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WIPO-UDRP Decision
D2006-0977

Case number
D2006-0977
Complainant
Fannie May Confections, Inc.,, Fresh Intellectual Properties, Inc., 1-800-Flowers.com, Inc
Respondent
G Design
Panelist
Carabelli, Anna
Status
Closed
Decision
Transfer

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

1-800-Flowers.com, Inc, Fresh Intellectual Properties, Inc., FannieMayConfections,Inc., v. G Design

Case No.D2006-0977

1. The Parties

The Complainant is 1-800-Flowers.com, Inc, Fresh Intellectual Properties, Inc., and Fannie May Confections, Inc., NewYork, UnitedStatesofAmerica, represented by KilpatrickStockton,LLP, UnitedStatesofAmerica.

The Respondent is G Design, Taiyuan, Shanxi, China.

2. The Domain Names and Registrar

The disputed domain names <fanneimay.com>, <fannemay.com>, <fannimay.com>, <180flowers.com>, and <18000flower.com> are registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the“Center”) on August2,2006. On August3,2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On August5,2006, Go Daddy Software 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, billing, and technical contact. 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“SupplementalRules”).

In accordance with the Rules, paragraphs2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August16,2006. In accordance with the Rules, paragraph5(a), the due date for Response was September5,2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September6,2006.

The Center appointed AnnaCarabelli as the Sole Panelist in this matter on September18,2006, indicating that absent exceptional circumstances the decision would be due by October2,2006. 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, paragraph7.

Upon reviewing the Complaint and the Exhibits attached thereto, the Panel issued Procedural Order No.1, which was notified to the parties on September28,2006, requesting the Complainant to submit by October5,2006, certain assignment documents which although indicated as included in Exhibit C were not actually attached to the Complaint and additional information and documentary evidence to establish the relation between the Complainant and some of the marks attached to the Complaint as Exhibit C. The Panel also postponed the deadline for decision until October13,2006. On October5,2006, the Complainant submitted a Response to the Panel Procedural Order No.1, including the requested information/documentation.

4. Factual Background

The Complainant has provided evidence of U.S. Patent and Trademark Office registrations and actual ownership by direct registration, transfer and assignment, as it is applicable, of the following marks (Exhibits D and C, as integrated by the Complainant’s response to Panel Procedural Order No.1):

1) “800 FLOWERS MARKS”:

T.M./S.M.

Reg. No.

Issuance Date

1-800-FLOWERS

1,009,717

April29,1975

800-FLOWERS

1,398,787

June24,1986

CALL-1-800-FLOWERS

1,761,641

March30,1993

1-800- FLOWERS & DESIGN

2,014,298

November5,1996

1-800- FLOWERS.COM

2,434,592

March13,2001

2) “FANNIE MAY MARKS”:

T.M./S.M.

Reg. No.

Issuance Date

FANNIE MAY KITCHEN FRESH CANDIES

1,407,863

September2,1986

I LOVE MY HONEY BUT OH YOU FANNIE MAY!

1,468,535

December8,1987

FANNIE MAY

2,121,790

December16,1997

FANNY MAY CANDIES CELEBRATED COLLECTION

2,173,898

July14,1998

The Complainant operates the websites under the domain names <fanniemay.com> and <1800flowers.com>, which are both registered in the name of the Complainant 1-800-Flowers.Com.Inc.

The Complainant’s website under “www.fanniemay.com” confirm that the complaining companies are related corporations, which have sufficient interest in the Domain Names for them to be joined in this action (Adidas International Marketing BV and adidas-Salomon AG v. Sonia Eguia, WIPO Case No.D2006-0475, Staples, Inc., Staples The Office Superstore, Inc., Staples Contract & Commercial, Inc. v. John Morgan, WIPO Case No.D2004-0537).

The Respondent registered the Domain Names on the following dates:

<18000flower.com>, January18,2005;

<180flowers.com>, September30,2001;

<fannimay.com>, December21,2004;

<fanneimay.com>, February1,2005;

<fannemay.com>, February1,2005.

The Respondent has been using the Domain Names in connection with redirecting websites which in some cases offer links to other websites belonging to the Complainant’s direct competitors’ (Complaint’s Exhibits G, H, L, M, I) and to sites that may suggest some kind of association between the Respondent’s sites and the Complainant (Complaint’s Exhibits N, O, P).

The Respondent has registered and is the holder of about 1500 domain names, some of which incorporate or are confusingly similar to third parties’ well-known trademarks (Complaint’s Exhibit R).

