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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Martha Stewart Living Omnimedia. Inc. v. Web Domain Names

Case No. D2006-0198

 

1. The Parties

The Complainant is Martha Stewart Living Omnimedia. Inc., New York, United States of America, represented by Hogan & Hartson, LLP, United States of America.

The Respondent is Web Domain Names, Registrant 7141, Shanghai, China.

 

2. The Domain Name and Registrar

The disputed domain name <marthaflowers.com> is registered with Moniker Online Services, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2006. On February 15, 2006, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On February 15, 2006, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

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 the Respondent of the Complaint, and the proceedings commenced on March 7, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 28, 2006.

The Center appointed Ian Blackshaw as the sole panelist in this matter on April 6, 2006. 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

The Complainant is a leading integrated content company offering products and services in a variety of fields ranging from furniture to flowers. The Complainant is a publicly traded U.S. company, with nearly 600 employees, and operations in the U.S. and Canada. In 2004, the Complainant had over $180 million in annual revenue and upwards of $240 million in annual revenue each year between 2001 and 2003.

The hallmark of the products and services of the Complainant is a focus on quality and attention to style and function. The Complainant promotes its products and services under the “MARTHA STEWART” and “MARTHA” brands, which refer to the name of Martha Stewart, the founder of the Complainant. Accordingly, the MARTHA and MARTHA STEWART brands have become synonymous to consumers and the general public with the highest standard of quality.

The Complainant is divided into four business segments: Internet/Direct Commerce; Television; Publishing; and Merchandising. The Internet/Direct Commerce division includes the direct-to-consumer flower business at <marthasflowers.com>; a custom greeting card service at <marthascards.com>; and the <marthastewart.com> web site, which offers content on topics, such as crafts, cooking and entertaining, gardening, holidays, decorating and home keeping. The Television division features the Emmy Award-winning television show ‘MARTHA STEWART LIVING’ and other programs featuring lifestyle content, including ‘MARTHA’, the nationally-syndicated lifestyle series hosted by Martha Stewart. The television programs are broadcast in the United States, Canada and Australia, amongst other countries. The Publishing division encompasses magazines, books and syndicated newspaper columns, including the flagship magazine, the award- winning ‘MARTHA STEWART LIVING’. Finally, the Merchandising division offers various products for the home at multiple price points. For example, mass market products are sold as part of the MARTHA STEWART EVERYDAY collection, while high-end specialty products are sold through the MARTHA STEWART SIGNATURE collection. Printouts of representative pages from the www.marthastewart.com website relating to the above-mentioned business segments are attached hereto have been provided to the Panel.

As mentioned, one of the components of the Internet/Direct Commerce business segment is Martha’s Flowers, a direct-to-consumer floral business. Launched in 2000, the website at <www.marthasflowers.com> allows consumers to order flowers for any occasion, or to sign up for a monthly flower delivery service. Printouts from the “www.marthasflowers.com” website have also been provided to the Panel.

The Complainant has exclusive rights in the marks MARTHA and MARTHA STEWART, as well as variations thereof, including MARTHA’S FLOWERS, MARTHA STEWART EVERYDAY, MARTHA STEWART LIVING, FROM MARTHA’S HOME and ASK MARTHA, amongst others (the MARTHA and MARTHA STEWART marks and variations thereof are collectively referred to herein as the “MARTHA and MARTHA STEWART Marks”).

The MARTHA and MARTHA STEWART Marks have been used continuously in commerce since at least as early as 1989. Indeed, the Complainant has established a family of marks that incorporate the terms MARTHA and MARTHA STEWART, or close variations thereof, which are used in connection with a wide variety of goods and services.

The MARTHA and MARTHA STEWART Marks have been and are used in numerous countries by and on behalf of the Complainant. Further, the Complainant owns trademark applications and registrations for the MARTHA and MARTHA STEWART Marks in several countries, including the United States, Australia, Brazil, Canada, China, the countries of the European Union, Hong Kong SAR of China, Japan, Mexico, New Zealand, Norway, Peru and Taiwan, Province of China. Information concerning such trademark applications and registrations have been provided to the Panel. Amongst these various registrations and applications is the U.S. Reg. No. 2,666,830 for the mark MARTHA’S FLOWERS in connection with “fresh flowers and plants,” with a date of first use of January 2000.

