WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Florida Department of Management Services v. Whois Protection, Whois Protection Service LLC Case No. D2009-1207 1. The Parties
The Complainant is the Florida Department of Management Services of Tallahassee, Florida, United States of America, represented by Gerard York, United States of America.
The Respondent is Whois Protection, Whois Protection Service LLC of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with CSL Computer Service Langenbach GmbH dba J. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2009. On September 11, 2009, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba J a request for registrar verification in connection with the disputed domain name. On September 15, 2009, CSL Computer Service Langenbach GmbH dba J 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 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 6, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 7, 2009.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on October 9, 2009. 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 registered proprietor of three United States trademark registrations of the name MYFLORIDA. They are numbers 2720387, 2723081 and 2723083 in classes 35 and 42 for a wide range of governmental and governmental information services consistent with the Complainant's functions. The trademark registrations all date back to September 2000.
In addition, the Complainant's domain name has been connected the portal website for the State of Florida since the year 2000, as a gateway to the Complainant's electronic resources, with an average four million page views per month.
The Complainant has made very extensive use of its domain name not only to connect to its portal website, but also in graphic form on many millions of Florida vehicle registration plates.
The Respondent registered the disputed domain name on January 18, 2007, and connected it to a website featuring links to “State Info”, “Florida Legal” and “Sponsoring Results” including a “Hookup with Sexy Asians”. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the Complainant's registered trademarks and to its domain name .
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, observing that the Respondent is not known by the disputed domain name and has a track record as serial cyber-squatter. The Complainant cites 10 domain name disputes in which the Respondent has featured as a respondent. In all of those cases the Respondent's registrations were held to have been made and used in bad faith.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant contends that the Respondent deliberately registered a misspelling of the Complainant's portal domain name with a view to diverting Internet traffic from the Complainant's site to the Respondent's directory site. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, 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 has been registered in bad faith and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has trademark registrations in the United States covering representations of the mark MYFLORIDA. The Complainant has produced substantial evidence of its extensive use of the mark, primarily as part of the domain name , a domain name which is featured widely on car registration plates in Florida and which is the domain name used for the Complainant's portal site for its electronic resources.
The disputed domain name is identical to the Complainant's registered mark except for omission of a letter “r”.
The Panel finds that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights and that the Complainant has thus fulfilled paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The use of the disputed domain name, which is a misspelling of the trademarks of the Complainant (i.e. a case of so-called typo-squatting), cannot be considered use in connection with a bona fide offering of goods or services, nor a legitimate non-commercial 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. D2002-1011.
The Panel also notes that the website under the disputed domain name is a so-called “landing page”. Because the disputed domain name infringes on the Complainant's trademarks, this use cannot be considered as bona fide offering of goods or services, nor as a legitimate non-commercial fair use” (see mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141 and the cases cited therein).
Since the Complainant has shown that the Respondent does not have a right or a legitimate interest in the disputed domain name, the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under the circumstances of this case, it can be inferred that the Respondent was aware of the Complainant's trademarks when registering the disputed domain name.
The Panel finds that there is sufficient evidence that the Respondent, by registering and using the disputed domain name, attempted to attract Internet users for commercial gain to its website, by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation, or endorsement of its website or the products or services on its website, which demonstrates bad faith.
Furthermore, the Panel agrees with the Complainant that the disputed domain name is an example of typo-squatting, 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 (cited above).
In summary, the Panel finds that the Respondent has registered and uses the disputed domain name in bad faith, thus fulfilling paragraph 4(a)(iii) of the Policy. 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 name be transferred to the Complainant.
Tobias Zuberbühler
Sole Panelist
Dated: October 22, 2009
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