Complainant is Amy's Orchids of Phenix, Virginia, United States of America, represented by Leclairryan, United States of America.
Respondent is EIC of New York, New York, United States of America.
The disputed domain names are <amyorchid.com>, <amyorchids.com>, <amysorchid.com> and <amysorchids.com>. The domain names are registered with Moniker Online Services, LLC d/b/a moniker.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2009. On April 9, 2009, the Center transmitted by email to the Registrar, Moniker Online Services, LLC d/b/a moniker.com, a request for registrar verification in connection with the disputed domain name. On April 11, 2009, the Registrar transmitted by email to the Center its verification response. The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on April 23, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 13, 2009. Before the Complainant had submitted all formally required documentation, Respondent submitted a response via email on April 21, 2009. On May 15, 2009, the Center acknowledged the receipt of the Respondent's email and notified Respondent that the due date had passed. The Center requested that Respondent verify that the email response was a complete response. The Respondent replied via email on May 15, 2009 with additional information to supplement the original response.
The Center appointed Michael A. Albert as the sole panelist in this matter on May 25, 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.
Complainant is the owner of the registered trademark AMY'S ORCHIDS, U.S. Reg. No. 3,540,357 issued December 2, 2008, which covers use of the mark in connection with flowers and plants.
The disputed domain names were registered by the Complainant as early as 2002. In September 2008, Complainant engaged Respondent to update Complainant's website with effects similar to other websites that Respondent had worked on. Subsequently, Complainant authorized Respondent to become the Registrant of the disputed domain names. Complainant later terminated the business relationship.
The <amysorchids.com> domain name resolves to a page for Complainant's business. The remaining three domain names do not resolve to any content.
Complainant contends that the disputed domain names are identical or confusingly similar to its AMY'S ORCHIDS mark.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain names. Complainant submits that Respondent was approved to become the Registrant, but then Respondent changed the name of the Registrant again without Complainant's approval. Complainant submits that the initial approval was for the purposes of designing Complainant's website and that after the agreement to update the website was terminated Respondent refused to transfer the domain names back to Complainant. Complainant submits that Respondent has never used the AMY'S ORCHIDS mark in commerce, nor does it ever intend to do so.
Complainant asserts that Respondent registered and uses the disputed domain names in bad faith. Complainant submits that Respondent is a web designer with no intention of using the domain names outside of obtaining them for Complainant.
Respondent did not submit a formal response. In two email messaged submitted, Respondent contended that the domain names were migrated in good faith. Respondent also submitted that Complainant was a client that had an outstanding balance with Respondent of $539.40 for hosting services and domain registration. Respondent also submitted email messages that Respondent contends evidence authorization from Complainant to migrate the disputed domain names. A copy of a $2000.00 credit card authorization form from Complainant was also provided by the Respondent.
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.”
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:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel concludes, first, that Complainant has sufficiently shown that it has rights in its AMY'S ORCHIDS mark. Complainant owns a United States federal registration for this mark, which creates a presumption of ownership and validity.
The domain name <amysorchids.com> is identical to Complainant's trademark. The remaining disputed domain names are variations of Complainant's mark that are confusingly similar. The domain names <amyorchids.com> and <amysorchid.com> differ by only a single letter. Numerous panels have found that the omission of a single letter is commonly insufficient to eliminate confusing similarity particularly (as here) absent any substantive and material change in meaning. See Playboy Enterprises International Inc. v. SAND WebNames - For Sale, WIPO Case No. D2001-0094. For analogous reasons, <amyorchid.com> is confusingly similar to the Complainant's mark. This Panel concludes for the foregoing reasons that the disputed domain names are confusingly similar to Complainant's mark.
Complainant has failed to show that Respondent does not have a legitimate interest in the domain names. Respondent contends that it is not obligated to re-convey the domain names absent payment of the balance due on its account for web hosting services rendered in connection with the domain names. The Panel finds the dicta of Map Supply v. On-line Colour Graphics, FA0096332 persuasive: “The Respondent[‘s] argument does raise the interesting question whether an unpaid web designer once given control over a domain name by the client can retain it as a security for payment. In my view, this may be so. The law may recognize some sort of lien or charge against a domain name. To assert such a claim is to assert a legitimate interest. On that assumption, this could be a dispute to be decided by traditional means – as it would fall outside the scope of this tribunal.”
Complainant authorized a transfer of its domain name to Respondent for the purposes of updating its website. Respondent claims that it has withheld the domain names because Complainant has not paid the remaining balance for the services that Respondent provided. The record does not include any information about the contractual terms between the parties, such as the terms (if any) under which Respondent would be obligated to re-convey control of the domain names to Complainant.
Based on the evidence provided in this Panel's view, it cannot be said that Respondent does not have a legitimate interest in the disputed domain names. To conclusively decide whether Respondent has a legitimate interest, the question of whether a lien or charge against a domain name can be made in this circumstance must be answered. That determination is beyond the scope of this tribunal. See Clinomics Biosciences, Inc. v. Simplicity Software, Inc., WIPO Case No. D2001-0823 (August 28, 2001) (holding that the issue before the tribunal was outside the scope of the Policy because deciding the issue required, in part, “an evaluation of the commercial law of liens”).
For reasons similar to those discussed above, Complainant has not, in the present proceedings, established that Respondent's registration of the disputed domain names is in bad faith.
The examples of bad faith provided in paragraph 4(b) of the Policy do not appear to bear on the facts of this case. The parties apparently entered into a contractual relationship that has gone sour. There is nothing before the Panel to convince it that Respondent entered into the initial contract in bad faith, such that the registration of the domain name, by the Respondent could be found to have been in bad faith within the meaning of the Policy. Complainant acknowledges that it gave Respondent permission to become the registrant of the disputed domain names. Respondent claims to have provided services to Complainant based on Complainant's requests. Complainant has not provided information to dispute Respondent's assertion that the domain names are being withheld as, in effect, a lien due to a failure to pay for services rendered. For these reasons, the record does not support a finding that Respondent acted in bad faith in this case. This finding under the Policy in no way prevents the parties form pursuing the matter in the courts should they choose to do so.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Complaint is denied. The dispute raised by Complainant is outside the scope of the Policy.
Michael A. Albert
Dated: June 8, 2009