In addition to various U.S. and foreign trademark applications and registrations for the MARTHA and MARTHA STEWART Marks, the Complainant is the owner of various domain names incorporating the MARTHA and MARTHA STEWART Marks, through which it offers various goods and services under the MARTHA and MARTHA STEWART Marks. Such domain names include <marthastewart.com>, <marthasflowers.com> and <marthascards.com>.

The Complainant and its products and services offered under the MARTHA and MARTHA STEWART Marks have been the recipients of extensive media coverage throughout the world. Such coverage, combined with the extensive operations of the Complainant, has resulted in the MARTHA and MARTHA STEWART Marks becoming household names. Merely by way of example, the Complainant has been covered in articles and features from such publications as Japan Today, Salon.com, Forbes, the BBC News, The New York Times and Business Week, among others. Representative samples of such articles have also been provided to the Panel.

 

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

A1. The domain name is confusingly similar to a trademark or service mark in which the Complainant has rights;

(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))

The Complainant is the owner of the MARTHA and MARTHA STEWART Marks, including a U.S. trademark registration for the mark MARTHA’S FLOWERS. The Respondent’s domain name, <marthaflowers.com>, is based upon and wholly incorporates the Complainant’s MARTHA’S FLOWERS mark, merely deleting the “s” from the Complainant’s Trademark. The domain name is thus confusingly similar, if not identical, to the Complainant’s MARTHA’S FLOWERS trademark. As previous WIPO UDRP panels have recognized, “adding or deleting the plural ‘s’ from a corporate name is a common mistake consumers make when referring to companies and/or their marks.” See, e.g., Medtronic, Inc. v. gotdomains4sale.com, WIPO Case No. D2001-1033; Nokia Corp. v. Uday Lakhani, WIPO Case No. D2000-0833. Nor does the addition of the “.com” suffix serve to distinguish the Infringing Domain Name. See Pomellato S.p.A v. Tonetti, WIPO Case No. D2000-0493 (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); Blue Sky Software Corp. v. Digital Sierra Inc., WIPO Case No. D2000-0165 (holding that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the “addition of .com is not a distinguishing difference”); AT&T Corp. v. Xinzhiyuan Management Consulting Co., Ltd., DCC2004-0001 (“The addition of the top level domain extension ‘.cc’ does not render the signs non-identical.”).

The <marthaflowers.com> domain name is, thus, identical or confusingly similar to Complainant’s MARTHA’S FLOWERS mark.

In addition, the <marthaflowers.com> domain name is confusingly similar to other MARTHA and MARTHA STEWART Marks owned by the Complainant, including the marks MARTHA, ASK MARTHA, MARTHA STEWART, MARTHA STEWART LIVING and others, as it takes a dominant portion of such marks, namely the word “Martha,” and merely adds the generic word “flowers.” As previous WIPO UDRP panels have recognized, the addition of a common, generic word such as “flowers” does not lessen the extent to which the disputed domain name is confusingly similar to the Complainant’s trademarks. See, e.g., COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082 (finding that the addition of a generic term to a domain name containing the complainant’s trademark in its entirety does not diminish the likelihood of confusion with the complainant’s trademark); ACCOR v. For Sale, WIPO Case No. D2003-1011 (finding that the addition of the word “plaza” in the <sofitelplaza.com> and <sofitelplaza.net> domain names was not sufficient to overcome confusion with the SOFITEL marks); Wal-Mart Stores, Inc. v. Walsucks & Walmarket Puerto Rico, WIPO Case No. D2000-0477 (“the addition of a common or generic term following a trademark does not create a new or different mark in which Respondent has rights”); Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022 (finding that four domain names that added the descriptive words “fashion” or “cosmetics” after the trademark were confusingly similar to the trademark); L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the Complainant's registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy); Martha Stewart Living Omnimedia, Inc. v. Josh Gorton, WIPO Case No. D2005-1109 (finding that the domain names <marthastewartfoundation.com> and <marthastewartfoundation.org> were confusingly similar to the mark MARTHA STEWART).

