WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Florida Department of Management Services v. Moniker Privacy Services / Charlie Kalopungi, AA7 GROUP LTD
Case No. D2010-1389
1. The Parties
The Complainant is Florida Department of Management Services of Tallahassee, Florida, United States of America, represented internally.
The Respondents are Moniker Privacy Services of Pompano Beach, Florida, United States of America; Charlie Kalopungi, AA7 GROUP LTD of Mahe, Seychelles (the “Respondent”).
2. The Domain Name and Registrar
The disputed domain name <myfloridamaketplace.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2010. On August 17, 2010, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On August 19 and 25, 2010, Moniker Online Services, LLC 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 August 26, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed amended Complaints on August 26, 2010 and September 7, 2010. The Center verified that the Complaint together with the amendments 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 11, 2010.
The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 12, 2010.
The Center appointed Petter Rindforth as the sole panelist in this matter on October 17, 2010. 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.
The Panel notes that the original Complaint was filed in relation to two domain names, namely <myfloridamaketplace.com> and <myfloridamarketplace.org>. The Panel further notes that the Complaint subsequently removed the <myfloridamarketplace.org> domain name from its Complaint.
The Panel shall issue its Decision based on the Complaint, the amended Complaints, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language.
4. Factual Background
The Complainant is an administrative agency of the State of Florida under the laws of the State of Florida, United States.
The Complainant is the owner of the United States trade mark registration No. 3,097,056 MY FLORIDA MARKET PLACE, registered May 30, 2006 in respect of services in Classes 35 and 42.
The Complainant also holds the domain name registration <myfloridamarketplace.com>, registered on December 2, 2002.
The disputed domain name <myfloridamaketplace.com> was registered on May 19, 2010.
5. Parties’ Contentions
The Complainant states that the case involves the unauthorized, bad faith registration and use of the disputed domain name <myfloridamaketplace.com> by the Respondent, in view of the Complainant’s MY FLORIDA MARKET PLACE service trade mark, as well as the Complainant’s domain name <myfloridamarketplace.com>.
The Complainant informs that it is authorized to apply for, receive, and hold authorizations, patents, copyrights, trademarks, service marks, licenses, and allocations or channels and frequencies to manage information and to provide services to the citizens of Florida, according to Sections 282.702(5), Florida Statutes (Appendix C of the Complaint).
According to the Complainant, My Florida Market Place is the most sophisticated and far-reaching procurement initiative undertaken by any State government to date. My Florida Market Place automates the State of Florida's order, approval, invoicing and payment process, making the procurement cycle more cost effective and time efficient than a traditional paper-based system. Additionally, My Florida Market Place provides electronic tools to streamline the development and execution of solicitations, as well as the award and management of contracts. The My Florida Market Place project was contractually initiated by the Complainant in October 2002. Vendors began registering online in April 2003 and the first State buyers began using the system in July 2003.
The Complainant informs that today, 32 State of Florida agencies, over 15,000 State of Florida users, and over 133,000 vendors use My Florida Market Place. Since its inception, the State of Florida has spent millions of dollars in support of My Florida Market Place.
The Complainant argues that the disputed domain name is a slight misspelling of the Complainant’s registered trade mark. The Complainant further refers to the fact that the web site connected with <myfloridamaketplace.com> include links for “related searches”, including a Florida search leading to “Top Sites for Florida”, etc., (Appendix E of the Complaint) and concludes that the Respondent has thus registered a variant of a trade mark as a domain name and then used the domain name to lead confused Internet users to unintended web sites.
The Complainant concludes that it seems inconceivable that the Respondent was unaware of the MY FLORIDA MARKET PLACE mark. The use of the disputed domain name is neither a legitimate use in connection with a bona fide offering of goods and services by the Respondent under paragraph 4(c)(i) of the Policy, nor a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy, but rather a blatant act of cyber-piracy. Given the WhoIs contact information for the disputed domain name, one can infer the Respondent is not "commonly known by" the name My Florida Market Place in any derivation so as to bring into play paragraph 4(c)(ii) of the Policy.
On August 11, 2010, and August 12, 2010, the Complainant sent the Respondent cease and desist messages by email, demanding the Respondent to immediately remove the web site from the Internet as well as to transfer the disputed domain name to the Complainant. The Respondent did not reply.
The Complainant requests that the Panel issue a decision that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established rights in the MY FLORIDA MARKET PLACE trademark in the United States, through registration No. 3,097,056. See Florida Department of Management Services v. Thomas Rask/ Logical Sites, Inc., WIPO Case No. D2006-1595 (“Under United States law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”).
The relevant part of the disputed domain name is “myfloridamaketplace”. See Gardline Surveys Ltd. v. Domain Fin. Ltd., NAF Claim No. 53545 (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The disputed domain name is almost identical to the Complainant’s trade mark MY FLORIDA MARKET PLACE, with the only difference that the letter “r” in the word MARKET in the trade mark is missing in the domain name.
Such minor change is not enough to differ the overall impression of confusing similarity between the disputed domain name and the Complainant’s trade mark, and accordingly the Panel finds that <myfloridamaketplace.com> is confusingly similar to the Complainant’s trade mark MY FLORIDA MARKET PLACE.
B. Rights or Legitimate Interests
The Respondent is not an authorized agent or licensee of the Complainant’s products or services and has no other permission to apply for any domain name incorporating the trademark MY FLORIDA MARKET PLACE or something confusingly similar thereto.
By not submitting a response, the Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.
There is nothing in the Respondent’s name that indicates any rights or legitimate interests in the disputed domain name.
The Respondent’s use of the disputed domain name for a commercial web site with links to commercial companies within Florida, etc, cannot constitute a bona fide use of the domain name pursuant to paragraph 4(c)(i) of the Policy. See Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809 (“Bona fide use does not exist when the intended use is a deliberate infringement of another’s rights.”).
Accordingly, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Both the Complainant and the Respondent are situated in Florida, United States. As the Complainant has described and proved, its trade mark and connected services and domain name are well-known in the state of Florida, with 32 State of Florida agencies, over 15,000 State of Florida users, and over 133,000 vendors as users.
Given the circumstances of this case, the Panel therefore concludes that the Respondent must have registered, and then used, the disputed domain name with full knowledge of the Complainant’s use and prior rights.
The fact that <myfloridamaketplace.com> is such an obvious misspelling of the Complainant’s official domain name <myfloridamarketplace.com> and trademark, is – in the Panel’s opinion – a further evidence of bad faith registration and use, as it seems obvious that the Respondent has registered a domain name that would take advantage of the fact that it is not unusual for Internet users to make minor misspellings when searching for a special web site. As a result, the Respondent may generate unjustified revenues for each click-through by on-line consumers of the likely sponsored links at the ”www.myfloridamaketplace.com“ web site.
The Respondent has got several possibilities to explain the reasons for, and goal with, the registration of the disputed domain name, receiving two messages from the Complainant as well as the Center’s formal notification of the Complaint, but no response has been filed.
In the absence of any response from the Respondent, this Panel cannot draw any other conclusion than the one that the Respondent has 1) tried to use the fact that many Internet users are slightly misspelling many domain names when searching for the official web site, and 2) tried to create an illusion of commercial relationship with, or endorsement from, the Complainant, knowing that the Complainant’s web site under <myfloridamarketplace.com> was well-known and well used.
For the reasons set out above, the Panel finds that the Respondent has registered and used the disputed domain name 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 disputed domain name <myfloridamaketplace.com> be transferred to the Complainant.
Dated: October 28, 2010