Venus & flowers : NYC florist loses #UDRP it filed against generic domain #EternalFleur .com

Venus et Fleur is a NYC based florist, operating from the domain VenusEtFleur.com which was registered in 2015.

The company alleged that another florist, Eternal Fleur, operating from EternalFleur.com, imitated their brand, offering competitive services. They sent out a complaint in August, seeking the surrendering of the domain name.

There is only one way to say “flower” in French, and that’s fleur. The Complainant alleged that their ETERNITY mark is too close to the “eternal” part of the Respondent’s domain name.

In recent months, the Complainant engaged Kim Kardashian to promote its Early Grey floral collection.

Domainer-friendly law firm, ESQwire.com, successfully defended the case on behalf of the Enternal Fleur owners. ESQwire, a DomainGang sponsor, provided us with the following public document on the case, with the panelists clearing the Respondent from any wrong-doing.

ARBITRATION AND MEDIATION CENTER – ADMINISTRATIVE PANEL DECISION
Venus et Fleur LLC v. Domains by Proxy, LLC / Amanda Wojtas
Case No. D2018-1853

1. The Parties

The Complainant is Venus et Fleur LLC of New York, New York, United States of America (“United States”), represented by Maldjian Law Group LLC, United States.

The Respondent is Domains by Proxy, LLC of Scottsdale, Arizona, United States / Amanda Wojtas of New York, New York, United States, represented by ESQwire.com PC, United States.

2. The Domain Name and Registrar

The disputed domain name <eternalfleur.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2018. On August 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 15, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 17, 2018.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 9, 2018. Upon request of the Respondent, the Center extended the due date for Response to September 13, 2018, in accordance with the Rules, paragraph 5(b). The Response was filed with the Center September 13, 2018.
The Center appointed W. Scott Blackmer, Jeffrey M. Samuels, and The Hon Neil Brown Q.C. as panelists in this matter on October 19, 2018. The Panel finds that it was properly constituted. Each member of 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

According to the Complainant’s website at “www.venusetfleur.com”, its founders, Mr. Chadha and Ms. Bansal, are responsible for “New York’s first bespoke rose atelier and creator of Eternity® Roses, which launched in 2015”. The online database operated by the New Jersey Department of Revenue and Enterprise Services shows that the Complainant is organized as a limited liability company registered in New Jersey on August 4, 2015. The online database of the New York Department of State, Division of Corporations, State Records & UCC shows that the Complainant has been registered as a foreign limited liability company doing business in New York since December 22, 2016. The Complaint and the Complainant’s website show the company’s business address in New York City. Both describe the Complainant’s business as buying roses in Ecuador, preserving them in designer containers, and selling them online and in a “pop-up store” at Saks Fifth Avenue in New York City.

The Complainant’s website is headed with a figurative VENUS ET FLEUR logo that is accompanied by a trademark registration symbol. Under the logo appears the tagline “ETERNITY™ SHOP”. Against moving background photographic images of roses, a larger slogan is displayed: “REAL ROSES THAT LAST A YEAR ®”. The home page and other pages of the Complainant’s website also display the Complainant’s figurative “VeF” logo, with the “TM” symbol denoting an unregistered or pending trademark claim. The Complainant’s website offers same-day courier delivery in New York City and certain parts of New York and New Jersey, as well as in Los Angeles, and shipping to other locations in the United States and many other countries.

The Complainant holds a United States trademark registration for ETERNITY as a standard character mark, Registration Number 5508537 (registered on July 3, 2018), as well as subsequent trademark registrations for ETERNITY as a word mark in the European Union and the United Kingdom of Great Britain and Northern Ireland.

According to the Registrar, the Domain Name was created on July 11, 2017 and registered in the name of a domain privacy service. On being notified of this dispute, the Registrar identified Ms. Wojtas of New York City (hereafter the “Respondent”) as the registrant. The Response indicates that Ms. Wojtas is the principal of “Eternal Fleur, LLC”, founded in July 2017 to sell “Eternity Roses”. The Panel notes that the official New York database cited above lists “Eternal Fleur, LLC” as an active domestic limited liability company that was initially registered on August 3, 2017.

As in screenshots attached to the Complaint, at the time of this Decision the Domain Name resolves to a developed commercial website (the “Respondent’s website”) headed “Eternal Fleur the Four Season Rose”, advertising “[p]reserved rose arrangements that last for at least four seasons or longer.” The website features static photos and descriptions of floral arrangements. On the home page, the words “Eternal Fleur” are also superimposed over a photo followed by an “(R)” trademark registration symbol, and the words “The Four Season Rose” are followed by a “(TM)” trademark symbol. The website identifies the Respondent’s retail shop address in New York City and offers “store pick-up” for local customers, as well as “free standard shipping in the US.” The Respondent’s website additionally offers to customize floral arrangements with “Swarovski Crystals” personalized with initials or messages and advertises that the Respondent provides “special and corporate event packages”.

