Domain name – ICANN Uniform Domain Name Dispute Resolution Policy – WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution – Floral Designers – United States Patent Office – Identical – Confusingly similar – Legitimate rights and interests – Bad faith registration and use.

Complainant is an American Institute of Floral Designers who has registered the collective membership mark “AIFD and Design”. Complainant has used the "aifd and design" mark in connection with its membership organization, which is limited to individuals (as opposed to corporations) who have satisfied complainant's membership requirements for floral designers.  A director on Respondent's board of director is a member of Complainant but was not licensed or otherwise authorized or permitted to use the AIFD mark, other than as an indication of membership in the organization.  Respondent, Palm Coast Floral, registered the domain name at issue, “aifd.com”.

When Complainant attempted to register their mark, they learned of Respondent’s registration of “aifd.com”, which was resolved to a web page for Palm Beach Florist.  Complainant asked Respondent to shut down the web site and to transfer the Domain Name to Complainant.  The Domain Name was shut down but not transferred.  In late 1999, a new web par appeared for Palm Coast Florist under the title “Always Incredible Floral Designs”.  Complainant asked once again Respondent to transfer the name.  Respondent refused.

Held, Domain Name “aifd.com” transferred to Complainant.

It is clear that the domain name at issue was identical or confusingly similar to Complainant’s mark.  Furthermore, Respondent failed to prove legitimate rights or interests in the domain name.  Complainant’s allegation of bad faith registration and use also proved to be right as Panel found that the domain name was still registered to Respondent even though they had contended the contrary.

Cases referred to
Ironson plc. v. Unimetal Sanayai ve Tic.A.S., Retail Florist’s Business, ICANN Case No. D2000-0011.
Parfums Christian Dior v. QTR Corporation, ICANN Case No. D2000-0023.

Policies referred to

ICANN Uniform Domain Name Dispute Resolution Policy
WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution

Panel decision referred to
--

Donahey, Panelist: - 
 

1. The Parties

1.1 The Complainant is American Institute of Floral Designers, a non-profit organization, having its principal place of business at 720 Light Street, Baltimore, Maryland, United States of America. 

1.2 The Respondent is Palm Coast Floral, Inc., a business entity located at 4715 Swift Road, Sarasota, Florida, United States of America. 

2. The Domain Name(s) and Registrar(s)

The domain name at issue is <aifd.com>, which domain name is registered with Network Solutions, Inc., based in Herndon, Virginia.

3. Procedural History

3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on April 26, 2000, and the signed original together with four copies forwarded by express courier was received on April 28, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated April 28, 2000. 

3.2 On April 28, 2000, a Request for Registrar Verification was transmitted to the registrar, Network Solutions, Inc. ("NSI") requesting it to: (1) confirm that the domain name at in issue is registered with NSI; (2) confirm that the person identified as the Respondent is the current registrant of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es) available in the registrar’s Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain name. 

3.3 On April 30, 2000, NSI confirmed by reply e-mail that the domain name <aifd.com> is registered with NSI, is currently in active status, and that the Respondent, Palm Coast Florist, is the current registrant of the name. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect. 

3.4 The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a single-member Panel were paid on time and in the required amount by the Complainant. 

3.5 No formal deficiencies having been recorded, on May 5, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of May 24, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by courier and by e-mail to the e-mail addresses indicated in the Complaint. That email address was incorrect, and, accordingly, the email notification was returned to the WIPO Center. In any event, evidence of proper notice is provided by the evidence in the record of the Respondent’s participation in these proceedings. 

3.6 A Response was received on May 24, 2000. An Acknowledgment of Receipt (Response) was sent by the WIPO Center on May 25, 2000. 

3.7 On June 8, 2000, having received M. Scott Donahey’s Statement of Acceptance and Declaration of Impartiality and Independence, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which M. Scott Donahey was formally appointed as the Sole Panelist. The Projected Decision Date was June 21, 2000. This was subsequently extended to June 27, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and the WIPO Supplemental Rules. 

4. Factual Background

4.1 Complainant registered the collective membership mark "AIFD and design" for indication of membership in an association of Floral designers with the United States Patent Office ("USPTO") on October 26, 1993, for a period of 20 years.

4.2 Complainant has used the "aifd and design" mark in connection with its membership organization, which is limited to individuals (as opposed to corporations) who have satisfied complainant's membership requirements for floral designers.

