|Panelist||O'Connor, Bruce E.|
|Date of Decision||02.04.2012|
Complainant is 1-800-FLOWERS.COM, INC of Carle Place, New York, United States of America (“U.S.”) represented by Kilpatrick Townsend & Stockton LLP, U.S.
Respondent is Megan Baltimore of Torrance, California, U.S.
The disputed domain name <1800iflowers.com> (the “Domain Name”) is registered with 1&1 Internet AG (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2012. On February 13, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 15, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Complainant filed an amended Complaint on February 21, 2012.
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 Respondent of the Complaint, and the proceedings commenced on February 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 13, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 14, 2012.
The Center appointed Bruce E. O’Connor as the sole panelist in this matter on March 20, 2012. 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.
Given the default of Respondent, the Panel is entitled to and does draw the inference that all facts alleged in the Complaint are true. See paragraph 14(b) of the Policy.
For nearly four decades, Complainant has continuously and exclusively used the 1-800-FLOWERS mark and other trademarks and service marks incorporating the terms “800” and “FLOWERS” (collectively, the “800-FLOWERS Marks”) in connection with its provision of floral and gift delivery-related goods and services. Since 1984, Complainant has worked with its retail stores and with selected, quality-monitored local affiliates to fill customer orders and deliver products to their intended recipients in accordance with Complainant’s and the customers’ specifications.
Historically, customers placed orders for delivery of flowers, fruit, candy, balloons, stuffed animals, floral arrangements, and gifts throughout the U.S. by dialing toll-free telephone numbers, including “1-800-FLOWERS.” In 1992, as a complement to its toll-free telephone numbers, Complainant began offering its products and services online. Since 1995, consumers have been able to purchase Complainant’s products through an interactive Internet website accessible through several domain names, including <1800flowers.com>, <800flowers.com>, and <1-800-flowers.com> (the “Website”).
As a result of Complainant’s continuous and exclusive use of the 800-FLOWERS Marks in commerce, Complainant owns valid and enforceable trademark and service mark rights in the 800-FLOWERS Marks. In addition to its strong common law rights, the United States Patent and Trademark Office (“USPTO) has issued to Complainant several registrations encompassing the 800-FLOWERS Marks, including the following:
1-800-FLOWERS .COM (stylized)
1-800-FLOWERS & Design
MOM 1-800-FLOWERS .COM
THE ONE 800 NUMBER FOR FLOWERS
These registrations are subsisting and constitute prima facie evidence of the distinctiveness and validity of the underlying 800-FLOWERS Marks.
For decades, Complainant has provided, and continues to provide, high quality products and services under its 800-FLOWERS Marks. Over the past five years, Complainant has spent hundreds of millions of dollars promoting and marketing the products and services it offers under its 800-FLOWERS Marks. Complainant’s Website is extremely well known, averaging over 1.8 million unique visitors per month, and links to Complainant’s Website are displayed prominently on the web sites of over 9,000 online affiliates. Complainant’s Website has also received critical acclaim for its quality, including, for example, mentions by Net Guide, Point, and PC Computing as one of the best websites available online. The website was named as one of the “best places to shop online” by The Wall Street Journal, and is prominently featured on major portal web sites such as Google and Yahoo. Additionally, Complainant’s Facebook page currently has over 300,000 fans.
Over the years, Complainant has complemented the advertising of its 800-FLOWERS Marks with careful brand management to increase consumer perception of the marks as distinctive indicators of the origin and high quality of Complainant’s goods and services. Complainant’s efforts have resulted in instant name recognition and substantial brand awareness of Complainant and its 800-FLOWERS Marks among consumers. Consequently, the 800-FLOWERS Marks have acquired a high degree of public recognition and distinctiveness throughout the U.S. as symbols of the source of the high quality goods and services offered by Complainant. The public has come to perceive goods and services offered under the 800-FLOWERS Marks as emanating from or being endorsed by or affiliated with Complainant.
On October 12, 2011, the <1800iflowers.com> Domain Name was registered and the Respondent is the current registrant of record for the Domain Name. Respondent then began operating as what appeared to be a floral and gift delivery business under the name “1800iflowers” through the Domain Name and its corresponding website, purporting to offer products and services identical to those long offered by Complainant in connection with its 800-FLOWERS Marks and offering such incentives as free shipping within the U.S. and Canada.
