WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
State of Florida, Florida Department of Management Services v. Bent Pettersen
Case No. D2008-0039
1. The Parties
The Complainant is State of Florida, Florida Department of Management Services, Tallahassee, Florida, United States of America, represented by an internal representative.
The Respondent is Bent Pettersen, Bergen, Norway.
2. The Domain Name and Registrar
The disputed domain name <myflorida.biz> is registered with Blue Razor Domains.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2008. On January 10, 2008, the Center transmitted by email to Blue Razor Domains a request for registrar verification in connection with the domain name at issue. On January 10, 2008, Blue Razor Domains transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 January 14, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 3, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 4, 2008.
The Center appointed James A. Barker as the sole panelist in this matter on February 8, 2008. 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
In the absence of a Response, the following facts are not contested.
The Complainant is an administrative agency of the State of Florida. The Complainant is the owner of registered marks for MYFLORIDA, MYFLORIDA.COM and MY MYFLORIDA.COM. Those marks are registered on the principal register of the United States Patent and Trademark Office.
The Complainant operates its official website at the domain name <myflorida.com>, which was registered by the Complainant in September, 1999. That website was established in 2000. The website is a portal for State-related agencies and services. The website receives an average of 3 million hits and 150,000 pageviews per weekday. It is one of the most frequently visited government websites in the United States of America.
The disputed domain name appears to have been registered by the Respondent on June 1, 2005 (as indicated by the ‘creation date’ in the Whois record). At the date of this decision, the disputed domain name reverts to a ‘portal’ or ‘directory’ website, which appears to be ‘parked’ at “www.sedo.com”. As explained at that website:
“Domain Parking is simple way to earn money from your domains’ natural traffic. If you have registered domain names, but they are not currently being used, then domain parking is a great way to put those domains to work earning you revenue. You can make money without even lifting a finger! The idle domain is used to display relevant advertisements - every time a consumer clicks on one of the advertisements you earn money.”
In other words, the website to which the disputed domain name reverts appears to be comprised of links automatically generated to derive ‘click through’ revenue via the portal website.
In this case, the portal website reverts to a homepage under the title ‘Myflorida.biz’. That page contains the statement (made available in various languages) “Myflorida.biz is your gateway to sites on the Internet for Florida! Browse our resources or just try the search.” Various links are provided, including those grouped as e.g. “Florida”, “Budget Airlines”, “Vacations”, and “Travel”. The Complainant provides evidence that the disputed domain name reverted to much the same website as at January 3, 2008. The look and feel of this website is similar to the standard example of a parking website provided at “www.sedo.com”.
In addition, the Complainant provides evidence that on November 5, 2007, the disputed domain name was made available for sale at “www.sedo.com” at a price of €670.
5. Parties’ Contentions
The Complainant contends that, except for the top-level domain indicator, the disputed domain name is identical to its registered mark MYFLORIDA.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, on the basis that the Complainant has exclusive rights in the MYFLORIDA mark. The Complainant states that the Respondent has used the disputed domain name to capitalize, for commercial gain, on the reputation of its mark.
For similar reasons, the Complainant contends that the disputed domain name was registered and is being used in bad faith. Among other things, the Complainant points to the fact that the disputed domain name has been offered for sale, as evidence of bad faith for the purpose of paragraph 4(b)(i) of the Policy. Paragraph 4(b)(i) provides that there is evidence of bad faith registration and use of a domain name, where there are circumstances indicating that the Respondent acquired the domain name for the purpose of selling it in excess of its direct costs.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that:
(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 was registered and is being used in bad faith.
These issues are discussed as follows.
A. Identical or Confusingly Similar
The Complainant provides evidence of having rights in three marks, which are respectively comprised of the textual elements MYFLORIDA, MYFLORIDA.COM, and MY MYFLORIDA.COM. The Complainant contends that the disputed domain name is identical to the first of these, except for the domain name extension.
It is well-established that the domain name extension is to be disregarded for the purpose of determining identicality or confusing similarity under the Policy. Disregarding that extension, it is clear that the disputed domain name is relevantly identical to the Complainant’s mark.
The Complainant has therefore established this first element.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a disputed domain name:
(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) 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.
The Respondent has provided no information or explanation concerning its activities or motivation for registering and using the disputed domain name. The only evidence in this connection is that provided in the Complaint, and that which is self-evident from the nature of the Respondent’s Whois details and the website to which the disputed domain name refers.