Further, one WIPO UDRP panel has found the MARTHA STEWART mark to be famous and has held that the addition of a common generic term to the famous MARTHA STEWART mark “is not sufficient to give the domain name an individual meaning and prevent the overall impression that the domain name has some sort of connection with the Complainant.” See Martha Stewart Living Omnimedia, Inc. v. XC2, WIPO Case No. D2003-0944.

Additionally, as discussed above, in view of the focus of the Complainant on content related to gardening and flower arrangements on its web site, television programs and magazines, as well as its flower delivery business, the disputed domain name, which incorporates the MARTHA mark and the generic word “flowers”, is likely to cause confusion or to deceive others as to the affiliation or sponsorship of the Respondent’s domain name with the Complainant.

The <marthaflowers.com> domain name is, thus, confusingly similar and/or identical to the Complainant’s MARTHA and MARTHA STEWART Marks.

A2. The Respondent has no rights or legitimate interests in respect of the domain name;

(Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))

The MARTHA and MARTHA STEWART Marks have been continuously used in commerce since at least 1989. Significantly, at no time has the Complainant ever authorized or otherwise consented to the Respondent’s use of the disputed domain name or any variation thereof.

The Respondent is not engaged in any legitimate use of the disputed domain name. Specifically, Paragraph 4(c) of the Policy provides that evidence of one or more of the following shall demonstrate a respondent’s rights or legitimate interests to a domain name:

(i) before any notice to respondent of the dispute, respondent used, or made 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;

(ii) respondent (as an individual, business, or other organization) had been commonly known by the domain name; or

(iii) 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.

In relation to paragraph 4(c)(i) of the Policy, in the case at hand, the disputed domain name was not used in connection with a bona fide offering of goods or services by the Respondent.

The Respondent does not maintain a legitimate website at the disputed domain name. Instead, the Respondent appears to offer a website that, while billing itself as a web site “for all your entertainment needs,” is, in fact, a “parking” site run by Oversee.net that offers nothing more than a collection of links for various goods and services.

While the website contains links for the terms “Martha Stewart Flowers” and “Martha Stewart,” clicking on the term “Martha Stewart Flowers” takes you to a page, with search results, that contains links to competitors of the Complainant, such as FTD.com and HallmarkFlowers.com. In addition, the Respondent’s website contains various links to on-line commercial ventures unaffiliated with the Complainant, which can be accessed by clicking on the phrases listed on the front page of the website, including the terms “wedding flowers,” “wreaths,” “centerpieces,” “gifts” and other phrases typically associated with the goods and services offered by the Complainant. Perhaps most egregiously, clicking on the images on the right-hand side of the front page of the website, takes the user to a page filled with advertisements for pornography, gambling and “anonymous sex” services. Copies of printouts of representative pages from the Respondent’s website located at <www.marthaflowers.com> have been provided to the Panel.

As prior WIPO UDRP panels have found, the mere “parking” of a domain name does not constitute a bona fide offering of goods or services under Paragraph 4(c)(i) of the Policy. See, e.g., Prada S.A. v. Mr. Chuan Sheng Wang, WIPO Case No. D2003-0758; Hewlett-Packard Company v. Alvaro Collazo, FA0302000144628 (Nat. Arb. Forum March 5, 2003); Consorzio per la Tutela dell’Asti v. Mr. Giulio Bennatto, WIPO Case No. D2004-0350; Sanofi-Aventis v. Gabe Smith, WIPO Case No. D2005-0605.

