WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
State of Florida, Department of Management Services v. Texas International Property Associates
Case No. D2007-0908
1. The Parties
The Complainant is State of Florida, Department of Management Services, Tallahassee, Florida, United States of America, represented by Gerard T. York, Assistant General Counsel Florida Department of Management Services, Tallahassee, Florida, United States of America.
The Respondent is Texas International Property Associates, Dallas, Texas, United States of America, represented by Gary Wayne Tucker Esq., Dallas, Texas, United States of America.
2. The Domain Names and Registrar
The disputed domain names , , and are registered with Compana LLC.
3. Procedural History
The Complaint (concerning 19 domain names) was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2007. On June 21, 2007, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain names at issue. On June 27, 2007 Compana LLC transmitted by email to the Center a partial verification response confirming that the Respondent is listed as the registrant for and providing the contact details (further reminders were sent on June 29, 2007, and July 2 and 4, 2007). Despite numerous subsequent requests for confirmation in relation to the remaining domain names, no further information was forthcoming from the Registrar until September 13, 2007. On September 13, 2007, after the Center had advised the Registrar that 18 of the original 19 domain names had been removed from the original Complaint and an additional 3 added, the Registrar transmitted by email to the Center a verification response in relation to the additional domain names, , and , confirming that the Registrant is listed as the Respondent and providing the registrant and contact details. After a suspension, the Complainant filed an amendment to the Complaint on September 25, 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 September 25, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 15, 2007. The Response was received by the Center on October 16, 2007.
The Center appointed Nicolas Ulmer as the sole panelist in this matter on November 22, 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
Complainant is an agency of the State of Florida in the United States of America; one of its roles is to apply for and administer patents and domain names for the State of Florida. Complainant recorded the domain name in 1999, and the State of Florida applied for corresponding trade and service marks in 2000. Since 2003, the disputed domain name has been registered by Complainant as a United State registered service mark in three different iterations (MYFLORIDA, MYFLORIDA.COM, and MYMYFLORIDA.COM). The MYFLORIDA.COM domain site is the State of Florida's official portal for electronic resources and is a primary electronic access point to state agencies, commissions, and all manner of Florida-related information and links. An affidavit submitted by the Bureau Chief of the MYFLORIDA.COM portal states that the site receives an average of 3 million hits and 150,000 page views per weekday. The domain name/service mark MYFLORIDA.COM has also been put on the license plates of Florida-registered automobiles, and otherwise been widely used in and by the State of Florida.
Respondent states that it “is the registrant of thousands of domain names”. The domain names at issue in this proceeding have been used for English-language “pay per click” type commercial sites with links to Florida traffic schools, DUI (“Driving Under the Influence”) attorneys, real estate brokers and other commercial services in Florida. The site's “welcome line” recites: “[f]or resources on and information on Florida Traffic School and Florida Real Estate”.
There has been significant contact and negotiation between the attorneys for the Parties, leading to the Respondent abandoning claims to many initially disputed domain names. The original complaint in this proceeding listed 19 disputed domain names; the amended complaint lists 4. Of these four Respondent now argues only in favour of retaining the domain name MUYFLORIDA.COM; Respondent consents to the transfer of the other 3 names (, and ) to Complainant.
5. Parties' Contentions
A. Complainant
Complainant maintain that Respondent is a “serial cyber-squatter” and cites more than a dozen UDRP cases where Respondent was found to have registered domain names with variants or misspellings of trademarks. This, Complainant alleges is precisely what Respondent has done with the domain names in issue here. It is principally on this basis that Complainant asserts that these registrations are without right and in bad faith within the meaning of the Policy.
B. Respondent
The heart of Respondent's defense is that its alleged history of cyber-squatting and its loss of many UDRP cases is not dispositive of its rights here. Respondent also puts forward that it consents to transfer of three of the four domain names in dispute, insisting only on retaining . That remaining domain name, Respondent asserts, is not identical to or confusing with Complainant's marks, in large part because it has an independent meaning in the Spanish language, and, therefore was not registered in bad faith.
