WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Florida Department of Management Services v. Domain Park Limited
Case No. D2007-1587
1. The Parties
The Complainant is Florida Department of Management Services, United States of America, represented internally.
The Respondent is Domain Park Limited, located in Samoa and Germany.
2. The Domain Names and Registrars
The disputed domain names <myglorida.com> <myhflorida.com>, <vendormyfloridamarketplace.com> are registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2007. On October 29, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On October 31, 2007, Moniker Online Services, LLC transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an Amendment to the Complaint on November 7, 2007. 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 8, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 28, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2007.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on December 6, 2007. The Panel finds that it was properly constituted. 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
The Complainant is the Florida Department of Management Services, an administrative agency of the State of Florida.
The Complainant is the owner of the following trademark registrations, registered with the United States Patent and Trademark Office (“USPTO”):
- MY MYFLORIDA.COM, filed on September 12, 2000, registered on June 10, 2003, under registration number 2723083;
- MYFLORIDA.COM, filed on September 12, 2000, registered on June 10, 2003, under registration number 2723081;
- MYFLORIDA, filed on September 12, 2000, registered on June 3, 2003, under registration number 2720387;
- FLORIDA MARKET PLACE, filed on September 25, 2003, registered on May 30, 2006, under registration number 3097056.
Under the domain name <myflorida.com>, the Complainant operates a website that serves as the State of Florida’s official portal and a gateway to the State of Florida’s electronic resources.
The Complainant also registered the domain name <myfloridamarketplace.com>, which domain name resolves to a website that automates the State of Florida’s order, approval, invoicing and payment process. Vendors offering their products and services to the State Government of Florida can register themselves at <vendor.myfloridamarketplace.com>.
The Respondent is the holder of the following domain names:
- <yglorida.com>, registered on August 4, 2007;
- <endormyfloridamarketplace.com>, registered on August 5, 2007;
- <yhflorida.com>, registered on February 22, 2007.
5. Parties’ Contentions
Identical or confusingly similar
The Complainant contends that its trademarks MYFLORIDA and MYFLORIDAMARKETPLACE are well known.
The Complainant further contends that the disputed domain names are confusingly similar to Complainant’s mark MYFLORIDA and MYFLORIDAMARKETPLACE.
According to the Complainant, the disputed domain names <myglorida.com> and <myhflorida.com> are examples of so-called typosquatting. Further, the disputed domain name <vendormyfloridamarketplace.com> fully incorporates the Complainant’s trademark MYFLORIDAMARKETPLACE, with the addition of the generic word “vendor”.
Rights or Legitimate Interests
The Complainant contends that the Respondent is not commonly known by the disputed domain names. Furthermore, the use of the disputed domain names is neither in connection with a bona fide offering of goods or services, nor in connection with a legitimate noncommercial fair use.
Registered and Used in Bad Faith
The Complainant contends that the disputed domain names are registered and used in bad faith.
According to the Complainant, the Respondent has engaged in a pattern of bad faith registrations. The Complainant contends that the Respondent offered to sell the domain names <vendormyfloridamarketplace.com> and <myglorida.com>. The Complainant has submitted e-mails from domainparkltd@[email address], offering to sell the domain name <vendormyflordiamarketplace.com> to Complainant for 150USD and offering to sell the domain name <myglorida.com> for 250USD, both in response to a ‘cease and desist’-letter from the Florida Department of Management Services. Furthermore, the Complainant submits print-outs of the online auction website “www.sedo.com”, demonstrating that all disputed domain names are being offered for sale.
The Complainant also contends that the disputed domain names <myglorida.com> and <myhflorida.com> are examples of so-called typosquatting, which in itself constitutes bad faith.
According to the Complainant, the websites “www.myhflorida.com” and “www.vendormyfloridamarketplace.com” feature a hyperlink to the escort website “www.wife-escorts.com”, which tarnishes the State’s trademarks and constitutes bad faith.
The Complainant contends that the Respondent is a serial cyber-squatter, and cites eleven other domain name disputes involving Domain Park Limited, the Respondent in this dispute.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has submitted print-outs from the Trademark Electronic Search System (TESS) of the USPTO, demonstrating that the Complainant’s trademarks are registered and in force.
The disputed domain names <myglorida.com> and <myhflorida.com> are confusingly similar to the Complainant’s trademarks MYFLORIDA.COM and MYFLORIDA, since these domain names only differ one letter from the Complainant’s trademarks.