Further, the fact that the disputed domain name includes links to competitors of the Complainant heightens the presumption that such use of the domain name is not a bona fide offering of goods or services. Instead, the Respondent’s actions in registering a domain name confusingly similar to the Complainant’s MARTHA’S FLOWERS mark and listing numerous competitors of the Complainant among the search results lead to the inference that the “Respondent was aware of Complainant’s well-known business and its mark and intended to exploit the mark.” Edmunds.com, Inc. v. Ult. Search, Inc., WIPO Case No. D2001-1319. It is well-established that “use which intentionally trades on the fame of another can not constitute a ‘bona fide’ offering of goods or services.” Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com,” WIPO Case No. D2000-0847; see also Delta Corporate Identity, Inc. v. Ameriasa, FA0206000114657 (Nat. Arb. Forum July 30, 2002) (“Any use by Respondent of the <delta-airline-resevation.com> domain name, confusingly similar to Complainant’s famous mark, would be an opportunistic attempt to attract customers via Complainant’s famous mark and therefore not considered to be a bona fide offering of goods or services pursuant to Policy Paragraph 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy Paragraph 4(c)(iii).”).

In view of the foregoing, the Respondent is not using the <marthaflowers.com> domain name in connection with a bona fide offering of goods or services.

Further, to the knowledge of the Complainant, the Respondent has not commonly been known by the disputed domain name or any variation thereof prior to the Respondent’s registration of the domain name, as contemplated under Paragraph 4(c)(ii) of the Policy.

Finally, as outlined above, the Respondent is not making any “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish” the MARTHA and MARTHA STEWART Marks under Paragraph 4(c)(iii) of the Policy. The Respondent’s use of the domain name to generate advertising revenue by linking consumers to the Complainant’s competitors demonstrates that the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name.

In the light of the long-term use and the fame of the MARTHA and MARTHA STEWART Marks and the Respondent’s registration of the disputed domain name without any legitimate basis for registration and use thereof, it is clear that the Respondent lacks any legitimate rights or interests in the domain name under Paragraph 4(c) of the Policy.

A3. The domain name was registered and is being used in bad faith;

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

The disputed domain name was registered and created on April 26, 2002. As discussed herein, the Complainant’s MARTHA and MARTHA STEWART Marks have continuously been used in commerce since at least 1989, that is, over a decade prior to the Respondent’s registration of the domain name. Further, the Complainant and its MARTHA and MARTHA STEWART Marks have received extensive unsolicited media attention, having been prominently featured in numerous publications with local, national and international audiences, including, for example, The New York Times and Japan Today. Indeed, as of the time the Respondent registered the disputed domain name, the Complainant’s MARTHA and MARTHA STEWART Marks were already famous and well-known worldwide. In addition, the Complainant launched its direct-to-consumer flower business at the website <www.marthasflowers.com> in January 2000, that is, more than two years prior to the Respondent’s registration of the disputed domain name.

Evidence of the Respondent’s bad faith use and registration of the disputed domain name includes the fact that the Respondent registered the domain name with actual and constructive knowledge of the proprietary and famous nature of the Complainant’s MARTHA and MARTHA STEWART Marks, without any legitimate rights or interests in the domain name. This alone is sufficient to evidence bad faith on the part of the Respondent. See Kohler Co. v. Chris Friedland d/b/a/ Faucet Direct Inc., FA 0207000115043 (Nat. Arb. Forum Aug. 8, 2002). See also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum April 17, 2000) (respondent acted in bad faith if it had either actual or constructive knowledge of a commonly known mark at the time of registration); Exxon Mobil Corp. v. Fisher, WIPO Case No. D2000-1412 (respondent had actual and constructive knowledge of EXXON mark given its world-wide prominence and thus respondent registered the domain name in bad faith); Ticketmaster Corp. v. Spider Web Design, Inc., WIPO Case No. D2000-1551; Biogen, Inc. v. Kel Ellis, KELCO, WIPO Case No. D2002-0679 (federal registration of the mark AVONEX constitutes constructive notice of the mark). Here, the Respondent cannot credibly claim to have been unaware of the Complainant and the MARTHA and MARTHA STEWART Marks, which have been used in connection with extensive commercial activities in the United States and throughout the world, including Asia, for many years. Based on the foregoing, it appears that the Respondent registered and is using the disputed domain name with knowledge of the Complainant’s MARTHA and MARTHA STEWART Marks, which supports a finding that the domain name was registered and is used in bad faith.

