|Complainant||Fresh Intellectual Properties, Inc.|
|Panelist||Bernstein, David H.|
|Date of Decision||21.03.2005|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fresh Intellectual Properties, Inc. v. 800Network.com, Inc.
Case No. D2005-0061
1. The Parties
The Complainant is Fresh Intellectual Properties, Inc., Westbury, New York, United States of America, represented by Kilpatrick Stockton LLP.
The Respondent is 800Network.com, Inc., Dover, Delaware, United States of America.
2. The Domain Name and Registrar
The disputed domain name <800-flowers.com> is registered with Tucows Inc. (“Tucows” or the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on January18,2005, and in hardcopy on January20,2005. On January19,2005, the Center by email formally acknowledged receipt of the Complaint.
On January19,2005, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On January19,2005, Tucows transmitted by email to the Center its verification response confirming that 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on February9,2005. As required by the Rules, the Center sent a copy of the Complaint, along with a Notification of Complaint and Commencement of Administrative Proceeding, to Respondent by Federal Express to its street address and to all of Respondent’s known email addresses, including for its administrative and technical contacts. In accordance with the Rules, paragraph 5(a), the due date for the Response was March1,2005. Respondent did not submit any Response. Accordingly, the Center issued a Notification of Respondent Default on March3,2005.
The Center appointed David H. Bernstein as the Sole Panelist in this matter on March10,2005. 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
Because Respondent failed to file a Response, the Panel accepts as true all statements of fact made by Complainant in its submission. See EAuto, L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096 (April9,2000).
Complainant, a Delaware corporation, owns a number of United States trademark or service mark registrations, including 1-800-FLOWERS (Reg. No. 1,009,717; issued April29,1975), 800-FLOWERS (Reg. No. 1,398,787; issued June24,1986), and 1-800-FLOWERS.COM (Reg. No. 2,434,592; issued March13,2001) (collectively, the “800 FLOWERS” marks). Complainant licenses the 800 FLOWERS marks to an affiliate, 1-800-Flowers.com, Inc., which, along with its predecessor entities, has provided a floral product and gift delivery service to customers since at least 1984.1 Historically, customers placed orders for the delivery of flowers, candy and other items by dialing certain toll-free telephone numbers, including “1-800-FLOWERS.” Starting in 1992, however, Complainant made its goods and services available through the Internet. Since 1994, Complainant has made its goods and services available at the website located at <800flowers.com>. Complainant’s site is also accessible through <1800flowers.com>, as well as other addresses.
Respondent registered the <800-flowers.com> domain name (the “Domain Name”) on September24,1998. The Domain Name currently redirects an Internet user to “www.megago.com”, which is an online directory or portal page that permits the user to link to other webpages.
5. Parties’ Contentions
Complainant contends that the Domain Name is virtually identical to its 800 FLOWERS marks because the Domain Name adopts the 800-FLOWERS mark exactly and in its entirety.
Complainant alleges that Respondent lacks any rights or legitimate interests in the Domain Name. Complainant contends that its first use of the 800 FLOWERS marks predates by more than fourteen years any use Respondent may claim to have made of “800-flowers.com” as a trade name, domain name or mark. Complainant alleges that, because its 800 FLOWERS marks were registered before Respondent registered the Domain Name, Respondent is charged with constructive knowledge of such marks and, therefore, any use Respondent may claim to have made cannot be bona fide. Complainant asserts that Respondent does not appear to have a business under the name “800-flowers.com” and states that it has found no evidence that Respondent has ever used the name “800-flowers.com” (other than as a domain name) or been commonly known by such a name. Complainant contends that Respondent is not making any legitimate noncommercial or fair use of the Domain Name.
Complainant alleges that the Domain Name was registered and used in bad faith. Complainant contends that, prior to the registration of the Domain Name, Respondent must have been aware that Complainant was the owner of the 800 FLOWERS marks because of the widespread advertising and marketing conducted by Complainant, because Complainant’s own website would have appeared in any Internet search for “800” and “flowers,” and because any domain name search would have shown that Complainant is the owner of a number of domain names using the 800 FLOWERS marks. Complainant asserts that Respondent has no business interest associated with flowers.
