Complainant is Irvine Florist Ltd., of United States of America, represented by Stetina Brunda Garred & Brucker, United States of America.
Respondent is JOE VALDEZ, of United States of America.
2. The Domain Name and Registrar
The disputed domain name <irvine-florist.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2008. On April 29, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On April 29, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing underlying registrant and contact information for the disputed domain name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 2, 2008 providing the underlying registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on May 7, 2008. The Center verified that the Complaint together with the amendment to 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 May 8, 2008. The Complaint named Domains by Proxy, Inc. and Joe Valdez as Respondents. By e-mail dated May 12, 2008, Complainant requested the Complaint be amended to name only Joe Valdez as Respondent. Thus references to Respondent herein refer only to Joe Valdez. See, e.g. Xtraplus Corporation v. Flawless Computers, WIPO Case No. D2007-0070, The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658], WIPO Case No. D2007-1438. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 29, 2008.
The Center appointed Sandra J. Franklin as the sole panelist in this matter on June 9, 2008. 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
Complainant has been in the flower business since 1974 under its mark IRVINE FLORIST. Complainant holds a Trademark Registration issued by the United States Patent and Trademark Office (“USPTO”), registered on the Principal Register. Complainant operates on the Internet and is ranked in the top 50 companies with Teleflora. Respondent registered <irvine-florist.com> on September 7, 2007, and uses the domain name to redirect Internet users to GoFlorist.com.
5. Parties’ Contentions
A. Complainant
1. Respondent’s <irvine-florist.com> domain name is confusingly similar to Complainant’s IRVINE FLORIST mark.
2. Respondent has no legitimate rights or interests in the <irvine-florist.com> domain name.
3. Respondent registered and used the <irvine-florist.com> domain name in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
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”.
In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Case No. 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Michael Robertson,
WIPO Case No. D2000-0009 (February 29, 2000) (In the absence of a response, it is appropriate to accept as true all allegations of the Complaint).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant’s registration of the IRVINE FLORIST mark with the USPTO establishes its rights under Policy paragraph 4(a)(i). SeeMiller Brewing Company v. The Miller Family, NAF Case No. 104177 (Nat. Arb. Forum April 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Microsoft Corporation v. Stephan Burkes dba MicrosoftZone.Com, NAF Case No. 652743 (Nat. Arb. Forum April 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <irvine-florist.com> domain name is identical to Complainant’s IRVINE FLORIST mark, as it incorporates the mark in its entirety and adds only a hyphen and the generic top-level domain “.com.” The addition of a hyphen and the top-level domain “.com” are irrelevant when conducting a Policy paragraph 4(a)(i) analysis. Therefore, the Panel finds the disputed domain name identical to Complainant’s mark pursuant to Policy paragraph 4(a)(i). See InfoSpace.com, Inc. v. Tenenbaum Ofer,
WIPO Case No. D2000-0075 (WIPO April 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”); see also Chernow Communications, Inc. v. Jonathan D. Kimball,
WIPO Case No. D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark").
The Panel finds that Complainant satisfied Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
Complainant asserts that Respondent lacks rights or legitimate interests in the <irvine-florist.com> domain name. Complainant has the burden of proof for this allegation pursuant to Policy paragraph 4(a)(ii). Once Complainant has made a prima facie showing, the burden of proof shifts to Respondent. The Panel finds Complainant has met its burden. See Do The Hustle, LLC v. Tropic Web,
WIPO Case No. D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Medical Investment Group Limited v. Clericalmedical.com (Clerical & Medical Services Agency),
WIPO Case No. D2000-1228 (WIPO November 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to respond to the Complaint allows the Panel to assume Respondent has no rights or legitimate interests in the <irvine-florist.com> domain name. See American Express Company v. Fang Suhendro aka American Express Indonesia, NAF Case No. 129120 (Nat. Arb. Forum December 30, 2002) (“[B]ased on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Do the Hustle, LLC v. Tropic Web,
WIPO Case No. D2000-0624 (WIPO August 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”). Nonetheless, the Panel will examine the record to determine rights or legitimate interests under Policy paragraph 4(c).
The record contains nothing to suggest Respondent is commonly known by the disputed domain name pursuant to Policy paragraph 4(c)(ii). Respondent is not licensed or authorized to use the IRVINE FLORIST mark. The Panel finds that Respondent has no rights or legitimate interests to the <irvine-florist.com> domain name under Policy paragraph 4(c)(ii). See Tercent Inc. v. Lee Yi, NAF Case No.139720 (Nat. Arb. Forum February 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy paragraph 4(c)(ii) does not apply); see also Ian Schrager Hotels, L.L.C. Beach Hotel Associates Limited v. Jay Taylor, NAF Case No. 173369 (Nat. Arb. Forum September 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Respondent is using the <irvine-florist.com> domain name to divert Internet users to its website at “GoFlorist.com” offering similar floral services to that of Complainant. Respondent appears to be using the disputed domain name for monetary gain, by capitalizing on the good reputation of Complainant’s mark. The Panel finds this is not a bona fide offering of goods or services under Policy paragraph 4(c)(i) or a legitimate noncommercial or fair use under Policy paragraph 4(c)(iii). See Oregon State Bar v. A Special Day, Inc., NAF Case No. 99657 (Nat. Arb. Forum December 4, 2001) (“Respondent’s advertising of legal services and sale of law-related books under Complainant’s name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant’s to sell competing goods.”); see also Ameritrade Holdings Corporation and Ameritrade Inc v. Polanski, NAF Case No. 102715 (Nat. Arb. Forum January 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
The Panel finds that Policy paragraph 4(a)(ii) has been satisfied.
C. Registered and Used in Bad Faith
Respondent’s <irvine-florist.com> domain name resolves to a website offering similar services to that of Complainant’s business. The Panel finds that this use by Respondent constitutes intent to disrupt Complainant’s business. Therefore, the Panel concludes that this use of the <irvine-florist.com> domain name constitutes bad faith pursuant to Policy paragraph 4(b)(iii). See EthnicGrocer.com, Inc. v. LatinGrocer.com, NAF Case No. 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business); see also EBAY, Inc. v. MEOdesigns and Matt Oettinger,
WIPO Case No. D2000-1368 (WIPO December 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
Respondent’s use of <irvine-florist.com> domain name, which is identical to Complainant’s IRVINE FLORIST mark, is likely to cause confusion to customers searching for Complainant’s goods and services. The Panel assumes Respondent is commercially benefiting from this confusion and concludes that Respondent’s registration and use of the <irvine-florist.com> domain name for this purpose constitutes bad faith under Policy paragraph 4(b)(iv). See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the respondent’s sole purpose in selecting the domain names was to cause confusion with the complainant’s website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use).
The Panel finds that Policy paragraph 4(a)(iii) has been satisfied.
7. Decision
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 <irvine-florist.com> be transferred to the Complainant.
Sandra J. Franklin Sole Panelist
Dated: June 23, 2008
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