because it is entirely reproduced in the Domain Name. The addition of the generic top level domain extension “.org” does not eliminate the confusion (see Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Grande Media, WIPO Case No. D2007-0840; Crédit Industriel et Commercial S.A v. Name Privacy, WIPO Case No. D2005-0457).
In relation to element (ii) of paragraph 4(a) of the Policy, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent has no corporate, partnership or fictitious business name or business listing registration under names similar to the disputed Domain Name.
Further, the Respondent has never used any trademark or trade name that consists of the Domain Name or been commonly known by any name that makes up the Domain Name.
In relation to element (iii) of paragraph 4(a) of the Policy, the Complainant contends that evidence of bad faith registration and use is established by the following circumstances:
The Respondent, at the time of the registration of the contested Domain Name, was reasonably aware of the trademarks of the Complainant and of the Complainant's domain names, such as <800flowers.com> and <1800flowers.com>.
The Complainant states that the Respondent is not making any legitimate noncommercial or fair use of the Domain Name. It is in the business of operating portal or search sites to which it drives traffic by registering domain names that are confusingly similar to others' trademarks. These portal or search sites are “click through” sites, from which the Respondent receives revenues from third parties whose websites are accessed via the Respondent's website.
The Respondent's website provides links to companies that directly compete with the Complainant.
The Complainant requests the Panel to transfer the Domain Name to it.
The Respondent did not reply to the Complainant's contentions.
The Domain Name <1800flowers.org> is identical to the trademarks in which the Complainant has rights; the addition of the suffix “.org” which is a necessary component of the Domain Name, does not add any distinctiveness (see e.g., N. M. Rothschild & Sons Limited, Baron Philippe de Rothschild SA, Société Civile de Château Lafite Rothschild v. Beroca Holdings B.V.I. Limited, WIPO Case No. D2007-1055, Crédit Industriel et Commercial SA v. Name Privacy, supra).
There is no doubt that the Domain Name is confusingly similar to the trademarks of the Complainant. Therefore, the Panel finds that the Complainant has satisfied the first element of the Policy.
The Panel finds that there is no evidence in the present record to demonstrate that the Respondent has any rights or legitimate interests in the Domain Name.
The Complainant has not licensed or otherwise permitted or authorized the Respondent to use its trademark, nor to apply for nor to use any domain name incorporating said mark.
The Respondent has not submitted any evidence to demonstrate any rights or legitimate interests in the Domain Name, and the Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(c) of the Policy (see Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Grande Media, supra; UPIB, Inc. v. Texas Internet, WIPO Case No. D2004-0073).
On the contrary, the Complainant has several trademark registrations for 1-800-FLOWERS. Therefore, the Complainant has demonstrated its rights in the 1-800-FLOWERS trademark.
According to the evidence submitted by the Complainant, the Respondent is not making a legitimate noncommercial or fair use of the Domain Name. In fact, the Domain Name, incorporating the Complainant's trademark in its entirety, is used to provide sponsored links which promote and/or offer products and services of third-parties in the same business where the Complainant operates (see Deutsche Telekom AG v. Maggie Eliger, WIPO Case No. D2008-0173; Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBearMarketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinfo, WIPO Case No. D2004-0990).
Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the Domain Name and under these circumstances the Panel finds that the Complainant has satisfied the second element of the Policy.
Based on the evidence presented by the Complainant, the Panel considers that the Respondent registered and used the Domain Name in bad faith.
As sufficient evidence of registration in bad faith, the Panel finds that the Respondent registered the Domain Name most probably with knowledge of the Complainant's rights. Only someone who was familiar with the Complainant's marks would have registered such a confusingly similar Domain Name (see Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0850; AT&T Corp. v. Xinzhiyuan Management Consulting Co., Ltd., WIPO Case No. DCC2004-0001; British Sky Broadcasting Group plc, v. Mr. Pablo Merino and Sky Services S.A, WIPO Case No. D2004-0131; Deutsche Telekom AG v. Britt Cordon, WIPO Case No. D2004-0487).
There is no information as to any business activities of the Respondent that would justify the registration and the use of the Domain Name; nor is there evidence of any rights or legitimate interests in said Domain Name by the Respondent. The Panel finds that, in the absence of any rights or legitimate interests, and in the absence of any contrary evidence from the Respondent, the Respondent's registration of the Domain Name which is confusingly similar to the Complainant's known trademark was done in bad faith (see Accor v. Howell Edwin, WIPO Case No. D2005-0980; Ferrero S.p.A. v. Publinord S.r.l., WIPO Case No. D2002-0395; Banca Sella s.p.a. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
And indeed, the Respondent's awareness of Complainant's activity and rights is indicated by the fact that the Respondent registered a domain name that is confusingly similar to the Complainant's trademark, and has established a website thereon that offers links to other sites where floral products are promoted and offered by third parties, who are the Complainant's competitors (Baccarat SA v. no company, Pavel Gross, WIPO Case No. D2008-0944).
Moreover, in this way Internet users may believe that the linked web sites are associated with or recommended by the Complainant, and this use can not be considered as a bona fide use of the Domain Name (see Ginafranco Ferre' S.p.A. v. Unasi Inc., WIPO Case No. D2005-0622; L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi Inc., WIPO Case No. D2005-0623).
Indeed, in the Panel's opinion, the Respondent, by such use, intentionally attempted to attract Internet users, who were expecting to reach a website corresponding to the Complainant's product and to obtain information about the Complainant's activity, to its website for commercial gain, by creating a likelihood of confusion with the Complainant's trademark and business.
Based on the evidence presented by the Complainant, the Panel finds that the Domain Name was registered and is being used in bad faith.
For all the above mentioned reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <1800flowers.org> be transferred to the Complainant.
Dated: May 5, 2009