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Respondent Smelling Like Roses in Domain Name Dispute

Complainant sells flowers via the Internet worldwide and owns marks registered in Germany for FLORAPRIMA. Complainant has been using FLORAPRIMA as its company name since 2001 and the earliest of its trademarks was registered in June 2007.

Respondent also sells flowers, as a wholesaler of fresh cut flowers for the United States market. It holds a 90% interest in "Floraprima, LLC", a limited liability company organized under the laws of Texas.  Respondent registered the disputed domain name, "floraprima.com" in November 2001.

Respondent argued, among other things, that Complainant's trademark rights only apply in Germany.  The Panel rejected this argument on the grounds that it is enough that Complainant demonstrated rights in a trademark granted in any jurisdiction.  For purposes of the Policy, in determining whether domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights, previous panels have noted that the 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.  To find otherwise would artificially limit the scope of the Policy to particular state boundaries.  Based thereon, the Panel found that the disputed domain name was identical to Complainant's registered mark.

Notwithstanding, the Panel denied transfer of the disputed domain name to Complainant, despite the fact that the disputed domain name reverted to a "portal" or "landing" website which contained links in German that each reverted to pages containing a miscellany of other links (some flower related, some not).  In denying transfer, the Panel found that Respondent had provided sufficient evidence that it was operating a legitimate business associated with the disputed domain name (including corporate documents, a shareholder certificate, an agreement for sale and promissory note).  In addition, the Panel considered that Complainant's trademarks were relatively new, having been registered 6 years after the creation of the disputed domain name in 2001. While Complainant claimed to have first used its marks in 2001, there was no evidence to support its claim and no evidence that Complainant had a trading reputation in the United States or Ecuador, where Respondent does business.  FloraPrima GmbH v. Rosaprima Cia. Ltda./Flora Prima, WIPO Case No. D2009-0117


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