On or about November 15, 2011, a representative of Complainant placed an order through the “www.1800iflowers.com” website to determine the quality of the products offered by Respondent. In response, Respondent sent an email stating that the company only accepted MasterCard, American Express and Discover credit cards and did not accept Visa as a form of payment, despite the fact that payment by Visa credit card was an option at the point of purchase.
Complainant’s representative then placed his order again, this time using a MasterCard credit card instead of the Visa card. This order was also subsequently cancelled, with Respondent sending an email stating that the company could deliver only within the State of California at that time.
Within days after Complainant’s representative placed both orders through the “www.1800iflowers.com” website, unauthorized charges of $99.00 appeared on each of the credit cards used to place the now-cancelled orders, with the merchant listed as “Tabarak Cell Phone and Computer Maintenance.” Other than the orders placed on the “www.1800iflowers.com” website, there was no other vendor with which both cards had been used.
A third order was placed through the “www.1800iflowers.com” website on November 29, 2011 using a MasterCard credit card and requesting shipment to a California address. This order was never delivered to its intended recipient, nor was it cancelled. Instead, on December 8, 2011, several unauthorized charges appeared on the credit card used to place this order.
Consumers who see the Domain Name are certain to associate the name with Complainant because the Domain Name incorporates the entirety of the 1-800-FLOWERS mark; in such cases, confusing similarity must be presumed.
The only difference between the 1-800-FLOWERS mark and the Domain Name is the addition of the letter “i” immediately preceding the term “flowers” and the deletion of hyphens. The addition of the letter “i”, which is often used as part of the name for a business conducted over the Internet, does not serve to distinguish the Domain Name from Complainant’s mark. Indeed, it is well established that likelihood of confusion is not eliminated, or even necessarily reduced, by the addition or deletion of a letter or a hyphen.
Complainant’s first use and registration of its 800-FLOWERS Marks long predate any use the Respondent made of the Domain Name, registered on or about October 13, 2011. Because Complainant has both federal registrations and common law rights that predate Respondent’s domain name registration, the Respondent is charged with constructive knowledge of Complainant’s prior trademark rights in the 800-FLOWERS Marks. The burden therefore shifts to Respondent to establish rights or a legitimate interest in the Domain Name.
Respondent cannot demonstrate or establish such rights or a legitimate interest. There is no relationship between Complainant and Respondent giving rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating Complainant’s 800-FLOWERS Marks. Respondent is not an authorized distributor or representative of Complainant’s products and services, there has never been any business relationship whatsoever between Complainant and Respondent, and Respondent has never been given any permission to register or use the Domain Name. Complainant does not sponsor or endorse Respondent’s activities in any respect and has not provided its consent to Respondent’s use and exploitation of the 800-FLOWERS Marks in the Domain Name and on its accompanying website.
Respondent’s lack of any legitimate interest is further established by the fact that Respondent appears to have registered and was using the Domain Name solely for commercial gain and in connection with a scheme to defraud the public, as explained in detail below. Respondent sought to profit by using the Domain Name to promote herself and her purported floral delivery products and services by trading on the goodwill associated with Complainant and its extremely well-known 800-FLOWERS Marks to lure prospective purchasers to the website located at the Domain Name. Such use cannot constitute a bona fide use of the Domain Name.
Respondent’s bad faith registration and use of the Domain Name is established by the fact that the Domain Name has been used in an apparent scheme to defraud confused prospective purchasers into providing their credit card information under the belief that they in return would receive high quality floral and gift delivery services from Complainant.
Additionally, the Domain Name is nearly identical to Complainant’s extremely well-known 800-FLOWERS Marks, fully incorporates the 1-800-FLOWERS mark and has been used in connection with a website that appears to offer the same goods and services as those long-offered by Complainant. Such registration and use of the Domain Name is, in and of itself, a form of opportunistic bad faith because Respondent is seeking to attract Internet users to its website by creating consumer confusion and diverting users seeking Complainant’s website.
