The Complainant is Hebe.com.au Pty Ltd of Adelaide, Australia, represented by Piper Alderman, Australia.
The Respondents are WHOIS AGENT of Kirkland, Washington, United States of America (“United States”) / DOMAIN ADMIN of Hong Kong, China, internally represented / READY FLOWERS LIMITED of Hong Kong, China, internally represented.
The disputed domain name <easyflowers.com> (the “Disputed Domain Name”) is registered with eNom, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on May 10, 2018. On May 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 14, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 22, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 27, 2018. On May 30, 2018, the Complainant filed a second amended Complaint to address an administrative formality.
The Center verified that the Complaint together with the amended 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 May 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 19, 2018. The Response was filed with the Center on June 19, 2018.
On July 6, 2018, the Complainant filed an unsolicited Supplemental Filing which comprised a third amended version of the Complaint (the “Third Amended Complaint”).
The Center appointed Nick J. Gardner, Desmond J. Ryan, and Jacob (Changjie) Chen as panelists in this matter on July 9, 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.
For reasons discussed below the Panel will admit the Third Amended Complaint. The factual background set out below is derived from that document and the Response. It includes matters which were also present in the Complaint and the first and second Amended Complaint and which the Respondent has not disputed.
The Complainant is an Australian company. It operates an on-line floristry business supplying flowers in Australia. It does so as an intermediary whereby customers place orders on its website and it arranges for those orders to be fulfilled by one of a network of local florists. It has done so since 2002. Its business operates through a website located at “www.easyflowers.com.au” (the “Complainant’s Website”). It owns several Australian registered trademarks the most relevant of which is No. 978508 for the word easyflowers registered with a priority date of November 17, 2003 (the “Easyflowers Trademark”). The filed evidence establishes that the Complainant’s business is popular and successful in Australia. By way of example in February 2018, the Complainant’s Website received 1.2 million page views.
The Disputed Domain Name was originally registered on August 9, 2000 by a third party. The evidence before the Panel indicates it was not used by that third party save that it was linked to a webpage with automatically generated pay-per-click (“PPC”) links. The Respondent acquired the Disputed Domain in 2016. As of February 6, 2018 it was linked to a website offering flowers for sale (the “Respondent’s Website”). The URL for that website automatically redirected to a particular page within the website which was aimed at Australia (in that prices were in Australian dollars and it offered to supply to addresses in Australia).
The Complainant’s contentions can be summarized as follows.
The Disputed Domain Name is identical or similar to the Easyflowers Trademark.
The Respondent has no rights or legitimate interests in the term “Easyflowers” or the Easyflowers Trademark.
The Disputed Domain Name has been registered and is being used in bad faith. The Complainant’s case in this regard involves the consideration of some detailed evidence. Its fundamental allegation is that the Respondent’s Website was similar to the Complainant’s Website and given that the Disputed Domain Name is identical (apart from suffixes) to the Complainant’s Easyflowers Trademark and the Complainant’s Domain Name this was inevitably confusing to customers. The Complainant alleges that this was a deliberate attempt by whoever was operating the Respondent’s Website (as to which see below) to confuse customers. It also alleges that the Disputed Domain Name was registered with the intention of selling it to the Complainant for an amount exceeding the registrant’s out of pocket costs.
The Complainant’s case is complex in relation to the issue of who registered the Disputed Domain Name and was operating the Respondent’s Website. The relevant WhoIs details available to the Complainant prior to the Complaint being filed merely indicated a privacy service as registrant of the Disputed Domain Name so the Complainant did not know who the actual registrant was. The following is a summary of the Complainant’s case.
The Complainant initially asserted that the Respondent’s Website was being operated by an Australian company called Globe Valley Pty Ltd (“Globe Valley”). It did so because the terms and conditions on the Respondent’s Website as at February 5, 2018 commenced with: “Acceptance of these terms and conditions is a condition of ordering from Globe Valley Pty t/a EasyFlowers.com located at [address] Western Australia and is your acknowledgement that you have read, understood and agreed to be bound by them.”
It also alleged that Globe Valley has, since 2016, hosted a floristry and flower delivery service trading by the name “Z Flowers” via a website hosted at the domain name “www.zflowers.com.au“ (the “Zflowers Website”). The Complainant filed evidence which it says shows that the Respondent’s Website and the Zflowers Website were very similar indeed.
