WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fresh Intellectual Properties, Inc. v. Vitty, Inc.,
Case No. DBIZ2002-00055
1. The Parties
Complainant is Fresh Intellectual Properties, Inc., 1600 Stewart Avenue, Westbury, New York, 11590, United States o f America.
Respondent is Vitty, Inc., 12F-8, No. 237, 2nd Section, Fushing South Road, Taipei, 08807, Taiwan, Province of China.
2. The Domain Name and Registrar
The domain name at issue (the Domain Name) is <1-800-flowers.biz>.
The registrar of the Domain Name is 007 Names, Inc., 672 Route 202-206 N., Bridgewater, NJ 08807, United States of America.
3. Procedural History
On April 25, 2002, the Complainant filed a complaint [hereinafter the Complaint] with the WIPO Arbitration and Mediation Center [hereinafter the Center], receipt of said Complaint being acknowledged by the Center in an e-mail to the Complainant dated April 30, 2002.
On May 23, 2002, the Center received E-mail from Complainant asking for a notification that the Complaint had been served on the Respondent.
In E-mail dated May 28, 2002, the Center informed the registrar, 007 Names, Inc., that a complaint had been submitted to the Center regarding the Domain Name and requested some verifications.
On May 30, 2002, the Center replied to the Complainant's May 23, 2002, e-mail, explaining it was still waiting for a reply from the Registrar regarding the specific language of the registration agreement. On the same date Complainant answered the Center by e-mail requesting that the Center request a prompt response from the Registrar so that the matter may proceed. There being no reply from the Registrar, the Center conducted a search using the .BIZ Registry WHOIS Data. which confirmed that the Domain Name had been registered via the Registrarís registration services and that the Respondent was the current registrant of the Domain Name.
The Center then proceeded to verify that the Complaint satisfied the formal requirements of the Rules for Uniform Dispute Resolution Policy [hereinafter referred to as the STOP Rules] and the World Intellectual Property Organization Supplemental Rules for Start-up Trademark Opposition Policy [hereinafter referred to as the WIPO Supplemental STOP Rules], including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative. The Panel has reviewed the documentary evidence provided by the parties and with the Centerís assessment that the Complaint complies with the formal requirements of the STOP Rules and the Supplemental STOP Rules.
In a letter dated June 5, 2002, the Center informed the Respondent of the commencement of the proceedings as of June 5, 2002, and of subsection 5 of the STOP Rules, which grants the respondent 20 days to respond to the Complaint. Evidence provided by the Center supports the finding that the Center acted diligently in its attempts to inform the Respondent of the proceedings.
On June 26, 2002, the Center issued a Notification of Respondent Default. The Center then informed the Parties on July 9, 2002, that an administrative panel would be appointed. The Panel believes it was constituted in compliance with the STOP Rules and the Supplemental STOP Rules and has also issued a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions have been received by the Panel from either of the Parties since its formation.
The Panel is obliged to issue a decision on or prior to July 23, 2002, in the English language, and is unaware of any other proceedings which may have been undertaken by the parties or others in the present matter.
4. Factual Background
The Complainant is a corporation. The Complainant provides a floral product and gift delivery service to customers by means of a telemarketing system, through the Internet and through its own retail outlets. It is the owner of various trademarks, all which incorporate the terms "800-FLOWERS".
The Respondent is a corporation. The Respondent provides broadband and wireless equipment and services and its parent company, Web Express, is an internet service provider in New Jersey.
According to the Whois database the Respondent registered the Domain Name on March 27, 2002. Shortly thereafter the Complainant became aware that the Respondent had registered the Domain Name. By letter dated April 12, 2002, fearing confusion of the domain name and its trademarks, the Complainant requested from the Respondent a transfer of the domain name to it and notified the Respondent that in the event it did not answer the letter or satisfy the Complainant's request, it would undertake the necessary action and seek appropriate compensation. Respondent failed to answer the letter.
5. Partiesí Contentions
The Complainant relies on the trademarks and service marks it owns, such as "1-800-FLOWERS.COM", "1-800-FLOWERS", "800-FLOWERS", "CALL 1-800-FLOWERS", "800-FLOWERS", "1-800-FLOWERS & Design" (registrations shown at Exhibit C).
The Complainant contends its affiliate 1-800-Flowers.com, Inc. and its predecessors have, since at least 1984, provided a floral product and gift delivery service to customers by means of a telemarketing system and through its own retail outlets operated under the 1-800-FLOWERS and 1-800-FLOWERS.COM names and marks.
The Complainant alleges that as the owner of the 800 FLOWERS Marks, it licenses them to its affiliate 1-800-Flowers.com, Inc.
The Complainant contends its customers have placed orders for delivery of flowers, fruit, candy, balloons, stuffed animals, floral arrangements, and gifts throughout the United States by dialing toll-free telephone numbers, including "1-800-FLOWERS."
The Complainant contends since 1992, it has made its goods and services available online through the Internet site located at Uniform Reference Locator ("URL") <1800flowers.com>, as indicated on its home page from its <1800flowers.com> site attached at Exhibit D. It also provides on its site information on a variety of topics, including flower arrangement, gift giving advice, and plant maintenance.
The Complainant submits that its web site has received critical acclaim for its quality, including designations by Net Guide, Point, and PC Computing as one the best sites on the World Wide Web and most recently named as one of "the best places to shop online" by The Wall Street Journal.
The Complainant states it receives an average of over 58,000,000 page views per month from internet users all over the world, including from Taiwan, where Respondent is located, having had over 89,000 page views from Taiwanese visitors in fiscal year 2001 alone.