This conclusion is supported by the fact that the website located at the <marthaflowers.com> domain name is parked with a service that provides consumers with links to the Complainant’s competitors, as discussed above. See Edmunds.com, Inc. v. Ult. Search, Inc., WIPO Case No. D2001-1319; V&S Vin & Sprit v. Young Nah, WIPO Case No. D2004-0961 (“The domain name is hosted by a company called TrafficZ.com, which is dedicated to generating revenue from parked domains while providing accurate metrics of each domain. It certainly must be the purpose of the Respondent to intentionally trade off of the Complainant’s considerable good will and value in the mark ABSOLUT and to divert traffic intended for the Complainant.”); National City Corporation v. MH Networks LLC, WIPO Case No. D2004-0128 (a domain name which resolved to a web site that included links to mortgage-related services which in turn led to a search results page listing “sponsored links,” many of which featured complainant’s competitors, was found to constitute bad faith under the Policy); Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556 (“In this regard, it has been deemed by numerous WIPO panels that attracting Internet traffic and diverting it to web site(s) selling products of complainant’s competitors by using a domain name identical or confusingly similar is evidence of bad faith under Paragraph 4(b)(iv) of the Policy.”); Nikon, Inc and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774 (use of the <nikoncamera.com> domain name for a site that sold Nikon products and those of its competitors constituted an improper use of complainant’s mark to attract Internet users to respondent’s site for commercial gain by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement of the site); cf. Shields v. Zuccarini, 89 F. Supp. 2d 634, 640 (E.D. Pa. 2000) (defendant violated plaintiff’s rights by registering five variations of plaintiff’s trademarks and using them to subject site visitors to advertisements).

Although the Respondent registered the disputed domain name almost four years ago, the Respondent has merely parked the domain name with Oversee.net, in an effort to generate revenue from consumers who mistakenly visit the site, and in such time has not made any legitimate commercial use of the domain name. The Respondent’s failure to use, or to even make preparations to use, the domain name in connection with the offering of a legitimate website after nearly four years constitutes strong evidence of bad faith registration and use. See Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 (“While a registrant should be given sufficient time to make preparations to use the registered name, the failure to make such preparations in almost three years since the registration of the domain name at issue, has been held to constitute bad faith registration and use.”); Chernow Communications v. Jonathan D. Kimball, WIPO Case No. D2000-0119 (“It has been held that failure to make a bona fide use of a domain name during a two-year period following registration constitutes bad faith. The majority believes this reasoning is sound. A registrant should be given sufficient time to make preparations to use the registered domain name, but the ‘parking’ of a domain name is evidence of bad faith registration and use.”).

Based on the foregoing, the Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

The Respondent, having been duly notified of the Complaint and these proceedings, did not reply to the Complainant’s contentions or take any part in them.

 

6. Discussion and Findings

To qualify for transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed domain name 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 disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the complaint; and (b) if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous UDRP cases in which the respondent failed to file a response, the panel’s decisions were based upon the complainant’s assertions and evidence, as well as inferences drawn from the respondent’s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Kцstritzer Schwarzbierbrauerei v. Macros-Telekom Corp, WIPO Case No. D2001-0936.

Nevertheless, the panel must not decide in the complainant’s favor solely based on the respondent’s default (Cortefiel S.A. v. Miguel Garcнa Quintas, WIPO Case No. D2000-0140). The panel must decide whether the complainant has introduced elements of proof, which allow the panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

In accordance with prior UDRP decisions, where a domain name incorporates a complainant’s registered mark, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See, for example, Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The disputed domain name incorporates the trademarks MARTHA and MARTHA’S FLOWERS, which are owned and have been commercially used and promoted by the Complainant in and for the purposes of its business and the sale of its goods and services as trademarks for many years. Furthermore, the Panel accepts and recognizes that the Complainant’s trademark MARTHA is well-established and well-known to and has a good reputation amongst consumers not only in the United States but also in the rest of the world. Indeed, the Panel further accepts the Complainant’s assertion that its MARTHA and MARTHA STEWART marks have become household names , as a result of extensive promotion and unsolicited media attention and coverage of the founder of the Complainant.