On February 9, 2018 the Complainant’s legal advisers sent a cease and desist letter to Globe Valley. This produced a reply dated March 12, 2018 from a Peter Hegarty, who is the sole director of Globe Valley. This reply included the following passages:
“Globe Valley has a contractual arrangement with an overseas company to supply Services such as Customer Support and Transaction Processing. If you review our website http://www.globevalley.com/ you will be able to discern the many digital and support services offered. You will also see, using a tool like http://www.wayback.com/, that the GVPL website has not changed significantly in more than 8 years. Meaning these service have been available to many customers, including the flower industry, for many years. See ATTACHMENT 1.
As I was aware of your clients (sic) position in Australia, I agreed to provide these services to www.easyflowers.com, providing that there was no delivery in your clients (sic) domain, which I understand is Australia. Immediately after receiving your letter, I again tested the site www.easyflowers.com to be reassured and found that there was no option for delivering flowers to Australia. In the due diligence process for taking on support for this domain, I research the case, The Crown in Right of the State of Tasmania trading as “Tourism Tasmania” v James Gordon Craven, WIPO Case No. DAU2003-0001 (16 April 2003) where “confusing similarity” was tested and satisfied myself that www.easyflowers.com does not breach your clients (sic) trademark in Australia.
I also did some further investigations and found 2 sites operating with easyflowers in their domain name (see ATTACHMENT 2):
- easyflowers.co.in
- easyflowers.ca (which redirects to www.donbelverdereflorist.com)”
The Complainant alleges that if the Respondent is not Globe Valley, the true Registrant/Respondent has authorised Globe Valley to use the Disputed Domain Name to engage in intentional and deceptive conduct. It filed the original complaint against the named Privacy service shown on the WhoIs details. As is commonplace, once the Complaint was served the Registrar disclosed details of a substantive registrant and the Complainant filed an amended complaint directed at that entity. The substantive registrant was not however a legal entity but simply described itself as “domain admin” with an address in Hong Kong. However when the Response was filed, that identified a legal entity as the registrant of the domain name, namely a Hong Kong company called “Ready Flowers Limited”.
The Complainant alleges that Ready Flowers Limited and Globe Valley are under the common control of members of the Hegarty family (see further below) and are engaged in a common venture with regard to the Disputed Domain Name and that if the Respondent is not Globe Valley, the true Registrant, namely Ready Flowers Limited, has authorised Globe Valley to use the Disputed Domain Name to engage in intentional and deceptive conduct. Further details of the relevant evidence in this regard are discussed below.
The Complaint also relies upon an email exchange which took place shortly after the correspondence described above. This exchange was between Thomas Hegarty and Jason Squire (using an “easyflowers.com.au” email address) and was as follows:
On April 13, 2018, Thomas Hegarty email to the Complainant:
“Hi Jason,
Been quite a while since we last spoke.
Just a quick one ... I recently became aware that you may be interested in the aquisition (sic) of the easyflowers.com domain. If you are, let me know as I believe I can get it for you? Kind Regards Tom”
On April 17, 2018 the Complainant responded to this email:
“Hi Tom,
Yes I would be keen to have the easyflowers.com domain name. How much will you sell it for?
I gather that it would generally only cost about $300 to register. Please let me know ASAP.”
On April 17, 2018, Thomas Hegarty responded by email:
“Hi Jason,
It seems we are poles apart in terms of a realistic valuation.
For now, I don’t believe it’s our worth our time persuing (sic) it any further. Cheers Tom”
The Response is filed by Ready Flowers Limited, a Hong Kong company. It states that its
authorized representative in this administrative proceeding is Thomas Hegarty with an address in Hong Kong.
The Response asserts as follows: “Ready Flowers Limited has been operating as a worldwide flowers and gifts delivery service since 2005. The Respondent is incorporated in Hong Kong and has served over 1,000,000 customers in 90 countries utilizing several different website brands.” It says it acquired the Disputed Domain Name on May 26, 2015 and that “once acquired, development of the new global Easy Flowers brand commenced and was officially launched sometime in 2017 offering a bona fide offering of goods or services”. It says “within the Hong Kong and South East Asian markets, Ready Flowers Limited and the EasyFlowers.com brand are commonly known even though Ready Flowers Limited has not obtained a trademark or service mark rights”. It states that the Complainant’s rights only apply in Australia and says that “Upon becoming aware of the Australian registered trademark of the Complainant for a similar service of goods and services to the Australian market, the /au/ page on easyflowers.com was re-directed to /nz/ as an act of good faith and any customers from outside Australia were disabled from shopping for goods into Australia”.
