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

Smokin' Over Domain Name Dispute…

Complainants are affiliated companies that manufacture, distribute and sell various brands of smokeless tobacco, including the GRIZZLY brand.  Complainants have filed various trademark registrations for the GRIZZLY mark in connection with smokeless tobacco products.

Respondent is in the business of registering and utilizing domain names and, on January 30, 2005 and June 3, 2005, Respondent registered respectively the disputed domain names "grizzlychew.com" and "grizzlysnuff.com".  Respondent contracts with Hitfarm, an Internet advertising service provider, to place targeted advertising links on "grizzlychew.com".  Complainants did not learn of Respondent's registration of the domain names until August 2007.

In arguing that the domain names were not confusingly similar to the GRIZZLY marks, Respondent relied upon the fact that the common term "Grizzly" has been registered as a trademark by numerous companies and it also took the disingenuous position that Complainants do not market GRIZZLY products as "chew" or "snuff" but, rather, as smokeless tobacco.  These arguments, however, did not hold smoke with the Panel.  As the Panel noted, even though true that the term "Grizzly" has been registered for various products by numerous trademark holders, the USPTO's decision to grant Complainants a trademark demonstrates that Complainants have enforceable rights in the mark.  The Panel further noted that regardless of whether Complainants refer to their product as "smokeless tobacco", the evidence submitted made clear that the terms "chew" and "snuff" are commonly used to reference smokeless tobacco.  It was logical to conclude that anyone familiar with the GRIZZLY mark would likely assume that the domain names were affiliated with Complainants, rendering them confusingly similar.

Respondent also argued that offering targeting advertising searches is a legitimate business and that, in any event, they had no control over which advertisers Hitfarm posts using the domain names. Can you say "pass the buck"??  While the Panel conceded that the business of offering targeting advertising searches may be a legitimate business in certain circumstances, those circumstances did not exist in this case. It may be legitimate as long as the domain names have been registered because of their attraction as dictionary words and not because of their value as trademarks.  In this case, however, the domains did not merely refer to "smokeless tobacco", "chew" or "snuff".  Rather, they merged two of those terms with a trademarked brand of smokeless tobacco and use the resulting domain names for a commercial purpose. Under the Policy, that is not a legitimate use capable of establishing rights or legitimate interests.  Not surprisingly, for these same reasons, the Panel also found that Respondent had registered and used the domains in bad faith and ordered transfer of the domain names to Complainants. Conwood Company, LLC, Conwood Sales Company, LLC and Rossvil, LLC v. Texas International Property Associates, WIPO Case No. D2008-0376

“Squeaky-Free” Domain Name Transfer

The Complainant, WD-40 Company, owns valid US trademarks in WD-40 and seeks immediate transfer from the Respondent, Texas International Property Associates, of the disputed domain name www.wd-40company.com.  The Complainant contends that its mark is famous and internationally recognized and that consumers are likely to be confused in assuming that there is a relationship between Complainant and Respondent’s website.  Complainant attempted to settle this dispute with Respondent informally, but Respondent failed to respond to numerous cease and desist letters.  In turn, the Complainant seeks the Panel’s intervention in effectuating a transfer of the disputed domain name.  Interestingly, in response to the Complaint, the Respondent requested an immediate transfer of rights in the disputed domain name, without admitting the three element required under the Policy for transfer (i.e., identical or confusing similarity of the domain name with a trademark in which Complainant has rights; a lack of rights or legitimate interest in the domain; and registration and use in bad faith).