The Panel also agrees with the Complainant that the omission of the possessive, namely, “ ’s”, part of the mark MARTHA’S FLOWERS in the disputed domain name is irrelevant in the present context, adding no element of distinctiveness or obviating any actual or potential confusion whatever. In fact, the distinctive part of the disputed domain name is the core word “MARTHA”, that is, ‘mother brand’, which, as previously stated, is well-known, referring to a famous television - and, indeed, controversial - personality, who has become a brand in herself - promoted and described in the United States and elsewhere around the world as ‘America’s domestic diva’ - particularly in relation to the products and services offered for sale and associated with her and her television shows, including the sale of “fresh flowers and plants” and also “retail store services; mail order services; and online catalog and retail services, all featuring flowers”. This heightens the risk of confusion to consumers wishing to buy the Complainant’s goods and services marketed under the MARTHA and MARTHA’S FLOWERS registered marks.

In view of all this, the Panel finds that the disputed domain name registered by the Respondent, if not identical, is certainly confusingly similar to the trademarks MARTHA and MARTHA’S FLOWERS, in which the Complainant has clearly demonstrated, to the satisfaction of the Panel, that it has well-established, well-known and commercially valuable rights through registration and also extensive exclusive commercial use and promotion around the world.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- Whether before any notice to the Respondent of the dispute, there is any evidence of the 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;

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

- whether the Respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain names. In fact, the Respondent’s failure to answer the Complaint tends to show that the Respondent does not have any such rights or interests, otherwise the Respondent would have asserted them. In other words, the Respondent’s silence is tantamount to admitting the Complainant’s case (see Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624). Indeed, in view of the notoriety and fame of the Complainant’s trademarks MARTHA and MARTHA’S FLOWERS and the products and services which they identify, the Respondent most likely knew that, when registering the disputed domain name, the Respondent could not have, or indeed, have claimed any such rights or interests. Conversely, in the view of the Panel, the registering of the disputed domain name, against such a background, can hardly be described as an innocent mistake on the part of the Respondent, but, lacking any evidence to the contrary, must have been deliberate.

In particular, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. On the contrary, the Respondent has used the disputed domain names for a website that directs Internet users not to the Complainant and its products and services but those of its competitors. Also, the fact that the disputed domain name has been in existence for almost four years would contradict any claim by the Respondent, of which none has been forthcoming, that it was preparing to use the domain name in connection with a bona fide offering of goods and services.

Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor is it making a legitimate non-commercial or fair use of the domain name; nor has the Respondent been authorized or licensed by the Complainant to use the Complainant’s well-known trademarks MARTHA and MARTHA’S FLOWERS as part of the disputed domain name.

