The Complainant is FloraPrima GmbH, of Wendeburg, Germany, represented by jurawerk Rechtsanwälte Twelmeier & Eisele PartG of Germany.
The Respondent is Rosaprima Cia. Ltda. / Flora Prima, of Pichincha, Ecuador and Texas, United States of America, represented by Gallegos, Valarezo & Neira Cia. Ltda. of Ecuador.
The disputed domain name <floraprima.com> is registered with Network Solutions LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2009. On January 30, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On January 30, 2009, Network Solutions, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 9, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed the amendments to the Complaint on February 13, 2009. The Center verified that the Complaint together with the amendments to the 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 the Respondent of the Complaint, and the proceedings commenced on February 17, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 9, 2009. The Response was filed with the Center on March 4, 2009, with further documentation provided on March 9, 2009.
The Center appointed James A. Barker as the sole panelist in this matter on March 17, 2009. 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 sells flowers via the Internet worldwide. The Respondent also sells flowers: its purpose being to act as a wholesaler of fresh cut flowers for the United States market.
The Complainant is the owner of marks registered in Germany for FLORAPRIMA, as well as having the same company name which it claims to have used since 2001. The earliest of the Complainant's trademarks, evidenced in the Complaint, was registered in June 2007.
The Respondent provides evidence that “Floraprima, LLC” is a limited liability company organized under the laws of the state of Texas, in the United States. The Respondent provides certificate evidence, dated in July 2000, that it (RosaPrima Cia. Ltda.) holds 90% of the total units of Floraprima, LLC. The Respondent also provides a form filed with the IRS in 1999, listing “RosaPrima CIA LTDA” as the “Foreign partner's name” in the partnership of FloraPrima, LLC.
The Complainant provides evidence of the website to which the disputed domain name reverted on May 23, 2008. On that date, the disputed domain name reverted to a “portal” or “landing” website. The website included a photograph of a woman in a suit, along with links in German variously entitled e.g. “Bitte”, “Rund Um”, “Rosen” and “Pflanzen”. Those links each reverted to pages containing a miscellany of other links. For example, the “Rosen” link reverted to a list of further links with titles such as “Rosen Shingle Creek Hotel Orlando”, “Flower Network Belgium”, and “Shingles”.
The disputed domain name has a “creation date” (as indicated in the WhoIs details) of November 13, 2001.
The Complainant operates a website at “www.floraprima.de”.
The Respondent operates a website at “www.rosaprima.com”, in addition to that at the disputed domain name.
The disputed domain name is identical to the Complainant's registered word mark FLORAPRIMA and confusingly similar to its word/figurative mark. The fact that the Complainant's trademarks were registered after the disputed domain name is judicially irrelevant.
The Respondent is not entitled to the disputed domain name, and has no rights or legitimate interests in it. The Respondent owns no mark for FLORAPRIMA or any other rights.
The Respondent acted in bad faith. The Respondent has not placed its own content on its website, but rather catchwords in German. The Respondent does not operate in the German market. Furthermore, the Respondent placed advertising on the website under the disputed domain name for direct competitors of the Complainant. The Respondent also disguised its identity in the WhoIs details, which is indicative of bad faith.
Registration of the disputed domain name in bad faith should be inferred. To the best knowledge of the Complainant, the disputed domain name was registered by the Respondent in late summer 2007, because at that point in time the associated website did not contain the content it now does. [The Panel notes that no direct evidence of that different content was provided by the Complainant.] The Respondent is using the disputed domain name to revert to a “parking” webpage, which is evidence of bad faith.
The Respondent acknowledges the Complainant's German registered trademarks, but states that such registrations have no effect in other countries.
The Respondent has a right or legitimate interest in the disputed domain name to identify and promote its commercial activities. The territorial limitations of the Complainant's marks are sufficient to prove the Respondent's legitimate interests in the United States.
The disputed domain name is identical to the Respondent's trade name, to which the Respondent has had a legitimate right in the United States of America since 2000. The disputed domain name was originally registered in the name of the company owned by the Respondent, FloraPrima LLC [the Respondent attached copies of the registrar's billing history in support]. The Respondent is now the registrant, and remains the “sister” company of the previous registrant.
The Respondent uses the domain name <rosaprima.com> to sell roses, and the disputed domain name to promote and sell other flowers different from roses produced by the Respondent. The Respondent provides evidence of an “agreement for sale” between it and its sister company, FloraPrima, LLC, relating to the sale of shares in the latter. That agreement also provided that FloraPrima, LLC would transfer the disputed domain name to the Respondent before January 5, 2008.
