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and Mediation Center
ADMINISTRATIVE PANEL DECISION
1-800-Flowers.com, Inc, Fresh Intellectual Properties, Inc., Fannie May Confections, Inc., v. G Design
Case No. D2006-0977
1. The Parties
The Complainant is 1-800-Flowers.com, Inc, Fresh Intellectual Properties, Inc., and Fannie May Confections, Inc., New York, United States of America, represented by Kilpatrick Stockton, LLP, United States of America.
The Respondent is G Design, Taiyuan, Shanxi, China.
2. The Domain Names and Registrar
The disputed domain names <fanneimay.com>, <fannemay.com>, <fannimay.com>,
<180flowers.com>, and <18000flower.com> are registered with Go Daddy
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2006. On August 3, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On August 5, 2006, Go Daddy Software 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 August 16, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 5, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 6, 2006.
The Center appointed Anna Carabelli as the Sole Panelist in this matter on September 18, 2006, indicating that absent exceptional circumstances the decision would be due by October 2, 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.
Upon reviewing the Complaint and the Exhibits attached
thereto, the Panel issued Procedural Order No. 1, which was notified to the
parties on September 28, 2006, requesting the Complainant to submit by October 5, 2006,
certain assignment documents which although indicated as included in Exhibit
C were not actually attached to the Complaint and additional information and
documentary evidence to establish the relation between the Complainant and some
of the marks attached to the Complaint as Exhibit C. The Panel also postponed
the deadline for decision until October 13, 2006. On October 5, 2006, the Complainant
submitted a Response to the Panel Procedural Order No. 1, including the requested
4. Factual Background
The Complainant has provided evidence of U.S. Patent and Trademark Office registrations and actual ownership by direct registration, transfer and assignment, as it is applicable, of the following marks (Exhibits D and C, as integrated by the Complainant’s response to Panel Procedural Order No.1):
1) “800 FLOWERS MARKS”:
April 29, 1975
June 24, 1986
March 30, 1993
1-800- FLOWERS & DESIGN
November 5, 1996
March 13, 2001
2) “FANNIE MAY MARKS”:
FANNIE MAY KITCHEN FRESH CANDIES
September 2, 1986
I LOVE MY HONEY BUT OH YOU FANNIE MAY!
December 8, 1987
December 16, 1997
FANNY MAY CANDIES CELEBRATED COLLECTION
July 14, 1998
The Complainant operates the websites under the domain names <fanniemay.com> and <1800flowers.com>, which are both registered in the name of the Complainant 1-800-Flowers.Com.Inc.
The Complainant’s website under “www.fanniemay.com” confirm
that the complaining companies are related corporations, which have sufficient
interest in the Domain Names for them to be joined in this action (Adidas
International Marketing BV and adidas-Salomon AG v. Sonia Eguia, WIPO
Case No. D2006-0475, Staples, Inc., Staples The Office Superstore, Inc.,
Staples Contract & Commercial, Inc. v. John Morgan, WIPO
Case No. D2004-0537).
The Respondent registered the Domain Names on the following dates:
<18000flower.com>, January 18, 2005;
<180flowers.com>, September 30, 2001;
<fannimay.com>, December 21, 2004;
<fanneimay.com>, February 1, 2005;
<fannemay.com>, February 1, 2005.
The Respondent has been using the Domain Names in connection with redirecting websites which in some cases offer links to other websites belonging to the Complainant’s direct competitors’ (Complaint’s Exhibits G, H, L, M, I) and to sites that may suggest some kind of association between the Respondent’s sites and the Complainant (Complaint’s Exhibits N, O, P).
The Respondent has registered and is the holder of about 1500 domain names,
some of which incorporate or are confusingly similar to third parties’
well-known trademarks (Complaint’s Exhibit R).
5. Parties’ Contentions
The Complainant contends that:
- the Domain Names are confusingly similar to the Complainant’s marks because they consist of predictable misspellings or mistypings of the Complainant’s “800 Flowers” and “Fannie May” marks which have become distinctive and extremely well-known through the use made by the Complainant over the years;
- the Respondent has no right or legitimate interest in the Domain Names and is not making any legitimate non commercial or fair use thereof or any use in connection with a bona fide offering of goods and services;
- the Complainant’s and their predecessors’ first use and first registration of their marks pre-date any use the Respondent may have made of any of the Domain Names;
- the Domain Names were registered in bad faith since the Respondent could not have been unaware of the Complainant’s marks when he registered the Domain Names;
- the Respondent’s bad faith in connection with the registration of the Domain Names is also supported by the fact that the he has intentionally registered several domain names that are similar but slightly misspelled variations of long use and well-known third parties’ trademarks;
- the Domain Names are being used in bath faith, in connection with portal or search “click through” sites from which the Respondent receives revenues from third parties whose websites are accessed via the Respondent’s websites, and that Respondent intentionally attempts to attract for commercial gain Internet users who are looking for the Complainant’s goods and services.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established rights in the “800 Flowers” and “Fannie May” marks listed in paragraph 4 above, by submitting various U.S. Patent and Trademark registrations and Assignments (Complainant’s Exhibits D and C, as integrated by the Complainant’s response to Panel Procedural Order No. 1).
