|Respondent||Domain Names, Administration, St Kitts Registry|
|Panelist||Thorne, Clive Duncan|
|Date of Decision||10.06.2009|
The Complainant is 1-800-Flowers.com, Inc. of Carle Place, New York, United States of America, represented by Kilpatrick Stockton, LLP, United States of America.
The Respondent is Domain Names, Administration, St Kitts Registry, Olam, Saint Kitts and Nevis.
The disputed domain name <1800basket.com> is registered with Moniker Online Services, LLC.
The Complaint was filed with the WIPO Arbitration and Medication Center (the “Center”) on April 8, 2009. On April 9, 2009, the Center transmitted by email to Moniker Online Services LLC a request for registrar verification in connection with the disputed domain name. On April 14, 2009, Monika Online Services 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.
The Center sent an email communication to the Complainant on April 17, 2009, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 20, 2009. The Center verified that the Complaint together with 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 April 28, 2009. In accordance with the Rules paragraph 5(a), the due date for Response was May 18, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 19, 2009.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on May 27, 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.
In the absence of a filed Response, the Panel relies upon the facts as set out by the Complainant in its Complaint.
The Complainant is in the business of specialty gift basket delivery services operated through a telemarketing system and third party retail outlets. It has used the mark 800-BASKETS since at least 1991 and has sold hundreds of thousands of US dollars worth of gift baskets under the 800-BASKETS marks.
Historically the Complainants' customers placed orders for delivering fruit, candy, meat, cheese and other gourmet food specialty baskets throughout the United States and the world by dialing toll free telephone numbers including “1-800-baskets”. The Complainant then routes orders to selected quality monitored local affiliates who fulfill orders and deliver the final products to their recipients.
When the Internet began developing as a growing trade channel starting in the mid 1990s, the Complainant began advertising its services under the 800-BASKETS marks on one of the fastest growing and most frequently used sites at the time, <AOL.com>. Examples of such advertising are annexed as Exhibit D to the Complaint. The Complainant also registered the domain names <800baskets.com>, <1800baskets.com>and <1-800- baskets.com> on June 11, 1997. True copies of the Whois data base records are annexed as Exhibit E to the Complaint.
By November 2000 the Complainant was using its 800-BASKETS marks on its own online site at the Complainants “1800 flowers.com” site as shown in Exhibit F to the Complaint. Subsequently the Complainant began making its goods and services available under the 800-BASKETS marks at the “1-800-baskets.com” website which can be reached through the <1800baskets.com>, <800baskets.com> and <1-800-baskets.com> domain names. A true and correct copy of an early homepage is annexed as Exhibit G to the Complaint and a true copy of the current homepage for the Complainants site is annexed as Exhibit H to the Complaint. The site has developed substantial consumer recognition popularity, as evidenced by the fact that the site receives tens of thousands of visits by Internet users from all over the world each year.
Since 1991 the Complainant has invested substantial corporate effort and expense in marketing that promotes the reliability of goods and services provided under, and identified by the Complainants 800-BASKETS marks. Examples of marketing materials used at various times from the early 1990s through to the present to promote the 800-BASKETS marks are annexed at Exhibit I to the Complaint.
The Complainant has complemented the marketing of the 800-BASKETS marks with careful brand management to increase consumer perception of each mark as a distinctive indicator of the origin and high quality of the Complainant's goods and services. The Complainant's efforts have resulted in substantial brand awareness of the Complainant's 800-BASKETS marks among consumers. Moreover the Complainant has promoted its 800-BASKETS marks together with its famous 1-800-flowers marks, thereby connecting the brands in consumers' minds and enhancing consumer perception of the 800-BASKETS marks.
The Complaint is based on a number of trade marks and service marks owned by the Complainant:
800-BASKETS – registration (US) No. 175791 issued February 9, 1993.
<1-800-BASKETS.COM> – registration (US) No. 2782517 issued November 11, 2003.
The Panel has noted that evidence of the registrations of these marks together with assignment documents are annexed as Exhibit C to the Complaint.
In the absence of evidence to the contrary from the Respondent, the Panel accepts the truth of the evidence referred to above. In particular the Panel accepts the evidence that the Complainant owns the two trade marks referred to above and as a result of its trading activity since at least 1991 has rights in the mark 800-BASKETS.