So far as Globe Valley is concerned it says as follows “The Complainant alleges that Globe Valley is Associated with and/or is the entity controlling the website, however, this is in fact incorrect. Glove [sic] Valley provides transaction processing and customer service services to Ready Flowers Limited but does not have any interest in the business other than a contractual arrangement for performing the aforementioned services”. It also says: “The Complainants [sic] reference to a response letter from representatives of Globe Valley is irrelevant as Globe Valley and it’s [sic] representatives do not represent the Respondent. Also, under no circumstances has The Respondent authorized any other party to engage in intentional and/or deceptive conduct.”
In summary the Response asserts that the Respondent is a bona fide business operating internationally, and once it became aware of the Complainant’s rights in Australia it ceased directing its business towards that country.
The Panel will admit the Third Amended Complaint. The only substantive difference in it is identification of Ready Flowers Limited as the Respondent together with associated corporate details. This company was only identified in the Response and the Complainant could not have known of this company prior to seeing the Response. In any event the Response itself asserts this company is the proper Respondent. The Panel does not consider it necessary to invite the Respondent to file an amended response. This is because (a) the Third Amended Complaint does not introduce any new substantive allegations; and (b) in any event the Respondent has been provided with the Third Amended Complaint and had ample time to file any further material and/or object to the introduction of the Third Amended Complaint had it wished to.
It follows that this is a case where the first Respondent (“WHOIS AGENT”) appears to be a privacy or proxy registration service while the third Respondent (Ready Flowers Limited) appears to be the substantive Respondent (and the second Respondent “Domain Admin” would appear to simply be how Ready Flowers Limited described itself when registering the Disputed Domain Name). The Panel takes the view that in this case it is clear that Ready Flowers Limited is the substantive Respondent and references in this decision to “the Respondent” are to that company.
To succeed in these proceedings the Complainant must make out its case under paragraph 4(a) of the Policy. Namely, the Complainant must prove in respect of the Disputed Domain Name that:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name (paragraph 4(a)(ii)); and
(iii) the Disputed Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
The Panel finds that the Complainant has rights in the Easyflowers Trademark. The Respondent is correct that those registered rights are confined to Australia but that does not matter here.
It is well established that the generic Top-Level Domain (“gTLD”) suffix “.com”, as in this case, is not generally taken into account for the purpose of determining whether a domain name is identical or confusingly similar to a trademark. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000 0429.
Accordingly the Panel finds that the Disputed Domain Name is identical to the Complainant’s Trademark and the first condition of paragraph 4(a) of the Policy has been fulfilled.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to the Respondent of the dispute, 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) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial 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.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the Easyflowers Trademark. The Complainant has prior rights in the Easyflowers Trademark which precede the Respondent’s acquisition of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Respondent asserts that (i) applies. It may also be asserting that (ii) is applicable although the Response is not entirely clear on this point. If it is, the Panel discounts (ii) as no evidence has been adduced by the Respondent to support such a case. So far as (i) is concerned, the Panel considers this turns on whether the Respondent’s action in setting up the Respondent’s Website were bona fide.
Assessment of this issue involves an evaluation of the detailed arguments advanced by the Complainant as to those involved with the Respondent’s Website. This is not straightforward. The Complainant understandably (given the applicable terms and conditions – see above) originally formed the view that the Respondent’s Website was being operated by Globe Valley.
It would seem that the Complaint and Globe Valley are known to each other prior to the events described in this decision – the Complaint states, rather cryptically, “Since about 2005, the Complainant has had email and telephone contact with representatives of Globe Valley from time to time in the course of normal florist business”. It would also seem from the email exchange set out above that Jason Squire of the Complainant and Thomas Hegarty know each other. The Panel has not been provided with any further information about this background and accordingly discounts it.