The Panel also determines that Respondent’s registered Domain Names are confusingly similar to the point of being nearly identical to Complainant’s’ marks as the differences between them consist of typical misspellings/mistypings of Complainant’s marks, namely:
(a) inversion of two letters: <fanneimay.com>;
(b) one letter/number deletion: <fannemay.com>; <fannimay.com>; <180flowers.com>;
(c) adding of a “0” and deletion of letter “s”: <18000flower.com>.
Previous Panel decisions are consistent in considering such misspellings as
confusingly similar to the relevant misspelled Trade and Service mark. (See
e.g.: Media West- GRS, Inc., Media West – MNC, Inc., Gannett Pacific
Corporation, Gannet Co., Inc., Gannett River States Publishing Corp., Guam Publications,
Incorporated v. Moniker Privacy Services/Forum LLC/Registrant (187640) email@example.com,
WIPO Case No. D2006-0478, Kelley Blue Book
Company, Inc. v. Nikolay Golovin aka Buy-movie.net, WIPO
Case No. D2005-0837, Easy Group IP Licensing Limited v. John Sansone,
WIPO Case No. D2004-0763, Staples,
Inc., Staples The Office Superstore, Inc., Staples Contract & Commercial,
Inc. v. John Morgan, WIPO Case No. D2004-0537).
In the light of the above, the Panel finds that the Complainant has met the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out in particular but without limitation three circumstances which, if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii), namely:
(i) before any notice of the dispute to the Respondent, the Respondent’s use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial 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.
The Complainant has established a prima facie case that the Respondent
has no rights or legitimate interests in the disputed domain names under Policy
paragraph 4(c). According to a consistent line of WIPO decisions in such a case
the burden of proof shifts to the Respondent to rebut the evidence. (See e.g.
Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO
Case No. D2002-0806; International Hospitality Management – IHM
S.p.A. v. Enrico Callegari Ecostudio, WIPO
Case No. D2002-0683). As a consequence, the Respondent’s failure to
reply to the Complaint allows the Panel to infer that the Respondent has not
such rights or legitimate interests.
Moreover, the Panel finds, in line with WIPO Panel
decisions, that the Respondent’s use of the Domain Names to divert Internet
users to his websites and redirect them to other websites, some of which belonging
to the Complainant’s direct competitors, presumably receiving compensation
for this misdirection, cannot be considered a bona fide use of a domain
name as per paragraph 4(c)(iii) of the Policy. (See e.g., Lyonnaise de Banque
v. Richard J., WIPO Case No. D2006-0142, Motorola,
Inc. v. Mr. Josip Broz, WIPO Case No. D2002-1063).
Consequently, the Panel deems that the Respondent has no rights or legitimate interest in the Domain Names under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As established in paragraph 6.A. above, the Domain Names consist of typical
misspellings/mistypings of the Complainant’s marks. It is therefore very
unlikely that the Respondent, at the time he registered the Domain Names, was
not aware of the Complainant’s trademarks (See Nokia, Inc. v. B. B.
de Boer, WIPO Case No. D2000-1397).
Based on the above, the Panel agrees that the Respondent has registered
the Domain Names in bad faith.
The Panel finds that the Respondent’s activity clearly amounts to typo squatting conduct which, relying on predictable typographical errors of known trademarks, intentionally aims at attracting and diverting Internet users to his referring portal.
As stated in various WIPO Panel decisions, such a use of a referring portal
to attract and redirect for commercial gain (by collection of referral fees)
Internet users to somebody else’s sites, some of which, moreover, belong
to Complainant’s direct competitors, is to be considered a clear case
of bad faith use of domain names (Media West – GRS, Inc., Media West
– MNC, Inc., Gannett Pacific Corporation, Gannet Co., Inc., Gannett River
States Publishing Corp., Guam Publications, Incorporated v. Moniker Privacy
Services/Forum LLC/Registrant(187640) firstname.lastname@example.org, WIPO
Case No. D2006-0478, Humana Inc. v. Domain Deluxe, WIPO
Case No. D2005-0231, Easy Group IP Licensing Limited v. John Sansone,
WIPO Case No. D2004-0763).
Moreover, the Respondent is involved in a consistent bad faith typo squatting conduct, as evidenced by the Respondent’s registration of several misspelled domain names some of which incorporate or are similar to third parties’ well known trademarks (Complainant's Exhibits R, S and T).
As a consequence, the Panel determines that the Complainant has established
bad faith according to Paragraph 4(a)(iii) of the Policy.
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 names <fanneimay.com>, <fannemay.com>, <fannimay.com>, <180flowers.com>, and <18000flower.com>, be transferred to the Complainant.
Dated: October 13, 2006
Источник информации: https://www.internet-law.ru/intlaw/udrp/2006/d2006-0977.html
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