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- the Domain Names are confusingly similar to the Complainant’s marks because they consist of predictable misspellings or mistypings of the Complainant’s “800 Flowers” and “Fannie May” marks which have become distinctive and extremely well-known through the use made by the Complainant over the years;

- the Respondent has no right or legitimate interest in the Domain Names and is not making any legitimate non commercial or fair use thereof or any use in connection with a bona fide offering of goods and services;

- the Complainant’s and their predecessors’ first use and first registration of their marks pre-date any use the Respondent may have made of any of the Domain Names;

- the Domain Names were registered in bad faith since the Respondent could not have been unaware of the Complainant’s marks when he registered the Domain Names;

- the Respondent’s bad faith in connection with the registration of the Domain Names is also supported by the fact that the he has intentionally registered several domain names that are similar but slightly misspelled variations of long use and well-known third parties’ trademarks;

- the Domain Names are being used in bath faith, in connection with portal or search “click through” sites from which the Respondent receives revenues from third parties whose websites are accessed via the Respondent’s websites, and that Respondent intentionally attempts to attract for commercial gain Internet users who are looking for the Complainant’s goods and services.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights in the “800 Flowers” and “Fannie May” marks listed in paragraph4 above, by submitting various U.S. Patent and Trademark registrations and Assignments (Complainant’s Exhibits D and C, as integrated by the Complainant’s response to Panel Procedural Order No. 1).

The Panel also determines that Respondent’s registered Domain Names are confusingly similar to the point of being nearly identical to Complainant’s’ marks as the differences between them consist of typical misspellings/mistypings of Complainant’s marks, namely:

(a) inversion of two letters: <fanneimay.com>;

(b) one letter/number deletion: <fannemay.com>; <fannimay.com>; <180flowers.com>;

(c) adding of a “0” and deletion of letter “s”: <18000flower.com>.

Previous Panel decisions are consistent in considering such misspellings as confusingly similar to the relevant misspelled Trade and Service mark. (See e.g.: Media West- GRS, Inc., Media West – MNC, Inc., Gannett Pacific Corporation, Gannet Co., Inc., Gannett River States Publishing Corp., Guam Publications, Incorporated v. Moniker Privacy Services/Forum LLC/Registrant (187640) info@fashionid.com, WIPO Case No.D2006-0478, Kelley Blue Book Company, Inc. v. Nikolay Golovin aka Buy-movie.net, WIPO Case No.D2005-0837, Easy Group IP Licensing Limited v. John Sansone, WIPO Case No.D2004-0763, Staples, Inc., Staples The Office Superstore, Inc., Staples Contract & Commercial, Inc. v. John Morgan, WIPO Case No.D2004-0537).

In the light of the above, the Panel finds that the Complainant has met the requirement of paragraph4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph4(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 paragraph4(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 Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial 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 Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names under Policy paragraph4(c). According to a consistent line of WIPO decisions in such a case the burden of proof shifts to the Respondent to rebut the evidence. (See e.g. Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No.D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No.D2002-0683). As a consequence, the Respondent’s failure to reply to the Complaint allows the Panel to infer that the Respondent has not such rights or legitimate interests.

Moreover, the Panel finds, in line with WIPO Panel decisions, that the Respondent’s use of the Domain Names to divert Internet users to his websites and redirect them to other websites, some of which belonging to the Complainant’s direct competitors, presumably receiving compensation for this misdirection, cannot be considered a bona fide use of a domain name as per paragraph4(c)(iii) of the Policy. (See e.g., Lyonnaise de Banque v. Richard J., WIPO Case No.D2006-0142, Motorola, Inc. v. Mr. Josip Broz, WIPO Case No.D2002-1063).

Consequently, the Panel deems that the Respondent has no rights or legitimate interest in the Domain Names under paragraph4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

As established in paragraph6.A. above, the Domain Names consist of typical misspellings/mistypings of the Complainant’s marks. It is therefore very unlikely that the Respondent, at the time he registered the Domain Names, was not aware of the Complainant’s trademarks (See Nokia, Inc. v. B. B. de Boer, WIPO Case No.D2000-1397). Based on the above, the Panel agrees that the Respondent has registered the Domain Names in bad faith.

The Panel finds that the Respondent’s activity clearly amounts to typo squatting conduct which, relying on predictable typographical errors of known trademarks, intentionally aims at attracting and diverting Internet users to his referring portal.

As stated in various WIPO Panel decisions, such a use of a referring portal to attract and redirect for commercial gain (by collection of referral fees) Internet users to somebody else’s sites, some of which, moreover, belong to Complainant’s direct competitors, is to be considered a clear case of bad faith use of domain names (MediaWest – GRS, Inc., Media West – MNC, Inc., Gannett Pacific Corporation, Gannet Co., Inc., Gannett River States Publishing Corp., Guam Publications, Incorporated v. Moniker Privacy Services/Forum LLC/Registrant(187640) info@fashionid.com, WIPO Case No.D2006-0478, Humana Inc. v. Domain Deluxe, WIPO Case No.D2005-0231, Easy Group IP Licensing Limited v. John Sansone, WIPO Case No.D2004-0763).

Moreover, the Respondent is involved in a consistent bad faith typo squatting conduct, as evidenced by the Respondent’s registration of several misspelled domain names some of which incorporate or are similar to third parties’ well known trademarks (Complainant's Exhibits R, S and T).

As a consequence, the Panel determines that the Complainant has established bad faith according to Paragraph4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs4(i) of the Policy and 15of the Rules, the Panel orders that the domain names <fanneimay.com>, <fannemay.com>, <fannimay.com>, <180flowers.com>, and <18000flower.com>, be transferred to the Complainant.

Anna Carabelli
Sole Panalist

Dated: October13,2006