WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

FFBP, Inc. v. Texas International Property Associates - NA NA

Case No. D2007-1035

 

1. The Parties

Complainant is FFBP, Inc. (dba B. Brooks Fine Flowers and B. Brooks), of San Francisco, California, United States of America, represented by Carr & Ferrell, LLP, United States of America.

Respondent is Texas International Property Associates - NA NA, of Dallas, Texas, United States of America, represented by Gary Wayne Tucker, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <bbrooksfineflowers.com> is registered with Compana, LLC (dba BUDGETNAMES.com).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2007. On July 18, 2007, the Center transmitted by email to Compana LLC a request for registrar verification. On July 25, 2007, Compana, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. 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 Respondent of the Complaint, and the proceedings commenced on July 26, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2007. A Response was filed with the Center on August 15, 2007.

On August 16, 2007, the Center informed Complainant that the Response appeared to express an interest in settling the matter. On August 22, 2007, Complainant requested suspension of the proceedings to permit the Parties to resolve the matter. On August 23, 2007, the Center granted a suspension until September 19, 2007. On September 20, 2007, Complainant informed the Center that the Parties had not reached a settlement agreement, and that the proceedings should be reinstituted. On September 21, 2007, the Center notified the Parties that the proceedings would continue. The Center gave Respondent until September 25, 2007, to file any additional response. None was received.

The Center appointed Miriam Sapiro as the sole panelist in this matter on October 8, 2007. 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 paragraph 7 of the Rules.

 

4. Factual Background

Complainant owns trademarks related to its business of helping customers locate and order flowers online. These marks include, for example, B BROOKS FINE FLOWERS (No. 2,273,151) (filed on October 28, 1997 and registered on August 24, 1999) registered with the United States Patent and Trademark Office. The Complaint indicates that the CEO and Founder of FFBP, Inc., Barbera Brooks, evolved her business from a book she wrote in 1989 entitled “Fine Flowers by Phone.” Complainant registered <fineflowers.com> and <bbrooks.com> in 1996 and 1997, respectively. The company has been featured in various publications and, according to the Complaint, its website receives approximately 500,000 million hits each month.

Respondent is using the disputed domain name, registered on November 2, 2005, to resolve to a website that states “Welcome to bbrooksfineflowers.com” and features nearly a dozen flower-related links, including “Flower,” “Flower delivery,” “Send flower,” “Online Flower,” “Teleflora,” “Cheap flower,” and “Online florist.” These links resolve to other companies selling flowers, including FTD.com, 1800flowers.com and Teleflora.com. At the bottom of Respondent’s website is the statement “ 2007 bbrooksfineflowers.com. All Rights Reserved” (see http://www.bbrooksfineflowers.com). Respondent, however, has no affiliation with Complainant. In addition, Respondent has never been authorized to issue, sell, sponsor, promote or otherwise feature BBrooks or B Brooks Fine Flowers products or services of any kind.

 

5. Parties’ Contentions

A. Complainant

Complainant contends that the domain name <bbrooksfineflowers.com> registered and being used by Respondent is confusingly similar or identical to trademarks in which it has established rights through use and registration of B BROOKS FINE FLOWERS in the United States. Complainant argues that the suffix “.com” does not detract from the dominant portion of the second-level registration, and that consumers will be unable to distinguish between B BROOKS FINE FLOWERS and “bbrooksfineflowers.com.” Complainant contends that Respondent has no rights or legitimate interests in the domain name and, on the contrary, is using it in bad faith in order to attract consumers to its own website for commercial gain, as it has done with other registrations.

B. Respondent

The Respondent replied to the Complaint on August 15, 2007, indicating that it agrees to transfer the domain name at issue upon order of this Panel. The Respondent did not respond to the specific allegations in the Complaint, other than to simply contest them in a general sense. Respondent did not respond to the Center’s invitation to provide supplemental information after settlement discussions apparently failed to resolve the dispute and these proceedings were reinstituted.

 

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present in order to prevail:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the 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.

Because the Respondent has decided not to reply to the substance of the allegations in the Complaint, in accordance with paragraphs 5(e) and 14 of the Rules, the Panel will base its decision on the Complaint and draw such inferences from Respondent’s failure to reply as it considers appropriate. See, e.g., Plymouth State College v. Domains, Best Domains, WIPO Case No. D2002-0939.