Complainant further alleges that the registrant of the Domain Name is an affiliate of <megago.com> or its principal and that the operators of <megago.com> have been the subject of a number of UDRP decisions for engaging in bad faith conduct in the past. Complainant contends that the Domain Name is being used to direct unwitting Internet users to the “www.megago.com” site for Respondent’s commercial gain by creating a likelihood of confusion with Complainant’s famous marks as to the source or affiliation of Respondent’s website. Complainant alleges that Respondent provides links to companies that directly compete with Complainant and that Respondent receives revenues from third parties whose websites are accessed via Respondent’s website. Finally, Complainant alleges that Respondent’s diversion of users to its site harms Complainant by causing a loss of goodwill and cannot be considered a bona fide offering of goods and services to the public.
Respondent did not reply to Complainant’s contentions.2
6. Discussion and Findings
The burden for Complainant under paragraph 4(a) of the Policy is to prove:
(i) that the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) that 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.
Complainant bears the burden of proving all three of these elements notwithstanding the absence of a Response. As explained in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (the “WIPO Decision Overview”), “[t]he respondent’s default does not automatically result in a decision in favor of the complainant.” Rather, “the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. While a panel may draw negative inferences from the respondent’s default, paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.” Decision Overview 4.6 (available at http://www.wipo.int/amc/en/domains/search/overview/).3
A. Identical or Confusingly Similar
There can be no question but that the Domain Name is identical to Complainant’s 800-FLOWERS mark for the purposes of the Policy. The 800-FLOWERS mark is registered with the U.S. Patent and Trademark Office and thus is entitled to a presumption of validity. Decision Overview 1.1; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 (March24,2000). The Domain Name consists in its entirety of Complainant’s mark, but for the addition of the gTLD “.com,” which may be disregarded for purposes of determining identity or similarity. See, e.g., Habit Holding Co., L.L.C. v. None/Michael Pimentel, WIPO Case No. D2004-1009 (February9,2005). The Panel thus finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant, which asserts that it has not licensed or authorized Respondent to use its mark, has made a prima facie showing that Respondent lacks any rights or legitimate interests in the Domain Name.
Respondent uses the Domain Name to divert Internet users to the “www.megago.com” website. This type of use is neither a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy nor a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii). American Express Co. v. Americaexpress.com, NAF Case No. FA128700 (December18,2002); Circuit City Stores West Coast, Inc. v. Circutcity.com, NAF Case No. FA145233 (March24,2003).
Moreover, there is no evidence in the record that Respondent was commonly known by the name 800-FLOWERS prior to registration of the Domain Name. The Panel thus finds that Respondent has no rights or legitimate interests in the Domain Name pursuant to paragraph 4(c)(ii) of the Policy. Circuit City Stores West Coast, Inc., supra.
Respondent, having submitted no Response, has failed to rebut this showing of no legitimate interests. See Decision Overview 2.1; Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June6,2000). Accordingly, the Panel finds that Complainant has satisfied the requirements ofparagraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Respondent has registered and used the Domain Name in bad faith.
An Internet user who inputs the Domain Name into a browser and is looking for Complainant’s website is instead redirected to “www.megago.com”, which contains a number of links, including one for “Flowers.” If the user clicks on the “Flowers” link, a new page appears with a number of links to Complainant’s competitors. Using a domain name “to redirect Internet users to websites that host links to external websites, including websites of Complainant’s competitors,” is evidence of bad faith. Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031 (March5,2003).