There is no evidence in this case to support a finding that the Respondent has a right or legitimate interest for the purpose of paragraphs 4(c)(ii) or (iii) of the Policy. Rather, the evidence points against a finding under either of those grounds. The question then is whether the Respondent’s registration and use of the disputed domain name in connection with its portal website might be a bona fide offering for the purpose of paragraph 4(c)(i) of the Policy.
The Complainant argues that the Respondent has not used the disputed domain name in connection with a bona fide offering. Primarily, the Complainant points out that the disputed domain name has been offered for sale, and the Respondent’s website contains various links that relate to the State of Florida. In that latter connection, the Complainant suggests that those links indicate an intention to attract Internet users otherwise looking for the Complainant at its official website at “www.myflorida.com”. As also noted above (under ‘Factual Background’) the Respondent’s website appears to be one ‘parked’ at “www.sedo.com”.
The registration of domain names in connection with portal websites (otherwise referred to as ‘directory’, ‘parking’ or ‘pay-per-click (PPC) landing’ sites) has been the subject of numerous prior decisions under the Policy. The incidence of these types of websites has greatly increased in recent years. Such websites typically offer a list of automatically generated links. Also typically, the search function on such websites provides results only for search terms for which particular advertisers have paid. “The reason these pages are structured in this way is that, each time an Internet user clicks on a listed link, it creates an opportunity for the owner of the PPC landing page to receive a small (typically automated) payment from the advertiser in consideration for having delivered the Internet user to the advertiser’s web page.” See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
Where the links on a portal website are based on the trademark value of the domain name, rather than any descriptive value, the trend in decisions under the Policy is to recognize that such practices generally do constitute abusive cybersquatting. (See, mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Ranbaxy Laboratories Ltd v. Jucco Holdings, WIPO Case No. D2007-1562, and the cases cited in those ones. For the previous application of similar principles in relation to the Complainant’s mark, see Florida Department of Management Services v. Thomas Rask/Logical Sites, Inc., WIPO Case No. D2006-1595). In other words, panels have found that such practices do not amount to a bona fide offering of goods or services, for the purpose of paragraph 4(a)(iii) of the Policy.
The evidence in this case squarely supports a similar finding. The Respondent’s registration and use of the disputed domain name appears to have been based on the trademark value of the Complainant’s mark. As noted by the Complainant, a number of links that appeared on the Respondent’s portal website related to the trademark value of the Complainant’s mark (i.e. its connection with information and services relating to the State of Florida). And, while the Complainant’s mark is comprised of a combination of generic terms, the combination as such does not appear generic. Such a finding also appears consistent with a previous case involving the Complainant’s trademark and its use by a respondent in connection with a portal website. (See Florida Department of Management Services v. Thomas Rask/Logical Sites, Inc., WIPO Case No. D2006-1595, also cited above.)
For these reasons, the Complainant has established this second element.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out illustrative circumstances which are evidence of bad faith for the purpose of paragraph 4(a)(iii) of the Policy. Relevantly to the evidence in this case, those include:
“(i) circumstances indicating that you [the Respondent] 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…
(iv) by using the domain name, you [the Respondent] 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 Panel finds that the evidence in this case supports a finding under both of these paragraphs.
In relation to paragraph 4(b)(i), the Complainant provided evidence of the disputed domain name being offered for sale at “www.sedo.com” for €670, which is an amount clearly in excess of the costs of the registration of the disputed domain name. It is well established that such an offer to sell a domain name on a public website, as in this case, may amount to bad faith for the purpose of paragraph 4(b)(i). (See, e.g. National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118.)
In relation to paragraph 4(b)(iv), the disputed domain name is relevantly identical to the Complainant’s mark, and so there is an obvious likelihood of confusion. The evidence also suggests that it is likely that the Respondent was aware of the Complainant’s mark. The Complainant provided evidence of the wide use and reputation of that mark, including in connection with various websites related to the State of Florida. The Respondent’s intention to capitalize on the value of the Complainant’s mark is also suggested by the content of the Respondent’s portal website. As noted above, many of the links on that site advertise information and services that relate to the trademark value of the Complainant’s mark.
Even if the content of that portal website was generated automatically - such that the Respondent was not directly aware of its precise content - the Respondent must, at least, have been aware that the website would be determined by search terms relating to the value of the mark that he wished to exploit. This would appear to be the natural result of ‘parking’ the disputed domain name at the <www.sedo.com> website. Further, the Respondent is ultimately responsible for the content of the website within his control. As such, the Respondent could not avoid responsibility for the automatic generation of links at the subject website. (For an example of recent findings along these lines, in connection with a portal website, see Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912).
For these reasons, the Complainant has established this third element.
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 name, <myflorida.biz>, be transferred to the Complainant.
James A. Barker
Date: February 22, 2008