The Panel therefore determined that Respondent had consented to transfer in the disputed domain name to the Complainant and found no evidence to suggest that the consent was not genuine.  Consequently, the Panel directed an immediate transfer of the disputed domain name to the Complainant, following past UDRP precedent that "… under such circumstances, where Respondent has agreed to comply with the Complainant's request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names."    As the saying goes, looks like this squeaky wheel got the grease.... WD-40 Company v. Texas International Property Associates, Case No. D2008-0876

Pick and Pay for Domain Name

Complainant is a South African public company, operating several chains of retail groceries, supermarkets, hypermarkets, liquor stores, clothing stores and pharmacies in southern Africa and in Australia though majority-owned subsidiaries and franchisees.  The group processes 5 million sales transactions monthly in more that 400 stores labeled with the "Pick 'N Pay" brand and also serves thousands of customers through its online shopping facility at "www.picknpay.com".  The "Pick 'N Pay" mark has been used since 1967 and Complainant's company has spent more than $62 million annually through advertising and marketing the brand.

The disputed domain name, "www.pickandpay.com", was registered on October 9, 2001 and redirects to "www.001porn.com", a landing page with explicit sexual images and categorized links to a multitude of commercial pornography websites.  The Respondent, who appeared to be an individual residing in England, did not respond to the complaint.

Although acknowledging that Complainant's marks represent one of the best-known retail brands in southern Africa and the confusing similarity with the disputed domain name, the Panel nonetheless denied the Complaint.  The Panel's decision turned on the question as to whether it can be reasonably inferred that the Respondent in England was aware of the "Pick 'N Pay" brand and used a variation on the mark intentionally to mislead Internet users.  Denying the Complaint, the Panel determined that the disputed domain name is a "sensible English phrase comprised of dictionary words" and might have been chosen for reasons other than emulation of the Complainant's similar marks.  There was no indication in the record that the Respondent registered multiple domain names exploiting South African retail brands, nor was there evidence that the Complainant advertises in the United Kingdom of Great Britain and Northern Ireland or that its website attracts English Internet users.  In short, the Panel found that the record did not warrant a finding that the Respondent in England was, more likely than not, aware of the Complainant's South African retail brand when he registered the domain.  Pick 'n Pay Holdings Limited v. Darren Stevens, WIPO Case No. D2007-1583

A Hair Raising Issue...

Farouk Systems, Inc. manufactures and sells professional hair care products in over 60 countries worldwide and has been using the CHI mark on its hair products since 2000, owning several trademarks for the word "CHI" for use of hair care products.  On June 16, 2005, the Respondent registered the domain name "originalchi.com", which resolved to a website that prominently branded "CHI flat iron" and offered for sale what were claimed to be Farouk's "Chi" hair care products, asserting that the products were covered by a warranty from Farouk and advising users to contact Farouk in relation to warranty claims and product returns.  Respondent's website also included details, reviews and tips and advice related to Farouk's products, the ability to purchase unauthorized versions of Farouk's products and/or counterfeit reproductions of Farouk's products. 

When Farouk successfully sought transfer of the domain in a WIPO proceeding, the panel noted that the addition of the generic and laudatory term "original" to Farouk's registered trademark for "CHI" was insufficient to differentiate the domain name and trademark and, rather, enhanced the connection, rendering it confusingly similar to Farouk's CHI trademark.  In addition, it was held that the domain was registered and used in bad faith where the website at the disputed domain name was used to either resell the Complainant's products or to sell counterfeit versions.  In so holding, it was noted that the majority view of WIPO panelists holds that a reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements.  These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant's relationship with the trademark owner.  The respondent must also not try to corner the market in domain names that reflect the mark.  By application of the foregoing, it was held that the Respondent at bar did not accurately disclose its relationship with the trademark owner and, on the contrary, the use of "original" with "chi" in the disputed domain name suggests that the Respondent has some sort of connection with Farouk, which it does not.  It was held that the Respondent's site itself enhances the likelihood of confusion by, amongst other things, prominent use of Farouk's mark on the homepage and false claims that the Respondent's products are covered by warranties from Farouk. It was further noted that, if the Respondent's products are indeed counterfeits, then the case against it was even stronger. 

Farouk Systems, Inc. v. Originalchi.com, WIPO Case No. D2007-1201.