The disputed domain name <vendormyfloridamarketplace> incorporates the MYFLORIDAMARKETPLACE trademark of the Complainant, preceded by the word “vendor”: This is a generic and non-distinctive term and does not detract from the confusing similarity (see Heidelberger Druckmaschinen AG v. Wayne Graham (Trading) Limited, WIPO Case No. D2006-1131, and the decisions cited therein).
B. Rights or Legitimate Interests
The use of the disputed domain names which are misspellings of the trademarks of the Complainant cannot be considered use in connection with a bona fide offering of goods or services, nor a legitimate noncommercial fair use.
The Panel refers to National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2001-1011, in which case the Panel held:
“Typosquatting (…), as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site. Nor does it constitute a legitimate noncommercial or fair use of the domain name without intent for commercial gain misleadingly to divert consumers.”
The Panel also notes that the websites under the disputed domain names are so-called “landing pages”. Because the disputed domain names infringe on Complainant’s trademarks, this use cannot be considered as “ in connection with a bona fide offering of goods or services, nor a legitimate noncommercial fair use”. (See: Visible Technologies, Inc. v. Navigation Catalyst Systems, Inc. WIPO Case No. D2007-1141, and the cases cited therein.)
Based on the record and in the absence of a rebuttal by the Respondent, the Panel finds that the Complainant has shown that the Respondent does not have a right or a legitimate interest in the disputed domain names.
C. Registered and Used in Bad Faith
For the reasons set out below, the Panel finds that the domain names are registered and used in bad faith.
The Panel finds that the Respondent most likely had prior knowledge of Complainant’s trademarks when registering the disputed domain names.
The Complainant has provided evidence that its trademarks are widely known. This evidence consists of:
- Affidavit from Carl Ford, director of the Florida Division of Motor Vehicles of Highway Safety and Motor Vehicles, stating that the State of Florida has incorporated MYFLORIDA.COM into 13 million Florida license plates for automobiles and motorcycles;
- Affidavit from Joseph Wright, Bureau Chief of the “www.myflorida.com” portal at the State of Florida, Florida Department of Management Services, stating that <myflorida.com> attracts 3 million hits and 150,000 page views per weekday and that the State of Florida has spent USD 594,965 in its most recent fiscal year, 2006-2007, in support of the “www.myflorida.com” portal website;
- Affidavit from Michael Johnston, MyFloridaMarketPlace Operations Manager at the State of Florida, Florida Department of Management Services, stating that the “www.myfloridamarketplace.com” website is currently being used by 31 State of Florida agencies, over 13,000 State of Florida users and over 80,000 vendors.
Even if the trademarks of the Complainant were not well known, the Panel considers the chance that anyone would have registered both the domain names <myhflorida.com> and <myglorida.com>, and the domain name <vendormyfloridamarketplace.com>, without first having prior knowledge of the Complainant’s trademarks MYFLORIDA and MYFLORIDAMARKETPLACE and the Complainant’s websites “www.myflorida.com” and “www.vendor.myfloridamarketplace.com”, neglectable.
Under these circumstances, it can be inferred that the Respondent was aware of the Complainant’s trademarks when registering the disputed domain names.
The Panel finds that there is sufficient evidence that Respondent, by the registration and use of the domain names, attempted to attract internet users for commercial gain to his website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or the products or services on its website, which demonstrates bad faith.
In this respect, the Complainant has submitted print-outs which show that the Respondent uses the disputed domain names for so-called landing pages, with advertising listings and links to various websites, inter alia concerning the state of Florida, but also adult content.
In addition, on the basis of the evidence submitted, the Panel finds that the Respondent offered to sell the disputes domain names for valuable consideration in excess of its out-of-pocket costs, which also demonstrates the Respondent’s bad faith.
Furthermore, in respect of the domain names <myglorida.com> and <myhflorida.com> the Panel agrees with the Complainant that these domain names are an example of typosquatting, which also demonstrates bad faith: The Panel refers in this respect to National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, also cited above, in which case the Panel held:
“Typosquatting, (…), is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”
Finally, as the Respondent has registered three domain names that infringe on different trademarks of the Complainant, the Panel finds that the Respondent has engaged in a pattern of domain name registrations that prevent the Complainant from reflecting its marks in corresponding domain names. Pursuant to paragraph 4(b)(ii) of the Policy, this also demonstrates bad faith.
For the reasons set out above, the Panel finds that the Respondent has registered and uses the disputed domain names in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <myhflorida.com>, <myglorida.com> and <vendormyfloridamarketplace.com> be transferred to the Complainant.
Wolter Wefers Bettink
Dated: December 20, 2007