6. Discussion and Findings
As noted above the posture of this case is that it was initially filed against 19 disputed domain names then, after negotiation, an Amended Complaint was filed as to 4 domain names only, and of these 4 Respondent only argues to retain one . Where, as here, a Respondent consents to the transfer of a disputed domain name the Panel is entitled to grant such transfer without further analysis. See Williams-Sonoma Inc. v. EZ Port,WIPO Case No. D2000-0207; Esat Digifone Limited v. John Butler,WIPO Case No. D2000-0601; Lonely Planet Publications Pty Ltd. v. Hoang Anh Minh and CICUN.com,WIPO Case No. D2003-0355. While the Panel will only here specifically analyse the one domain name still in issue, the overall pattern and scope of Respondent's registrations remains highly pertinent.
This is because the remaining disputed domain name was originally one of at least 19 variations and/or misspellings of a highly visible and well known domain name and mark of Complainant, and these various misspelled domain names were registered by a party with a long history of such activity. As further explained in the specific findings below, the Panel cannot ignore the evidence and inferences to be drawn from this conduct merely because the Respondent has, after a Complaint was filed, dropped all but one of the disputed domain names.
A. Identical or Confusingly Similar
The Complainant has United States registrations for the marks MYFLORIDA and MYFLORIDA.COM, and there is substantial evidence of particularly wide and extensive use of the latter mark as a domain name and on automobile license plates, and as Complainant's principal electronic portal; Respondent does not dispute any of this.
The remaining disputed domain name differs from Complainant's mark and domain name solely in the addition of the extra letter of “u” i.e. muyflorida instead of myflorida; a confusing similarity. See, Accor v. Brigit Klosteman,WIPO Case No. 2005-0627 and cases discussed therein; see also State of Florida, Department of Management Services v. Digi Real Estate Foundation,WIPO Case No. D2007-0907. Respondent's argument that “muyflorida” cannot be confusingly similar to “myflorida” because the former can have an independent meaning in Spanish, is also insufficient to defeat confusing similarity on the facts here, but is further discussed below in connection with the determinations of Respondent's rights and bad faith.
The Panel finds that the disputed domain name is confusingly similar to a trademark or service mark of Complainant.
B. Rights or Legitimate Interests
Complainant's case is, essentially, that it is obvious from the mass of slightly misspelled variations of Complainant's mark that Respondent is engaging in “cyber-squatting” or “typosquatting”, and that the plethora of cases that have found that Respondent has engaged in such conduct further confirm this. In short, Respondent is not known by the disputed domain and has a history of “cyber-squatting”, both in connection with the Complainant's domain and generally.
Respondent submits a litany of cases and diverse arguments seeking to question Complainant's exclusive rights the word “florida”, but supplies no evidence to defeat the assertions above. Nor does Respondent provide evidence of rights or legitimate interest under 4(c) of the Policy. The evidence and related inferences here are that Respondent is not making legitimate use of, and has no independent right or interest, in the remaining disputed domain name. Rather, the evidence strongly points to an illegitimate parasitic attempt to divert internet users for commercial gain. The Complainant has met its burden of demonstrating that Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name was registered on or about December 31, 2005, as part of a long series of registrations by Respondent of similar variations of Complainant's marks and domain name. Respondent's registrations were thus made long after the Complainant's rights and marks were registered and known, including by having the MYFLORIDA.COM mark figure on millions of license plates in the State of Florida. Respondent asserts that there was no bad faith intent to confuse because the disputed domain name has a separate meaning of “very flowery” (muy florida) in Spanish, and that there are locations other than the United States', State of Florida that are called Florida. These arguments are without weight here. The disputed domain name and the like names registered with it resolve or resolved to commercial sites offering services in the United States', State of Florida (and driving-related services in particular); they are not in Spanish and have no connection to anything “very flowery”. Respondent has merely opportunistically seized on the fact that one of its many misspelling variations on Complainant's mark has an unrelated meaning in Spanish. This does not counter the significant evidence of deliberate “typosquatting” and bad faith use within, inter alia, the meaning of 4(b)(iv) of the Policy. Cf. National Association of Professional Baseball Leagues Inc. d/b/a Minor League Baseball v. Zuccarini, Case No. D2002-1011 (“Typo-squatting is inherently parasitic and of itself evidence of bad faith”); see also AMAZON.COM Inc. v. Steven Newman,WIPO Case No. D2006-0517.
The Panel accordingly finds that Respondent has registered and used the remaining disputed domain name in bad faith.
7. Decision
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, , , , and , be transferred to Complainant.
Nicolas Ulmer
Sole Panelist
Dated: December 10, 2007
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