The Complainant has gone into considerable detail (in terms of company records, addresses, dates of birth and so on) to establish that Thomas Hegarty (who is the author of the emails set out above, and the named representative of the Respondent), is the son of Peter Hegarty. In summary Peter Hegarty is a director of, and acts on behalf of, Globe Valley. Evidence filed by the Complainant derived from Australian corporate records shows that Thomas Hegarty was a director of Globe Valley from February 2001 to August 2010 and resides at the same address in Western Australia as Peter Hegarty. The Complainant infers from the fact that Thomas Hegarty’s date of birth is 25 years after Peter Hegarty’s date of birth that they are father and son. Rather surprisingly the Response has not addressed this evidence at all and the Panel therefore accepts as accurate the matters the Complainant has set out in this regard. The Panel does not therefore consider it necessary to go through the substantial detail of all the evidence in question. It is however convenient to reproduce the following information about domain names and companies associated with the Hegarty family which was set out in the Complaint:
|
Domain Name |
Registrant |
Directors |
|
easyflowers.com
|
Ready Flowers Limited (of Hong Kong)
|
Director: Thomas Ross Hegarty Former Directors: Deborah Hegarty Peter Ross Hegarty
|
|
readyflowers.com.hk
|
Ready Flowers Limited (of Hong Kong) Contact listed: Ready Flowers Pty Ltd (of Australia)
|
Director: Thomas Ross Hegarty (Directors of Ready Flowers Pty Ltd: Deborah Hegarty Peter Ross Hegarty)
|
|
zflowers.com
|
Registrant Information Hidden Entity on Website: Globe Valley Pty Ltd (of Australia)
|
Director (of Globe Valley Pty Ltd (of Australia)): Peter Ross Hegarty Former Directors: Deborah Hegarty Thomas Ross Hegarty
|
|
zflowers.com.au
|
Globe Valley Pty Ltd (of Australia)
|
Director: Peter Ross Hegarty Former Directors: Deborah Hegarty Thomas Ross Hegarty
|
The Respondent has not sought to challenge this evidence – indeed rather surprisingly it has not even commented upon it. In these circumstances the Panel accepts the submission by the Complainant that all these companies, and the domain names and websites associated with them, are under the common control of members of the Hegarty family including in particular Peter and Thomas Hegarty.
The Panel notes the following.
The Respondent’s Website’s terms and conditions clearly indicated that the relevant party offering flowers for sale was Globe Valley, trading as easyflowers.com.
Pater Hegarty’s reply on behalf of Globe Valley to the Complaint’s cease and desist letter seems disingenuous at best in suggesting that it was acting for an (unidentified) overseas company, given that company is controlled by him and/or his son.
The same letter clearly indicates that Peter Hegarty was familiar with the Complainant and its rights in Australia, stating: “As I was aware of your clients [sic] position in Australia, I agreed to provide these services to www.easyflowers.com, providing that there was no delivery in your clients [sic] domain, which I understand is Australia. Immediately after receiving your letter, I again tested the site www.easyflowers.com to be reassured and found that there was no option for delivering flowers to Australia.” This statement is misleading – quite clearly prior to the cease and desist letter the Respondent’s Website was directed at Australia and was only changed after the letter had been received. Mr. Hegarty must have known this was the case.
The same letter also states that “If your client is interested in obtaining ownership of the domain name www.easyflowers.com, I am sure I could arrange a discussion with the owner”.
Approximately one month later the email exchange (set out above) took place in which Thomas Hegarty clearly seeks to encourage the Complainant to make an offer to buy the Disputed Domain Name. The Panel infers that this was a result of Peter Hegarty and Thomas Hegarty discussing the correspondence from the Complainant.
Ready Flowers Pty Ltd (of Australia) another company associated with the Hegarty family (see above) was wound up on April 26, 2017. Following the winding up of Ready Flowers Pty Ltd, the Respondent began hosting identical websites promoting floristry and flower delivery services from related websites, including at ‘www.easyflowers.com’, ‘www.zflowers.com’ and ‘www.readyflowers.com’.
Having established this background it is then necessary to consider the Respondent’s Website and its contents. Once again a large amount of detailed evidence has been filed. The Respondent has not made any attempt to dispute this evidence and accordingly the Panel does not consider it necessary to go through it in great detail. In summary the Panel is satisfied that the following is the position.