Despite the trademark registration symbol that appears in places on the Respondent’s website, the online database of the United States Patent and Trademark Office (“USPTO”) shows that at the time of this Decision the Respondent has a pending United States trademark application, not a granted registration, for ETERNAL FLEUR as a standard character mark, Serial Number 87756652, filed on January 16, 2018, claiming first use in commerce on July 18, 2017. According to that database, the USPTO issued a non-final Office Action in May 2018, so further response and action would be required before the USPTO would even publish the application for opposition. The Respondent also has a pending United States trademark application for ETERNAL FLEUR THE FOUR SEASON ROSE (words and design), Serial Number 87766265, filed on January 23, 2018, also claiming first use in commerce on July 18, 2017. This application has been published for opposition, and, indeed, the Complainant reports that it has filed a Notice of Opposition.

The Complainant states that the Respondent engaged in communications with the Complainant’s co-founder Ms. Bansal by text messages “in or around July 2015”, discussing the Complainant’s new website, its products, and its plans for business expansion. Sales records attached to the Complaint show that the Respondent purchased floral arrangements from the Complainant in June and August 2017. The Respondent’s limited liability company, Eternal Fleur, LLC, was formed at about that time, and the Domain Name was also created in July 2017. Effectively, that is when the Respondent became a competitor, imitating the Complainant’s successful business model of preserving fresh roses and selling them as long-lasting floral arrangements, both in New York City and online.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Name is confusingly similar to its registered ETERNITY trademark. The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name, because the Respondent cannot be said to be using it in connection with a bona fide offering of goods and services, as the Respondent intentionally trades on the fame of another.

The Complainant argues that the Respondent had prior knowledge of the Complainant’s business and selected the Domain Name to misdirect Internet users for commercial gain, which constitutes bad faith under the Policy.

B. Respondent

The Respondent observes that the Domain Name does not incorporate the Complainant’s trademark but consists of two different words, “eternal fleur”. The Respondent contends that the Domain Name is sufficiently different for Internet users to distinguish, avoiding confusing similarity with the Complainant’s ETERNITY mark.

The Respondent claims a legitimate interest in the generic or highly descriptive words “eternal fleur” as relevant to its business of selling preserved flowers. The Respondent asserts that “eternity rose” is a generic term used for preserved roses, such as the roses dipped in precious metals sold by a third party, “The Eternity Rose”, at “www.eternityrose.com”. The Respondent attaches screenshots of search engine results showing that preserved roses are sold by others as “eternity roses”, “eternal roses”, or “forever roses”. Moreover, the Domain Name matches the Respondent’s business name, which the Respondent says was likewise chosen for the descriptive value of the term. The Respondent advances these legitimate interests in a generic string and business name as sufficient reasons for registering and using the Domain Name, denying that its motivation was a bad-faith intent to mislead consumers or exploit the Complainant’s ETERNITY mark. The Respondent also argues that there could be no bad faith exploitation of a mark because, in fact, the Complainant has asserted no trademark confusingly similar to “eternal fleur”.

The Respondent further seeks a finding of Reverse Domain Name Hijacking, arguing that the Complainant’s counsel should have been aware that the Complaint was factually and legally deficient.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

A. Identical or Confusingly Similar

The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the disputed domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. As in most cases, the generic Top-Level Domain (“gTLD”) “.com” is not a distinguishing feature. See WIPO Overview 3.0, section 1.11. Priority in time is not a concern for this element of the Complaint, as it may be for the second and third elements; it is sufficient that a complainant currently has rights in a relevant trademark or service mark.

Here, the Complainant holds registered ETERNITY trademarks, but the issue is whether the Domain Name <eternalfleur.com> is, in fact, confusingly similar with that mark. The mark consists of one English noun, and the Domain Name is comprised of two different words, the related English adjective “eternal” and the French noun “fleur” (flower). “Eternity” itself is not a term that is uniquely related to the Complainant, and words related to “eternity” do not lead one inevitably to think of the Complainant. It is a recently registered trademark based on a dictionary word that relates to a great many things (mostly religious and philosophical) other than preserved flowers. The Complainant’s own website does not use a domain name with “eternity” or “eternal” in the string, reducing the likelihood of confusion for Internet users. The Complainant points to similarities between the parties’ websites and commercial offerings, but this Panel follows the consensus approach in making a straightforward comparison of the trademark and the Domain Name in assessing confusing similarity under the first element, as those appear to the Internet user before examining any associated websites. See WIPO Overview 3.0, section 1.15.

