islandrose.com

Philippine Cut Flower Corporation v. The EDCOMM Group

Case No. D2003-0952

The Complainant is Philippine Cut Flower Corporation, Makati City Metro Manila, the Republic of the Philippines, represented by Dustin Andaya, the Republic of the Philippines.

The Respondent is The EDCOMM Group, New York, United States of America, represented by David Shapp, United States of America.

The disputed domain name <islandrose.com> ("Disputed Domain Name") is registered with Network Solutions, Inc. Registrar.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 28, 2003. On November 30, 2003, the Center transmitted by email to Network Solutions, Inc. Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 3, 3003, Network Solutions, Inc. Registrar 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 "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 December 4, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 24, 2003. The Response was filed with the Center on December 19, 2003.

The Center appointed Alistair Payne as the sole panelist in this matter on December 30, 2003. 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 is the registrant of the stylised trade mark "ISLAND ROSE" comprising the words "Island Rose" and a rose device. This mark was registered on June 26, 1998, in the Republic of the Philippines.

The Complainant submits that it has rights in the trade mark "ISLAND ROSE" for the following reasons:

The Complainant has used the "ISLAND ROSE" trade name since July 1988, to describe its rose products through sales materials and brochures, copies of pages of which have been provided in the Complaint. The ISLAND ROSE trade mark was registered in 1998, in the Republic of the Philippines.

The Complainant launched its website at "www.islandrose.net" in December 2000. This website accepts retail orders for rose products from around the world and delivers these products to selected destinations in the Republic of the Philippines.

The Complainant has made significant investments in building the Island Rose brand through advertising, search engine placements and printed sales materials.

The Complainant submits that the Disputed Domain Name is both identical and confusingly similar to the Complainant’s ISLAND ROSE trade mark and its domain name <islandrose.net> in that it uses the same word set in the same order as both its registered mark and its domain name.

The Respondent has no relationship or association with the Complainant. The Respondent’s legal name is The Edcomm Group or Edcomm Inc and has a website at "www.edcomm.com". The Respondent has no known legal trade marks for the name "Island Rose" and is not commonly known by that name.

The Respondent has made no demonstrable preparations to use the website at the Disputed Domain Name in connection with a bona fide offering of goods and services. From approximately May 16, 2001 to October 16, 2003, the website at the Disputed Domain Name stated "The domain name you have typed – islandrose.com – is inactive and has been reserved by The Edcomm Group. If your browser doesn’t take you there automatically, click here to visit www.edcomm.com". Prior to this the Disputed Domain Name was leased to a separate business entity called Rosenberger Realty through a product of the Respondent, called "EZ real estate web". Since October 16, 2003, the website at the Disputed Domain Name has displayed an article about roses entitled "An Island of Roses to Rescue" that has nothing to do with the Respondent, its organisational purpose, or its product and service offerings. The Respondent, on its website at "www.edcomm.com" claims to be a multimedia education and communication consulting firm specializing in the development of creative business solutions, and its services include website design, web hosting and internet sales support systems. Its website does not mention the words "Island" and/or "Rose" and therefore the Respondent has no interest in rose or flower related websites.

The Respondent is not making legitimate non-commercial or fair use of the Disputed Domain Name. The Respondent placed the article referred to above to pressure the Complainant to purchase the Disputed Domain Name.

The Complainant details the history of the negotiations surrounding the sale and purchase of the Disputed Domain Name. Further details of these negotiations are set out in section 5(A)(3) below.

The Complainant puts forward lengthy submissions regarding the Respondent’s registration and use of the Disputed Domain Name in bad faith, the key points of which for the purposes of the Policy can be summarised as follows:

The Respondent registered and used the Disputed Domain Name primarily for the purpose of selling, renting or otherwise transferring the Disputed Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the Disputed Domain Name.

The Complainant’s representative made an offer of US$300 to purchase the Disputed Domain Name on March 12, 2003, but the Respondent’s representative requested the Complainant to make an offer "in the thousands". The Complainant then agreed to make an offer of $1500, however the Respondent replied that it would hold on to the Disputed Domain Name "until an offer is received more in line with its value". The Complainant made an offer of $2950 and on July 7, 2003, the Respondent replied to the Complainant stating that it would accept $5000. The Complainant accepted this offer and the sale was agreed upon as witnessed by a third party escrow service "www.afternic.com".

The Respondent subsequently withdrew from the sale and continued to pressure the Complainant to make a higher offer by deliberately placing content on its website that is similar to the Complainant’s products. The Complainant submits that these actions of the Respondent prove that the circumstance set out in paragraph 4(b)(iv) of the Policy is present in this case.