4.3 Individuals who have qualified for membership can use the "AIFD" designation. Corporations cannot be members and the "AIFD" designation applies to individuals only.

4.4 Ms. Winifred Ottaviano is a member of Respondent's board of directors and is a member of AIFD.

4.5 Ms. Ottaviano is not licensed or otherwise authorized or permitted to use the AIFD mark, other than as an indication of membership in the organization.

4.6 Respondent registered the domain name at issue on March 27, 1997.

4.7 Complainant learned of the registration of <aifd.com> when it attempted to register that name in August 1998.
4.8 At the time that Complainant learned of the registration of <aifd.com>, the domain name resolved to a web page for Palm Beach Florist.

4.9 At that time Complainant contacted Respondent and requested that the web site be shut down and the domain name at issue be transferred to Complainant.

4.10 Shortly thereafter, the web site was shut down, but the domain name at issue was not transferred.

4.11 Complainant continued to monitor the web page associated with <aifd.com>, but determined to take no action, so long as it was not used for any commercial purpose.

4.12 In November or December 1999, a new web page appeared for Palm Coast Florist under the title "Always Incredible Floral Designs."

4.13 Complainant received a number of complaints from AIFD members concerning the web site, and contacted Respondent.

4.14 Respondent again refused to transfer the name.

5. Parties’ Contentions

5.1 Complainant contends that Respondent has registered as a domain name a mark which is identical to the service mark registered and used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.

5.2 Respondent contends that it failed to renew the registration agreement and that as of March 25, 2000, the name was not owned by Respondent.

6. Discussion and Findings

6.1 Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute"A Panel shall 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." 

6.2 Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. 

6.3 Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2) that the Respondent has no legitimate interests in respect of the domain name; and,
3) the domain name has been registered and used in bad faith.

6.4 It is clear that the domain name at issue <aifd.com> is identical or confusingly similar to the mark in which the Complainant has rights.

6.5 Respondent contends that it never used the web address for personal gain, nor that it ever used the "AIFD" trademark or referenced that mark.

6.6 The Panel finds that Complainant has alleged that Respondent has no right or legitimate interest in respect of the domain name at issue. This shifts the burden to Respondent to show that it has rights or legitimate interests in respect of the domain name at issue. See, e.g., Policy, 4(c).

6.7 Respondent has failed to produce evidence sufficient to rebut Complainant's allegations. This entitles the Panel to conclude that Respondent has no such rights or legitimate interests in respect of the domain name at issue. Ronson plc v. Unimetal Sanayai ve Tic.A.S., Retail Florist's Business, ICANN Case No. D2000-0011; Parfums Christian Dior v. QTR Corporation, ICANN Case No. D2000-0023.

6.8 The question is, has the domain name at issue been registered and is it being used in bad faith?

6.9 Complainant contends that by associating the web page for Respondent's retail florist's business with <aifd.com>, Respondent attempted to attract, for commercial gain, Internet users who, being familiar with the AIFD mark, were confused as to the source, sponsorship or endorsement of the web site or the services offered by Complainant 1. Policy,  4(b)(iv). The Panel agrees.

6.10 Indeed, Respondent's defence focuses on Respondent's contention that it no longer owns the domain name at issue, as Respondent did not renew its registration.

6.11 A reference by the Panel to the Whois information reveals that as of the date of the decision the domain name at issue is shown to be currently registered to Respondent 2. 
 
 
 

7. Decision

For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is identical to the mark in which the Complainant has rights, that the Respondent has no rights to or legitimate interests in respect of the domain name at issue, and that the Respondent's domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <aifd.com> be transferred to the Complainant.
 
  Footnotes:
1. It is immaterial that Respondent initially changed the content of its web site after being contacted by Complainant. Ingersoll-Rand v. Frank Gully, d/b/a Advcomren, ICANN Case No. D2000-0021.
2. Reviewing the Whois information is tantamount to the taking of Judicial Notice by a United States Federal Court. See, Federal Rules of Evidence, Rule 201. Indeed, the Panel questions the position taken by some panelists that the Panel should never reference information outside the pleadings. See, e.g., Dissent, Chernow Communications, Inc. v. Jonathan D. Kimball, ICANN Case No. D2000-0119. To limit oneself to the submissions in this case would have resulted in the Panel's acceptance of Respondent's statement, which was readily determined to be false. Such an approach does not lead to a just result.