Both parties use the French word “fleur” in their company names, and the Respondent accordingly uses it in the Domain Name. But the Complainant has not claimed in this proceeding a trademark including the word “fleur” or “flower”. The question before us is assessing confusing similarity with a mark, and the only asserted mark is ETERNITY. The Complainant argues that some Internet users will be misled because they will believe that “eternal” refers to the ETERNITY mark, and the Complainant argues further that “fleur” is a generic addition in the Domain Name that does not avoid confusion, citing cases that disregard generic additions to trademarks incorporated in disputed domain names. The problem is that the Domain Name here, unlike the cases cited by the Complainant, does not incorporate the mark in question but rather adds a generic term to a different word. The Panel is simply not persuaded that the dictionary word “eternity” is so uniquely associated with the Complainant that the different dictionary word “eternal” should be treated as confusingly similar for UDRP purposes.

Accordingly, the Panel concludes that the Complaint fails on the first element.

B. Rights or Legitimate Interests

Because of its conclusion on the first element of the Complaint, the majority of the Panel finds it is not necessary to enter a conclusion on the second element.

C. Registered and Used in Bad Faith

Again, after disposing of the Complaint on the first element, the majority of the Panel finds that it need not reach a conclusion on the third element, bad faith.

D. Reverse Domain Name Hijacking

Paragraph 15(e) of the UDRP Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking (‘RDNH’) or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. The Respondent has requested such a finding in this proceeding.

Reverse Domain Name Hijacking is defined under the UDRP Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Mere lack of success of a complaint is not sufficient to find Reverse Domain Name Hijacking. See WIPO Overview 3.0, section 4.16. A finding of RDNH is compelling, for example, when a panel finds that the complainant (especially one represented by counsel) should have recognized that it could not succeed on one of the three elements of the complaint under any fair interpretation of the available facts or brings a complaint based “on only the barest of allegations without any supporting evidence” (id.).

The majority of the Panel declines to enter such a finding here. The Complaint was problematic (on each of the three elements, actually, given the Respondent’s business name and the timing of the Complainant’s trademark registration), but the majority of the Panel does not find evidence sufficient to conclude that it was brought with an intent to abuse or harass.

7. Decision

For the foregoing reasons, the Complaint is denied.

W. Scott Blackmer
Presiding Panelist

Jeffrey M. Samuels
Panelist (Concurring)

The Hon Neil Brown Q.C.
Panelist (Concurring)
Date: October 31, 2018

Concurring Opinion

I concur in the view that the Complainant is not entitled to relief because, based on a side-by-side comparison, the Domain Name is not confusingly similar to Complainant’s mark. See WIPO Overview 3.0, section 1.7. Inasmuch as the Complainant has failed to sustain its burden on this threshold standing requirement, I would decline to address elements 2 and 3 of the Policy. I note, however, with respect to the issue of bad faith registration and use, that while the evidence does not establish that the Complainant possessed trademark rights at the time the Respondent registered the Domain Name, and such fact normally precludes a finding of bad faith, there are exceptions to this general principle. See WIPO Overview 3.0, Section 3.8.2. While I decline to reach the issue of bad faith registration and use, my reading of the file persuades me that Complainant did not file the Complaint in bad faith. Thus, I do not believe this case warrants a finding of reverse domain name hijacking.

Jeffrey M. Samuels
Panelist (Concurring)

Separate Opinion Concurring in the Result but Differing from the Majority on Rights and Legitimate Interests, Bad Faith and Reverse Domain Name Hijacking

Introduction

This panelist is part of the decision of the Panel that the Domain Name is not identical or confusingly similar to the Complainant’s ETERNITY trademark and he has nothing further to add on that specific issue.

However, Panelist Brown is also of the opinion that the Panel should make a decision on the issues of Rights and Legitimate Interests and Bad Faith. Parties go to a great deal of time and trouble in tendering evidence and advancing arguments on the three elements and they are entitled to have a reasoned decision from a panel on those issues unless there is a good reason to the contrary.

Panelist Brown is also of the opinion that there should be a finding of Reverse Domain Name Hijacking.

Rights and Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:

(i) before any notice to it of the dispute, 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; or

(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or

(iii) the 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.

Before notice of this dispute, the Respondent established a New York limited liability company with a name corresponding to the Domain Name; that is to say, the Respondent’s company was and is Eternal Fleur, LLC which was registered in New York on August 3, 2017. The Domain Name is of course <eternalfleur.com>, so the Domain Name simply mirrors the company name. The Respondent has been using the Domain Name for the company’s business advertising and selling preserved roses and related goods and services since the company was founded.

On the facts as they are known, it seems to this panelist beyond argument that there are at least three reasons why the Respondent has a right or legitimate interest in the Domain Name. First, apart from any right derived from the literal terms of the Policy, the Respondent has done no more than register a domain name that is the same as its company name. To deny it a right to do so, goes a long way and is hard to justify in the absence of an express provision in the Policy.