Furthermore, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s trademark MARTHA’S FLOWERS inevitably leads to the diversion of the Complainant’s consumers, wishing to access the Complainant’s website, namely “www. marthasflowers.com” to the Respondent’s website, namely “www. marthaflowers.com” (see further on this point below) and the links there to competitors of the Complainant, with the consequential tarnishing – especially, it may be deduced in respect of the links to the page of advertisements for pornography, gambling and “anonymous sex services” (evidence of which, as noted above, has been provided to the Panel) – of the Complainant’s trademark. In other words, the Respondent is trading, for commercial gain, on the good name, notoriety and well-earned reputation of the Complainant’s business and its famous trademark and thereby unfairly attracting to its own business and activities the substantial goodwill that the Complainant has established over many years throughout the world in its name and marks, sufficient evidence of which has been provided to the Panel, without any right or legal justification for doing so. Indeed, as was pointed out in Red Bull GmbH v. Bayer Shipping & Trading Ltd., WIPO Case No. D2003-0271, the linking to competitive third-party websites “shows that Respondent is well aware of Complainant as well as of its products and activities, and, instead of making a bona fide use of the domain name, rather intends to have a free ride on the fame and goodwill of Complainant and its trademarks”. Also, as was stated in Hoffman-La Roche Inc. v. WhoisGuard, WIPO Case No. D2005-1288: “Whether or not Respondent profits directly from the redirection of the disputed domain name to a commercial website is not determinative. The fact is that someone other than Complainant is profiting from the use of the disputed domain name – a name that is confusingly similar to Complainant’s mark. Consequently, the for-profit nature of the use of the disputed domain name may be imputed to Respondent. Also, it is simply not reasonable to assume that Respondent is merely providing a public service when redirecting Internet users to a particular commercial website”.

Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights to nor legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 respondent’s website or location or of a product or service on its website or location.”

Based on the evidence provided in the Case File, the Panel agrees with the Complainant’s contention that the Respondent, by registering the disputed domain name, is trading on the Complainant’s valuable goodwill established in its trademarks MARTHA and MARTHA’S FLOWERS over many years. Indeed, as previously mentioned, in the absence of any evidence to the contrary, of which none is forthcoming on the part of the Respondent, the Respondent’s registration of the disputed domain name would not appear to be accidental, but deliberate and calculated to exploit the Complainant’s renown in the retailing and provision of services in the burgeoning and lucrative ‘home and life style’ markets. This conclusion is reinforced by the extensive links on the website of the Respondent (referred to above), which refer Internet users not to the Complainant’s products and services, but to a wide range of those of third parties, who are competitors of the Complainant in the product and service categories concerned. The Respondent appears to be trading on the Complainant’s goodwill and reputation, which the Complainant has built up over many years. This, without any explanations by the Respondent to the contrary, of which none have been forthcoming, constitutes bad faith.

Again, by registering and using the disputed domain name incorporating the Complainant’s trademark MARTHA’S FLOWERS, the Respondent is misleading Internet users and consumers into thinking that it is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which, according to the Case File is, in fact, the case. Such misleading conduct, in the view of the Panel, is another sign of bad faith on the part of the Respondent.

Furthermore, the omission of the possessive “ ‘s” of the Complainant’s well-known trademark MARTHA’S FLOWERS in the disputed domain name, coupled with the links to competitors of the Complainant, would not, as noted above, appear to be accidental, but deliberate on the part of the Respondent. Indeed, such ‘typosquatting’, defined in American Girl, LLC v. Nameview, Inc., 381 F.Supp.2d 876, 879 No. 1 as: “…. the bad faith act of using misspellings or variations of legitimate domain names in order to trick individuals into viewing ….unrelated websites” constitutes bad faith, because a website with a domain name consisting of a common misspelling, often the result of mistyping or, indeed, foreseeable typographical errors, of a famous trademark generates Internet traffic unfairly. See also Convergys Corporation v. Roshni Sohail, WIPO Case No. D2006-0043, involving the disputed domain name <convergs.com>. The present case, in the view of the Panel, is an example of so-called ‘typosquatting’ and constitutes bad faith on the part of the Respondent.

Also, the Panel agrees with the Complainant’s contentions, stated above, and also for the reasons advanced, including the previous WIPO UDRP decisions cited, that the so-called ‘parking’ for almost four years by the Respondent of the disputed domain name is also, in the present case, evidence of bad faith registration and use of the domain name by the Respondent.

Finally, the failure of the Respondent to file any answer to the present Complaint or otherwise participate in the present proceedings, in the view of the Panel, also indicates bad faith – that is, lack of legitimacy – on the part of the Respondent.

Therefore, for all the above reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

 

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 <marthaflowers.com> be transferred to the Complainant.


Ian Blackshaw
Sole Panelist

Dated: April 10, 2006

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2006/d2006-0198.html

 

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