The disputed domain name was registered in July 1998. The Complainant's first use of the 800-BASKETS mark predates by more than 7 years to the Respondents registration of the domain name. Internet archive records show that the Respondent's first use of the domain name did not take place until a number of years after it had registered the domain name and did not begin until well after the Complainant was using its <800-baskets.com> and <1800baskets.com> domain names.
The Complainant contends:
(i) The domain name is identical or confusingly similar to trade marks in which the Complainant has rights; and
(ii) There is no evidence to the effect that the Respondent can demonstrate a legitimate interest in the domain name in dispute under the Policy; and
(iii) The Respondent registered and is using the domain name in bad faith.
The Respondent did not reply to the Complainant's contentions.
The Complainant contends that the domain name in dispute is confusingly similar to the Complainant's marks because it is identical to the Complainant's 1-800-BASKETS.COM trade mark differing only by its use of the singular “basket” and its deletion of the dashes used in the Complainants mark.
The Panel accepts this contention and finds that the domain name in dispute is confusingly similar to the Complainants marks relied upon.
The Complainant contends that the Respondent has no rights or legitimate interests in the domain name in dispute because the Complainant has not authorized the Respondent to use its marks and because the Complainant's first use and first registration of its mark predates any use the Respondent may have with the domain name.
In particular it relies upon the following:
(i) That the Complainants first use of the 800-BASKETS marks predates by more than seven years the Respondents registration of the domain name.
(ii) Online directory and public record searches show that the Respondent appears to have no corporate, partnership or fictitious business name or business listing registration under names similar to the disputed domain name.
(iii) There is no evidence that the Respondent has ever used any trade mark or trade name that is consistent with the domain name or has been commonly known by the domain name.
(iv) Because the Complainant has trade mark registrations and common law use that predates the Respondent's domain name registration the Respondent has constructive knowledge of the Complainant's trade mark registrations and knew of the Complainant's prior use.
In the absence of any evidence to the contrary and having considered the Complaint and evidence annexed to the Complaint the Panel finds for the Complainant in respect of this element and finds that the Respondent has no rights or legitimate interest in the domain name in dispute.
The Complainant submits that prior to its adoption and use of the domain name the Respondent was aware of the Complainant's marks. In particular any domain name search conducted in July 1998 when the Respondent registered the domain name would have shown that the Complainant was already the owner of, among other domain names:
(i) <800baskets.com>, <1800baskets.com>, and <1-800-baskets.com>.
(ii) The Respondent is not making any legitimate non-commercial or fair use of the domain name.
(iii) The Respondent appears to be in the business of operating sponsored results for pay per click sites to which it drives traffic by registering domain names that are confusingly similar to others' trade marks.
(iv) The Respondents website displays a host of links that provide a variety of options to web users in the form of search results in a variety of categories. This includes a category title of “1800 flowers.com” which is the domain name for one of the Complainants websites where the Complainant continues to promote its “1800baskets.com” site. The homepage for this site is annexed at Exhibit J to the Complaint.
The Complainant also relies on the fact that “if the user clicks on” to that category the results contain a link to the Complainant's <1800 flowers.com> site as shown in Exhibit K to the Complaint. The user thereby ultimately accepts the Complainant's “www.1800basket.com” site by clicking through to the Complainant's <1800flowers.com> site and searching baskets. It submits that the Respondent has therefore wrongly diverted Internet users who were seeking the Complainant's site to the Respondents gain.
The Complainant also submits that the Respondent uses the “renowned and commercial magnetism” of the Complainant's marks to attract the Internet using public to its website and then in many instances diverts them to the websites of companies not affiliated with the Complainant. This therefore harms the Complainant including causing not only a loss of sales but also a loss of goodwill when the Complainant's potential customers are diverted to unrelated sites.
Having considered this evidence the Panel finds that such use of the domain name in dispute by the Respondent constitutes registration and use in bad faith and that accordingly the Complainant succeeds in this element.
For all the foregoing reasons and in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name in dispute <1800basket.com> be transferred to the Complainant.
Clive Duncan Thorne
Dated: June 10, 2009