As at February 6, 2018 the Respondent’s Website contained a page directed at Australia and which was broadly similar in nature to the Complainant’s Website and which offered substantially the same services as those offered by the Complainant. It was also substantially the same as the Zflowers Website in most respects. As the Panel understands it the URL for the Respondent’s Website would redirect to this particular page. It is clearly aimed at Australian customers (for example, it contains a reference in the center of the website to “Flowers Australia”; mentions a customer in Park Ridge, Queensland purchasing flowers; refers at the bottom of the website “Delivery Country: Australia”; and is priced in Australian dollars).
As at March 28, 2018 (i.e., after receipt of the Complainant’s cease and desist letter) the Respondent’s Website no longer redirected to the page described above but instead redirected to a page directed at New Zealand.
As of the date of this decision the Disputed Domain Name does not resolve to any active webpage.
The Respondent is also the registrant of readyflowers.com. That domain name redirects to the Zflowers Website.
On the evidence before the Panel it seems clear that the Respondent acquired the Disputed Domain Name and commenced using it when it knew of the Complainant and its successful Australian business and when it must have appreciated its use, directed at Australia, was likely to be confusing. There is no evidence at all from the Respondent directed at the connection between the Respondent and Globe Valley and the grouping of companies and websites all associated with the Hegarty family (see above). In the absence of such evidence the Panel accepts the Complainant’s case that it is to be inferred that the Respondent had the knowledge which Peter Hegarty had as to the Complainant and its business (see his letter – above). The Panel also accepts the Complainant’s case that the Respondent had in mind selling the Disputed Domain Name to the Complainant for a price exceeding its out of pocket acquisition costs – that is to be inferred by the letter from Peter Hegarty suggesting he could take steps to see if the Disputed Domain Name was available, and the e mail exchange with Thomas Hegarty (above) where he was clearly seeking a substantial offer for the Disputed Domain Name. Again, the Panel accepts the inferences the Complainant says should be drawn from this correspondence given the complete failure of the Respondent to comment upon it.
All of this establishes, so far as the Panel is concerned, a lack of “bona fides” by the Respondent. It clearly supports the Complainant’s case that the Respondent’s intentions were to establish a website which confused customers into thinking it was that of the Complainant and/or to sell the Disputed Domain Name to the Complainant for a substantial price. The Respondent counters this by asserting that “within the Hong Kong and South East Asian markets, Ready Flowers Limited and the EasyFlowers.com brand are commonly known even though Ready Flowers Limited has not obtained a trademark or service mark rights”. Whether the Respondent is commonly known as “Ready Flowers Limited” is irrelevant. Whether the “easyflowers” brand is “commonly known” is the relevant issue. This is a conclusory assertion unsupported by any evidence of any kind. Given the relevant background (above) and the lack of candour in the correspondence that took place (see above), and the Respondent’s absolute silence on all of the matters raised by the Complainant, the Panel attaches no weight to such an unsupported statement and does not accept it.
Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
The Panel does not consider that the Respondent’s registration and use of the Disputed Domain Name was in good faith. It seems to the Panel for the reasons set out in Section B above that the Respondent registered the Disputed Domain Name in order to establish a website which confused customers into thinking it was that of the Complainant and/or to sell the Disputed Domain Name to the Respondent for a substantial price. Either of these activities is, under these circumstances, sufficient to support a finding of registration and use in bad faith (see below).
Specifically under paragraph 4b of the Policy evidence of registration and use in bad faith is established by:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
The relevant facts establish that in the Panel’s opinion (i) and (iv) apply.
For completeness the Panel would note that it has considered the further points made in Peter Hegarty’s letter of March 12, 2018 seeking to justify use of the Disputed Domain Name. The case he mentions (The Crown in Right of the State of Tasmania trading as “Tourism Tasmania” v. James Gordon Craven, WIPO Case No. DAU2003-0001) is directed at an entirely different issue and is irrelevant. The fact that unconnected third parties may use domain names comprising the term “easyflowers” in other jurisdictions is also irrelevant – it is quite clear that both the Complainant and the Respondent were concerned with business in Australia and that the Respondent had in mind the Complainant’s business when it registered the Disputed Domain Name and established the Respondent’s Website.
Accordingly the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <easyflowers.com> be transferred to the Complainant.
Nick J. Gardner
Presiding Panelist
Desmond J. Ryan
Panelist
Jacob (Changjie) Chen
Panelist
Date: July 30, 2018