In addition, the Panel accepts Complainant’s unrebutted contention that Respondent4 receives revenues from certain third parties whose websites are accessed via Respondent’s website. Thus, by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to the site at “www.megago.com” by creating a likelihood of confusion with Complainant’s mark. This constitutes bad faith under paragraph 4(b)(iv) of the Policy. See Altavista Company v. O.F.E.Z. et al., WIPO Case No. D2000-1160 (February28,2001) (finding bad faith where Internet users were diverted to <megago.com>); AltaVista Company v. Grandtotal Finances Limited et al., WIPO Case No. D2000-0848 (October17,2000) (finding bad faith where domain-forwarding arrangement rendered it “quite obvious that the only intent of the [r]espondent was to appropriate the goodwill of the [c]omplainant and redirect traffic intended for the [c]omplainant for his own purposes”).
The Panel finds that the above evidence is sufficient to establish registration and use in bad faith under paragraph 4(b) of the Policy. Accordingly, Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <800-flowers.com> be transferred to Complainant.
David H. Bernstein
1 Hereinafter, “Complainant” shall refer to Complainant and its affiliates.
2 Given the absence of a Response, the Panel has carefully reviewed the record to ensure that the Center gave Respondent fair notice of the Complaint. See Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415 (January23,2001). A Federal Express package containing the Complaint was delivered to Respondent’s street address, as listed in its WHOIS registration data, and was signed for on February11,2005. In addition, an electronic copy of the Complaint was sent to the email address listed for both the administrative and technical contacts; the Center did not receive a bounce back notice indicating that its emails to this address (including both the Notification of Complaint and Commencement of Administrative Proceeding and the subsequent Notification of Respondent Default) were not delivered. The Complaint was not sent by fax because Respondent did not provide a fax number for itself or any of its contacts when it registered the Domain Name. Accordingly, the Panel finds that the Center discharged its obligations to provide fair notice, as required by paragraph 2(a) of the Rules.
3 Although the WIPO Decision Overview is not precedential in nature, it does reflect a studied and considered summary of consensus positions culled from the decisions of numerous panelists during the first five years of administration of the UDRP. When such a consensus has developed, it is incumbent upon panels to follow the consensus (or the majority view) to promote consistency among UDRP decisions. As this Panel previously explained in Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014 (April 22, 2004): “Parties in UDRP proceedings are entitled to know that, where the facts of two cases are materially indistinguishable, the complaints and responses will be evaluated in a consistent manner regardless of the identity of the panelist; this goal is undermined when different panels can be expected to rule differently on the same types of facts. Panelists, too, are disadvantaged by these disagreements; they would be able to more efficiently evaluate cases and draft decisions if they knew that they could rely on a shared, consistent set of UDRP principles. If such consistency could be achieved, it also would assist providers, who could assign panelists to cases without any concern that panelist choice may itself inject bias into the system, and would encourage more cost effective decision making as parties could rely on a single panelist rather than having to request a three member panel in order to ensure balance. More generally, because no system of justice can long endure if its decisions are seen as random, consistency will help support the very legitimacy of the UDRP itself. For these reasons, when policy disagreements do arise, panelists should pause and consider whether a consensus has emerged that might inform which way they should rule on these types of issues. If such a consensus has emerged, panelists should endeavor to follow that consensus and thus promote consistent application of the UDRP. See Koninklijke Philips Electronics N.V. v. Relson Ltd., WIPO Case No. DWS2002-0001 (June14,2002); Nikon, Inc. v. Technilab, Inc., WIPO Case No. D2000-1774 (February26,2001), n.3. Such an approach is particularly appropriate in the context of the Policy. That is because UDRP decisions are not binding and non-appealable; rather, a losing party is free to pursue its claim in local courts. See Policy paragaph 4(k). Moreover, even if the consensus supports a decision that individuals believe to be wrong or bad policy, parties would at least know how such decisions would be decided under the Policy, and could elect instead to pursue their claims in court if they believed the judicial system would provide a more just result.”
4 In the absence of any submissions by Respondent, the Panel accepts Complainant’s contention that Respondent is affiliated with the “www.megago.com” website. The Panel’s conclusion appears to be corroborated by a comparison of the WHOIS database records for the Domain Name and <megago.com>, which reveals that for both domain names, the technical contact information and the email address for the administrative contact are identical.