WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Florida Department of Management Services v. Moniker Privacy Services / Domain Administrator
Case No. D2010-1545
1. The Parties
The Complainant is Florida Department of Management Services of Tallahassee, Florida, United States of America, represented internally.
The Respondent is Moniker Privacy Services / Domain Administrator of Florida, United States of America and Shanghai, the People’s Republic of China, respectively.
2. The Domain Name and Registrar
The disputed domain name <myfloridamarketplace.org> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2010. On September 14, 2010, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On September 16, 2010, Moniker Online Services, LLC 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” 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 shall issue its Decision based on the Complaint, 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 <myfloridamarketplace.org> was registered on May 8, 2010.
5. Parties’ Contentions
The Complainant states that the case involves the unauthorized, bad faith registration and use of the domain name <myfloridamarketplace.org> by the Respondent, in view of the Complainant's MY FLORIDA MARKET PLACE service trade mark, as well as the Complainant's registered domain name <myfloridamarketplace.com>.
The Complainant informs that it is authorized to apply for, receive, and hold authorizations, patents, copyrights, trade marks, 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), of the 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 within the United States to date. My Florida Market Place initiative 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 web site connected with the disputed domain name includes links for "computing" and "Insurance", leading to companies who are active in these businesses (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, and points out that the disputed domain name is identical to the Complainant’s registered trade 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 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 trade mark in the United States, through registration No. 3,097,056. See Florida Department of Management Services v. Thomas Rask and Logical Sites, Inc., WIPO Case No. D2006-1595 (“[u]nder 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 ”myfloridamarketplace”. See Gardline Surveys Ltd. v. Domain Fin. Ltd., NAF Claim No. 53545 (“[t]he 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 Panel finds that the disputed domain name is identical to the Complainant’s registered trade mark.
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 trade mark MY FLORIDA MARKET PLACE.
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, or to rebut the Complainant’s prima facie case under this paragraph of the Policy.
There is nothing in the Respondent’s name that indicates it may have become commonly known by the domain name, enabling it to establish a legitimate interest in the disputed domain name thereby, nor any evidence in the present record to indicate that the Respondent is making any legitimate non-commercial or fair use of the domain name.
The Respondent’s use of the disputed domain name for a commercial web site with links to commercial companies inter alia within the computer, insurance and other businesses (some of the various industries which are addressed by the Complainant’s My Florida Market Place initiative) 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
The Complainant is situated in Florida, United States, whereas the Respondent seems to be situated in Shanghai, China. However, the disputed domain name is used for a web site in English, with links to the United States companies, and it therefore seems that the disputed domain name is used, and web site is created, in respect of the United States market, and especially focused on Florida.
The <myfloridamarketplace.org> domain name is identical to the Complainant’s registered trade mark, as well as to the textual string of the Complainant’s domain name <myfloridamarketplace.com>. The Panel therefore concludes that it is obvious that the Respondent was aware of the Complainant’s trade mark when registering the disputed domain name. See Edmunds.com, Inc v. Wan-Fu China, Ltd., WIPO Case No. D2007-0339 (“A quick search over the Internet would reveal domain names or web sites which are identical or similar to the Respondent's choice of domain name.”)
The Respondent has been given 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 reply has been filed.
In the absence of any reply from the Respondent, this Panel cannot draw any other conclusion than the one that the Respondent has 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 purpose of commercial gain. Such activity is evidence of bad faith pursuant to paragraph 4(b)(iv) of the Policy.
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 <myfloridamarketplace.org> be transferred to the Complainant.
Dated: October 28, 2010