In sum, the fact that Respondent has targeted Complainant is obvious from the notoriety of Complainant’s 800-FLOWERS Marks and from Respondent’s own bad faith conduct. Respondent’s only possible reason for registration of a domain name so confusingly similar to Complainant’s 800-FLOWERS Marks for a website intended to look as if it offered the same products and services as Complainant was to capitalize on the hard-earned and valuable goodwill associated with Complainant’s 800-FLOWERS Marks.
Respondent did not reply to Complainant’s contentions.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph (4)(a) of the Policy states that the Domain Name can be transferred where Complainant has established the following:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(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 has established rights in the 800-FLOWERS Marks. These rights come from Complainant’s U.S. Trademark Registration No. 1,009,717 and other U.S registrations, pleaded and proven by Complainant. These rights also come from the long, extensive, and exclusive use of those marks in the U.S., pleaded and proven by Complainant.
The Domain Name is confusingly similar to the 800-FLOWERS Marks. Specifically considering only Complainant’s 1-800-FLOWERS.COM mark, protected by U.S. Trademark Registration No. 2,434,592, the Domain Name is distinguished only by the absence of the hyphens in, and the addition of the letter “i” to, that mark. Deletion of punctuation cannot be a distinguishing feature, unless it significantly changes the appearance and meaning of the mark, which is not the case here. Addition of the letter “i”, widely used to signify the Internet, cannot be a distinguishing feature, unless it significantly changes the appearance and meaning of the mark, which is not the case here.
Complainant has carried its burden of proof under paragraph 4(a)(i) of the Policy.
The services associated with the 800-FLOWERS Marks include floral delivery services. Respondent, without authorization from Complainant, has offered and is offering floral delivery services through a website using the Domain Name, and began such offering long after Complainant established rights in the 800-FLOWERS Marks. Respondent’s use of the Domain Name thus appears to target Complainant’s rights in those marks.
Paragraph 4(c) of the Policy lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interest of a domain name registrant to a domain name for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice of the dispute, Respondent’s 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 and services; or
(ii) Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) Respondent is making a legitimate noncommercial 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.
In the Panel’s opinion, the circumstances of paragraph 4(c) are for Respondent to prove, not for Complainant to disprove. Prior UDRP decisions opine, however, that Complainant should make a prima facie showing that Respondent does not come under those circumstances (e.g., De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
Complainant has made such a prima facie case. Respondent’s use of the Domain Name (targeting Complainant’s rights) is not bona fide, Respondent’s name is not the Domain Name, and Respondent’s use of the Domain Name is for commercial gain and misleadingly diverts consumers as discussed below.
Complainant has carried its burden of proof under paragraph 4(a)(ii) of the Policy.
The circumstances of paragraph 4(b) of the Policy are illustrative but not exhaustive of the circumstances under which bad faith registration and use under Policy paragraph 4(a)(iii) can be established.
Paragraph 4(b) reads:
[T]he following circumstances, 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:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(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 web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
In each of the circumstances listed in Policy paragraph 4(b), or otherwise, Complainant must establish that Respondent intentionally and actively registered and used the Domain Name for the purpose of causing injury to Complainant. And, Respondent must have known or should have known of Complainant’s mark.
Lack of rights or legitimate interests under Policy paragraph 4(a)(ii) does not automatically translate into a finding of bad faith under Policy paragraph 4(a)(iii). Proof of Policy paragraph 4(a)(iii) generally requires more than assertions of bad faith.
Complainant has proven the circumstances of paragraph 4(b)(iii) (irrespective of the extent to which the fraudulent actions of Respondent could be considered competitive with the services provided by Complainant) and/or 4(b)(iv).
Complainant’s rights in the 800-FLOWERS Marks have been in existence for over 35 years. Complainant has demonstrated a significant, current presence on the Internet, using the 800-FLOWERS Marks, that predates the registration and use of the Domain Name. Respondent knew or should have known of Complainant’s marks when she registered the Domain Name. Complainant has demonstrated not one, not two, but three instances of fraud in the operation of a web site using the Domain Name that purported to provide floral delivery services. In each instance, money was acquired by or on behalf of the web site operator but no services were provided. A more evident example of bad faith use through diversion of trade would be difficult to find.
Complainant has carried its burden of proof under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <1800iflowers.com> be transferred to Complainant.
Bruce E. O'Connor
Dated: April 2, 2012