The Complainant alleges it has invested substantial corporate efforts and vast sums of money on national and local advertising promoting the reliability of goods and services provided under, and identified by, Complainant's 800-FLOWERS Marks, having spent in the past three years alone over $100,000,000 in marketing conducted in connection with the Marks, through television, radio, print, and on-line.
The Complainant adds that over 39,500 on-line affiliates tout the Complainantís 800 FLOWERS mark and website by prominently displaying 1800FLOWERS.COM banners on their sites and enabling their users to visit its site by clicking on the banner link, and that its site is prominently featured on the major portal sites, such as Yahoo, AOL, and MSN, resulting in over 16,000,000,000 internet impressions for the 1-800-FLOWERS.COM mark in fiscal year 2001 alone.
The Complainant contends it has complemented the advertising of the 800-FLOWERS Marks with careful brand management to increase consumer perception of each as a distinctive indicator of the origin and high quality of Complainant's goods and services.
The Complainant claims the 800-FLOWERS Marks have acquired a high degree of public recognition and distinctiveness throughout the United States and around the world as symbols of the source of the high quality goods and services offered by Complainant.
The Complainant contends the domain name is identical to the 800 FLOWERS marks.
The Complainant contends the Respondent had no rights or legitimate interests with respect to the domain name since any use Respondent may claim to have made was not "bona fide" because it was made with knowledge of Complainantís prior rights in the 800 FLOWERS mark. Moreover, it alleges that it has found no evidence that Respondent has ever used the trademark or trade name "1-800-flowers.biz" or been commonly known as either "1-800-flowers.biz" or "1-800-flowers."
The Complainant contends the Respondent registered the domain name in bad faith since prior to the Respondent's registration of the domain name it was aware of Complainant's existence and reputation, given the Complainant's advertisement. Also, Complainant states that the administrative, technical and billing contact of the Respondent with its parent company has been a resident in the United States for a number of years, having attended a University in the USA, having worked for a company in the USA and having founded a company in the USA.
The Complainant contends the Respondent has no business interest associated with flowers and has not used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to being notified of the Complainant's rights.
The Complainant claims it notified the Respondent by letter of the Complainant's rights and requested a transfer of the domain name to it. The letter remained unanswered.
The Complainant contends the Respondent registered the domain name to sell it for valuable consideration in excess of Respondentís out of pocket costs directly related to the domain name and with the intent of developing a site designed intentionally to attempt to attract for commercial gain internet users to its site by creating a likelihood of confusion with the Complainantís famous 800 FLOWERS Marks.
The Respondent has failed to submit a Response to the Complainant's Complaint.
6. Discussion and Findings
Pursuant to the STOP Policy the Complainant must convince the Panel of three elements if it wishes to have the Domain Name transferred. It is incumbent on the Complainant to show:
i) that the Domain Name is identical to a trademark in which it holds rights;
ii) that the Respondent has no legitimate rights or interests in the Domain Name; and
iii) that the Domain Name was registered or used in bad faith.
Although the Respondent did not contest these elements, they will be considered below.
Identical to Trademark
The Panel finds the disputed domain name <1-800-flowers.biz> is identical to Complainant's 1-800-FLOWERS mark. In STOP proceedings, the generic top-level domain ".biz" is irrelevant when determining whether a domain name and mark are identical. See Princeton Linear Assoc., Inc. v. Copland o/b/o LAN Solutions Inc., FA 102811 Nat. Arb. Forum, (February 8, 2001) (finding that the ".biz" in a disputed domain name is not a factor, and hence to be ignored, when determining whether the domain name is identical to a mark in which the Complainant has asserted rights).
Complainant's Rights in Trademark
The Panel finds the Complainant has shown sufficient evidence pointing towards the rights it holds in the 800 FLOWERS marks. As appears from Exhibit C, the Complainant has proceeded with the registration of various marks that incorporate the
terms 800 FLOWERS. The Complainant has also submitted evidence of use of one of its marks, "1-800-FLOWERS.COM", at Exhibit D. The Panel, proprio motu, has taken upon itself to visit the website located at "www.1800flowers.com" and has noted the use of various trademarks of the Complainant. Complainant's rights have been clearly established especially since the Respondent did not contest these rights.
Respondent's Rights or Legitimate Interest
The Panel finds the Respondent has neither rights or legitimate interests to the domain name since there is no evidence pointing in the other direction. The Respondent, by ignoring the Complaint, has failed to show its rights or legitimate interests. Nothing indicates that it has ever used the trademark or trade name "1-800-flowers.biz" or been commonly known as either "1-800-flowers.biz" or "1-800-flowers."
Moreover, a review of Exhibit G indicates that the Respondent's business is directed towards broadband and wireless equipment and services, not the flower business.
In the absence of any effort to rebut the Complainant's contentions, the Panel cannot possibly find in favour of the Respondent on this matter.
Respondent's Bad Faith
The Panel finds the Respondent registered the domain name in bad faith. As mentioned in the above title, the Respondent's business is directed toward wireless equipment and services, not the flower business. The Respondent had prior knowledge of the Complainant, at the latest when the Respondent registered the Domain Name due to the notice from the Registry. The Respondent has made no effort to explain or justify the reasons behind its registration of the domain name. The Complainant's contentions and evidence having not been challenged by the Respondent, the Panel concludes there has been bad faith on the Respondent's part when it registered the domain name.
For the foregoing reasons, the Panel decides:
- that the Domain Name registered by the Respondent is identical to the trademark to which the Complainant has rights;
- that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
- the Domain Name has been registered or is being used by the Respondent in bad faith.
Accordingly, the Panel finds that the Complaint should be allowed and the Domain Name <1-800-flowers.biz> be transferred to the Complainant and so directs 007 Names, Inc., to do so forthwith. Subsequent challenges under this Policy against the domain name shall not be permitted.
Hugues G. Richard
Dated: July 23, 2002