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Fresh Intellectual Properties Inc. v. Sweets and Treats , British Columbia International Commercial Arbitration Centre, CIRA Dispute No. 00033 - by Eric Macramalla

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Domain Name: 1800flowers.ca
OutCome: Transfer Granted
Response Filed: No
Panellist: Barry C. Effler

The Complainant was the registered owner of the Canadian trade-marks 1-800-FLOWERS & Design and 800-FLOWERS. Both marks were licensed to its affiliate, 1-800-Flowers.com, Inc., who had provided floral delivery services in Canada since 1988. The Complainant and its licensees provided this service through the Internet at 1800flowers.com. 1-800-Flowers.com, Inc. was also the registered owner of the 1-800-flowers.ca, 800flowers.ca and 800-flowers.ca domain names, which all redirected Internet users to the 1800flowers.com website.

The Registrant did not file a Response to the Complaint, and accordingly the Complainant elected as per Rule 6(5) of the CIRA Domain Name Dispute Resolution Rules to reduce the three member Panel to a single member Panel.

Under the CIRA Domain Name Dispute Resolution Policy ("CDRP"), a successful Complainant must establish that the disputed domain name is confusingly similar with a mark in which it had rights, that the name was registered in bad faith and that the Registrant does not have a legitimate interest in the domain name.

The Panel held that the disputed domain name was confusingly similar to the Complainant's marks, in which it has rights prior to the date of domain name registration. It is well established that the presence of punctuation marks and the dot-ca suffix are not relevant to the confusion analysis.

The Panel next considered the issue of bad faith registration. The domain name resolved to a customized portal, which provided links to various other sites, some of which were operated by the Complainant's competitors. Given the significant goodwill associated with the Complainant's marks, the Panel stated that it was reasonable to assume that Internet users would associate 1800flowers.ca with the Complainant. Thus the Registrant was attempting to benefit from the goodwill associated with the Complainant's marks. The Panel held that the Registrant's diversion of Internet traffic to the Complainant's competitors was clearly disruptive and supported a finding of bad faith registration.

Concerning legitimate interest in the domain name, the Panel was unable to find that the Registrant met any of the criteria under paragraph 3.6 of the CDRP. Accordingly, it held that the Registrant had no legitimate interest in the disputed domain name.

Given the finding of confusing similarity, bad faith registration and the absence of a legitimate interest, the Panel ordered the 1800flowers.ca domain name transferred to the Complainant.

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