WIPO 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 ESQ PC, United States. 2. The Domain Name and Registrar

The disputed domain name (the “Domain Name”) is registered with GoD, 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 “”, 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 “”. 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