The mark "ISLAND ROSE" is not entitled to trade mark protection as it comprises two generic terms, which cannot function as a mark (Pet Warehouse v. Pets.com, Inc., WIPO Case No. D2000-0105). The Respondent’s use of these two generic words simply constitutes an alternate use of the same generic terms that is based on a reasonable, good faith belief that the terms are generic and therefore, not protected.

The Respondent registered the Disputed Domain Name in 1998, on behalf of a client who owned a real estate firm called Prudential Rosenberg Realty. The Respondent established 16 domains for this client including the Disputed Domain Name to represent the firm’s coastal real estate business office. The Respondent was not aware that there was an Island Rose business selling flowers in the Philippines.

By developing, hosting and maintaining a website at the Disputed Domain Name for its client, the Respondent has made good faith preparations to use the website at the Disputed Domain Name for a bona fide offering of services prior to registration of the Disputed Domain Name and prior to the commencement of this administrative proceeding. The site was taken down when its client was unable to pay the Respondent’s invoices. The Respondent is not selling similar products as the Complainant.

With regard to the negotiations regarding the sale and purchase of the Disputed Domain Name, the Respondent submits that it was approached by a representative of the Complainant who presented her interest in the Disputed Domain Name because she "liked the name" and wanted to "open a little web store selling candles and gifts". At no time during the discussions did this person say that she represented the Complainant. The same is true for the second representative of the Complainant who represented herself as the first representative’s partner in the candle and gift web store venture. The Respondent broke off negotiations with the Complainant when it learned of the deception.

In accordance with paragraph 4(a) of the Policy, in order to succeed in this Administrative Proceeding and obtain the requested remedy (in this case transfer of the Disputed Domain Name), the Complainant must prove that each of the three following elements are present:

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

This element of the Policy requires the Complainant to prove (a) that it has rights in a trade mark or service mark, and (b) that the Disputed Domain Name is identical to or confusingly similar to such trade mark or service mark.

The Complainant has proved that it has registered rights in a mark comprising the words "ISLAND ROSE". The Panel finds that the Disputed Domain Name is identical to the Complainant’s mark, and that the Complainant has established this element of the Policy.

Paragraph 4(c) of the Policy sets out a number of circumstances that a Respondent may use to demonstrate its rights or legitimate interests to the domain name.

It may be that at the time of registration of the Disputed Domain Name, the Respondent (by virtue of the fact that it had developed and was hosting and maintaining the website at the Disputed Domain Name for one of its clients) was using the Disputed Domain Name in connection with a bona fide offering of services. However, that client appears to be no longer associated with the Disputed Domain Name or the Respondent, and that website is no longer active at the Disputed Domain Name. The Respondent has provided no evidence to prove that it has any legitimate association or connection with the article currently displayed on the website at the Disputed Domain Name such as to constitute a legitimate non-commercial fair use of the Disputed Domain Name, or that it otherwise currently has rights or legitimate interests in the Disputed Domain Name.

The Panel finds that the Respondent has no rights or legitimate interests to the Disputed Domain Name under paragraph 4(c) of the Policy and accordingly this element of the Policy is established.

The issue to be considered under this element of the Policy in this case is whether the Respondent registered the Disputed Domain Name in bad faith. A number of previous UDRP decisions have held that both registration and use in bad faith is required to be proved by the Complainant if it is to succeed under this element of the Policy (see for example Village Resorts Ltd v. Steven Lieberman,WIPO Case No. D2001-0814 and Digital Vision, Ltd v. Advanced Chemill Systems, WIPO Case No. D2001-0827).

The Respondent registered the Disputed Domain Name in 1998, for one of its clients who wanted to establish an on-line location for its real estate business. The Respondent then developed, hosted and maintained its client’s website at the Disputed Domain Name until the client became unable to pay the Respondent’s invoices for these services.

The Panel accepts that the Respondent was unaware of the Complainant and its ISLAND ROSE mark at the time of registration of the Disputed Domain Name. There is no evidence suggesting that the Respondent registered the Disputed Domain Name primarily for the purpose of selling, renting or otherwise transferring the Disputed Domain Name to the Complainant for more than its out-of-pocket expenses, or that it otherwise registered the Disputed Domain Name in bad faith.

Subsequent to registration of the Disputed Domain Name, the Respondent has offered to sell the Disputed Domain Name for more than its out-of-pocket expenses and placed on its website an article unrelated to the Respondent or its goods or services. For the purposes of the Policy this constitutes use of the Disputed Domain Name in bad faith, however this is not enough for the Complainant to succeed in proving this element of the Policy. The Policy requires the Complainant to prove both registration and use of the Disputed Domain Name in bad faith. Accordingly, the Panel finds that this element of the Policy is not established.

As noted above, the Policy requires the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy are present. The Complainant has failed to establish that the third element of the Policy and therefore the Complaint fails.

For all the foregoing reasons, the Complaint is denied.