A. Identical or Confusingly Similar

It is undisputed that Complainant is the holder of a United States trademark registration for B BROOKS FINE FLOWERS that was filed before Respondent registered the disputed domain name. This Panel agrees with the Complainant that the suffix “.com” does not resolve the confusion caused by the dominant portion of the second-level registration, which essentially is identical to Complainant’s registered trademark. Indeed, most – if not all – consumers will be unable to distinguish between B BROOKS FINE FLOWERS and “bbrooksfineflowers.com.” The domain name <bbrooksfineflowers.com> is therefore confusingly similar and essentially identical to Complainant’s mark within the meaning of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy describes three ways in which a Respondent may establish rights or legitimate interests in a disputed domain name, namely:

(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 or services; or

(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the domain name, even if [it has] acquired no trademark or service mark rights; or

(iii) [the 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.

Respondent has failed to provide any evidence that it meets any of these criteria, and no evidence in the record suggests that it might. This Panel therefore finds no evidence that would support a finding that Respondent has any rights to, or legitimate interests in, the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” shall constitute evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that [the Respondent] registered or 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 documented out-of-pocket costs directly related to the domain name; or

(ii) [the Respondent] 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 [the Respondent has] engaged in a pattern of such conduct; or

(iii) [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor ; or

(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 the web site or location or of a product or service on [the] web site or location.

Complainant argues that the fourth criterion is met, and this Panel agrees. While noting that satisfying just one circumstance is sufficient to justify transfer of a domain name, the Panel also finds evidence suggesting that other circumstances of paragraph 4(b) of the Policy are also satisfied.

With respect to paragraph 4(b)(i), the Panel is constrained to point out that while Respondent professed a willingness to transfer the domain name several months ago and these proceeding were suspended in order to permit settlement discussions, the domain name has not yet been transferred. These circumstances suggest that the Respondent was, or is still, seeking “valuable consideration in excess of documented out-of-pocket costs directly related to the domain name.”

With respect to paragraph 4(b)(ii), the Respondent and/or the predecessor registrant, had constructive knowledge of Complainant’s trademark prior to the registration of <bbrooksfineflowers.com> in 2005. It is therefore possible to infer, in the absence of a substantive response from Respondent, that the domain name was registered “in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name,” provided that there is a “pattern of such conduct.” In United Consumers Club, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0987, the Panel lists dozens of cases in which the same Respondent has been ordered to transfer its registrations.

With regards to paragraph 4(b)(iv), the Panel agrees with Complainant that Respondent has “intentionally attempted to attract, for commercial gain, Internet users to [its] web site” by “creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on [the] web site.” As noted above, Respondent is using a domain name that incorporates Complainant’s trademark to direct traffic to its own commercial website, which states “Welcome to bbrooksfineflowers.com” and offers links to numerous companies offering competing flower delivery services. In addition, the Respondent has deceptively and fraudulently put the statement “ 2007 bbrooksfineflowers.com. All Rights Reserved” at the bottom of each of its webpages, which further adds to the confusion between Respondent’s website and Complainant .

The Panel further notes that the registration’s nameservers belong to Hitfarm.com, which advertises itself as providing “domain portfolio holders with an easy way to earn revenue from their domain assets through our professional domain solutions.” see http://hitfarm.com/index.php?action=step2. The company’s website further states that by “parking your domains with us, you can expect a hassle-free and investment-free opportunity to effectively and efficiently monetize traffic to your domains.” Hitfarm.com has a webpage entitled “Maximum Payouts,” which touts its ability to provide customers with “optimized landing pages with relevant content [that] translates into the highest payouts in the industry. Our goal is to help our clients generate the most revenue from their domain portfolios . . . ” (see http://hitfarm.com/index.php?action=step9). The requirements of paragraph 4(b)(iv) of the Policy are indeed satisfied.

The Panel therefore finds evidence of the registration and use of the domain name in bad faith under paragraph 4(b) of the Policy.

Accordingly, the Complainant has demonstrated that each of the elements of paragraph 4(a) of the Policy is 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 <bbrooksfineflowers.com> be transferred to Complainant.


Miriam Sapiro
Sole Panelist

Date: October 22, 2007