The disputed domain name has not been registered or used in bad faith. The disputed domain name was registered by the Respondent 7 years before the registration of the Complainant's trademarks. The Respondent had no prior knowledge of the Complainant, which, according to the Respondent, is unknown in the United States and Ecuador. The Respondent otherwise flatly denies the allegations made against it in relation to bad faith.
To succeed under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These issues are discussed in turn as follows.
The disputed domain name is plainly identical to the Complainant's German-registered mark for FLORAPRIMA, which was evidenced in the Complaint.
The Respondent's arguments ― that the Complainant's rights only apply in Germany ― are misplaced. For the purpose of paragraph 4(a)(i) of the Policy, it is enough that the Complainant demonstrates rights in a trademark granted in any jurisdiction. The Complainant is not required to demonstrate that it has rights in the same jurisdiction as the Respondent. As previous panels have noted in relation to paragraph 4(a)(i): “This requirement can be satisfied by proof that the Complainant is the owner or licensee of a registered mark anywhere in the world – not just in the country of the Respondent's residence.” See Advanced Magazine Publishers Inc. v. Computer Dazhong, WIPO Case No. D2003-0668. To find otherwise would artificially limit the scope of the Policy to particular state boundaries.
For these reasons, the Panel finds that the disputed domain name is relevantly identical to the Complainant's registered mark.
Essentially, the Respondent bases its claim to legitimate interests in the disputed domain name on the flower business in which it had a controlling interest, FloraPrima, LLC, and its acquisition (seemingly before January 2008), of the disputed domain name from that company. (While FloraPrima is also named as a Respondent in this case, the evidence provided by the Respondent indicates that RosaPrima is now the holder-in-fact of the domain name registration.)
In support, the Respondent provided evidence such as copies of its certificate of its shareholding in FloraPrima, LLC, company documents of FloraPrima, LLC, an agreement for sale (signed by representatives of FloraPrima, LLC, but not by the Respondent), and a promissory note made out in favor of the Respondent by FloraPrima, LLC, witnessed by a Notary Public. These documents – the Respondent's own, and those certified by independent sources – sufficiently support the Respondent's contention of operating a legitimate business associated with the disputed domain name.
On top of this, the Complainant's trademarks are relatively new. The first was registered in 2007; well after the creation of the disputed domain name in 2001. While it claims to have first used its marks in 2001, the Complainant did not support this claim with evidence. There is also no strong evidence that the Complainant has a trading reputation in the United States or Ecuador, where the Respondent does business. As such, there is no substantial evidence to support a finding that the Respondent knew of the Complainant, either when the Respondent acquired the disputed domain name by purchasing it from FloraPrima, LLC (sometime between November 2007 and January 2009), or in 2001 when the domain name was created. Indeed, when the disputed domain name was created by FloraPrima, LLC (incorporated in 2000), the Complainant had no mark.
It is true that some aspects of the Respondent's case are unexplained. For example, the Respondent does not explain why the disputed domain name reverts to no more than a “portal” website, with links in German, including links to products associated with the Complainant. It may be that these were automatically generated links while the domain name was “parked”. Regardless, the burden is ultimately on the Complainant to establish its case, rather than the Respondent to prove its innocence. The evidence outlined above outweighs any inference that might be reasonably drawn from the Respondent's failure to address each particular allegation against it.
Having regard to all the evidence, the Panel finds that the Respondent has a legitimate interest in the disputed domain name. It follows that the Complainant has not established its case against the Respondent under paragraph 4(a)(ii) of the Policy.
Because of the Panel's findings above, it is not necessary for it to make a finding on this element.
However, for completeness, the Panel notes that it does not accept a number of the Complainant's contentions in relation to this ground. These include contentions that the Respondent provided incorrect contact details. There is no such evidence as the Respondent Rosaprima Cia. Ltda. was named in the Complaint as filed (though FloraPrima LLC was not originally named).
The Complainant also claims that the reversion of the disputed domain name to a “parking” website is itself evidence of bad faith, and refers to Ceyx Technologies v. Ceyx.Com, WIPO Case No. D2001-0681. However, that case did not stand for such a proposition. Rather, the Panel in that case reiterated the well-established view that that “‘passive holding' does not constitute bad faith per se”. The Panel found bad faith in that case because (among other things) a parking website was operated “with the knowledge that it infringes the trademark of another.” As set out above, there is no evidence of such knowledge in this case.
For all the foregoing reasons, the Complaint is denied.
James A. Barker
Dated: March 31, 2009