Secondly, the Respondent’s situation, like that of the fortunate Mr. A. R. Mani in G. A. Modefine S.A. v. A.R. Mani, WIPO Case No. D2001-0537, where the trademark was ARMANI and the domain name <armani.com> is one that comes squarely within the provisions of the Policy because the respondent was commonly known as A. R. Mani, just as the Respondent in the present case must have been commonly known as Eternal Fleur as there was no other name by which it could have been known. That being so, the learned panelist in Armani was able to say: “This is therefore not a case of the type sometimes encountered, where an opportunistic registrant adopts a name which is intended to give a spurious air of legitimacy to an otherwise questionable registration”. Indeed the panelist was also able to say that bringing the case was “an abuse of the administrative proceeding.”

Thirdly, the Domain Name is clearly a generic description of the goods and services of the Respondent and was used for selling goods and services coming within that genus. Nor was the right conferred by that situation negated by targeting, when the Complainant’s trademark was as descriptive as ETERNITY. In any event, the Respondent could not have targeted the Complainant’s trademark on July 11, 2017, when it registered the domain name as the Complainant had no trademark to target on that date: see the similar fact situation and the similar result in BrightSign LLC v. Administrator, Domain / Vertical Axis, Inc, FORUM Claim Number: FA1103001379395.

For these reasons there should be a finding that the Respondent has a right or legitimate interest in the Domain Name.

Bad Faith

The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Complainant alleges, and the Respondent does not deny, that the Respondent was aware of the Complainant’s business in 2015 and certainly in July 2017, when the Respondent formed a company, started its own similar business, and registered the Domain Name. There is no question that the Respondent competes with the Complainant. Their products are similar. They are both in New York City, and they both sell online and ship to other locations as well. Like other purveyors of preserved flowers, they use “eternity” or “eternal” to describe roses that do not wilt in days, although their methods presumably differ. The Respondent echoes the Complainant in assuming French elegance by referring to flowers as “fleurs”. The Respondent may have deliberately chosen “fleur” because consumers are familiar with the Complainant’s name, but the Complainant has not asserted or sought to prove any relevant trademark rights involving that word as it could have. It might be alleged that the Respondent’s practices amount to trademark infringement or unfair trade practices. On the other hand it might be argued that the Complainant was primarily agitated by the tactics of a new competitor. Both contingencies, are beyond the scope of a UDRP proceeding and would have to be argued out in a different venue.
Instead, the Panel must decide whether the Respondent intended in bad faith to exploit the Complainant’s claimed ETERNITY trademark at the time the Respondent registered the Domain Name on July 11, 2017. According to the USPTO database, this was months before the Complainant applied for trademark registration in December 2017, and a full year before the trademark was registered. The Complainant relies wholly on the fact that its trademark application claims first use in commerce on November 9, 2015, a claim that was not examined and for which proof was not presented in this UDRP proceeding. The Complaint does not assert that ETERNITY acquired distinctiveness as a common law mark prior to registration and does not include evidence of sales, advertising, media recognition, or other necessary support for such a claim.

Thus, there are two serious deficiencies with the Complainant’s argument. First, the Domain Name differs substantially from the Complainant’s ETERNITY trademark, which is not highly distinctive in the first place. Secondly, the Complainant did not have a registered ETERNITY trademark at the time the Domain Name was registered, and the Complainant has not furnished evidence that the mark, consisting of a single dictionary word, had acquired secondary meaning sufficient to attract common law protection as a trademark by July 2017 when the Domain Name was registered. The Respondent could not be found to have acted in bad faith within the meaning of the Policy by exploiting the Complainant’s trademark, unless the Complainant established in this proceeding that it possessed a relevant trademark at that time which it has not done. There has therefore been no registration in bad faith and the Complainant has thus not met its burden on this, the third element of the Complaint.

Reverse Domain Name Hijacking

Paragraph 15(e) of the UDRP Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking (‘RDNH’) or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. The Respondent has requested such a finding in this proceeding. Reverse Domain Name Hijacking is defined under the UDRP Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Mere lack of success of a complaint is not sufficient to find Reverse Domain Name Hijacking. However, a finding of RDNH is compelling, for example, when a panel finds that the complainant (especially one represented by counsel) should have recognized that it could not succeed on one of the three elements of the complaint under any fair interpretation of the available facts or brings a complaint based only on assertions with no evidence. The Complainant here should at the least have been aware, for example, that it is problematic to assert bad faith when the only trademark presented was registered a year after the Domain Name registration, without offering evidence of prior common law rights. This panelist has on occasion gone further and ruled that it is wrong for a complainant to allege bad faith unless it believes on reasonable grounds that it can make out that very serious allegation. Accordingly, for these reasons this panelist would find that the filing of the Complaint in this proceeding represents an attempt at Reverse Domain Name Hijacking.

The Honourable Neil Anthony Brown QC
Panelist (Concurring)


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