WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION State of Florida Department of Management Services v. Peter Gerhold Case No. D2010-0453 1. The Parties
The Complainant is State of Florida Department of Management Services of Tallahassee, Florida, United States of America, represented internally.
The Respondent is Peter Gerhold of Fort Lauderdale, Florida, United States of America. 2. The Domain Name and Registrar
The disputed Domain Name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2010. On March 24, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed Domain Name. On April 3, 2010, GoD, Inc. 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 April 7, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 27, 2010. On April 21, 2010, the Respondent submitted a Response in the form of a brief email.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on May 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. 4. Factual Background
The Complainant is an administrative agency of the government of the State of Florida. Among other tasks, the Complainant is charged with providing “an integrated electronic system for deploying government products, services, and information to individuals and businesses” (Florida Statutes sec. 282.102(23)). The Complainant is expressly authorized by law to hold trademarks and service marks in furtherance of its responsibilities (Florida Statutes secs. 282.005(2), 282.102(12)).
The Complainant has operated a portal website for the state's electronic services at “” since 2000. This website serves as the gateway for Internet users to access information about hundreds of Florida state, county, and city governmental bodies, as well as information related to tourism and investment in Florida. The portal links to information, for example, about government job vacancies and grant opportunities, business climate, and tourist destinations, as well as general information about government programs and services. The portal attracts over one million visits monthly.
The Complainant holds the following registered service marks: United States Registration No. 2720387 (MYFLORIDA, registered June 3, 2003), No. 2723081 (MYFLORIDA.COM, registered June 10, 2003), and No. 2723083 (design plus words, registered June 10, 2003). State agencies use and publicize these marks. As an example, according to the affidavit of a Mr. Ford, Director of the Florida Division of Motor Vehicles, the MYFLORIDA.COM mark has been displayed on over 26 million Florida vehicle license plates, to publicize the state's official portal website.
The Domain Name was initially registered anonymously through a domain proxy service associated with the registrar on February 17, 2004. It does not appear that the Respondent has ever used the Domain Name for an active website. Instead, the Domain Name resolves to a “free parking page” hosted by the registrar and featuring pay-per-click sponsored advertising links for a wide variety of products and services.
The Complainant engaged in a long-running dispute with the previous registrant of the Domain Name, which was acquired at some point by the Respondent. In February 2010, the Respondent replied to a message from the Complainant with an email soliciting an offer to transfer the Domain Name to the Complainant. The Respondent subsequently rejected the Complainant's offer of USD $150 to reimburse the Respondent's registration costs. 5. Parties' Contentions A. Complainant
The Complainant argues that the Domain Name is confusingly similar to its registered MYFLORIDA and MYFLORIDA.COM service marks, and that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant contends that its marks are well known, especially in Florida where the Respondent resides, and that the Respondent registered and then “warehoused” the Domain Name in bad faith. B. Respondent
The Respondent disputes that the Domain Name is confusingly similar to the Complainant's MYFLORIDA.COM mark. The Respondent states that he acquired the Domain Name for legitimate business purposes and that his firm intends to use the Domain Name. The Respondent disputes the Complainant's right to use a “.com” domain name in any event, arguing that as a government agency in the United States the Complainant should be restricted to the “.gov” top-level domain. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a Respondent of a disputed domain name, a Complainant must demonstrate each of the following:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules,
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” A. Identical or Confusingly Similar
It is undisputed that the Complainant owns MYFLORIDA and MYFLORIDA.COM as registered service marks. A government body may own and use trademarks and service marks to identify goods and services in commerce, and the United States Patent and Trademark Office, which examined the Complainant's applications, found that these particular marks qualified for trademark registration, irrespective of the predominantly governmental functions of the State of Florida.
The Domain Name incorporates the Complainant's registered MYFLORIDA mark in its entirety, as well as the distinctive portion of the registered MYFLORIDA.COM mark. Adding a generic noun such as “news” to the mark does not lessen the confusing similarity of the Domain Name for purposes of the Policy, especially since the Complainant would be expected to provide “news” online. See, e.g., two WIPO decisions involving the same Complainant as in the present proceeding, Florida Department of Management Services v. Anthony Gorss (or AGCS),WIPO Case No. D2009-1194 (); State of Florida Department of Management Services v. Mr. Siegfried Maier and Edelsbacher Design Group KEG,WIPO Case No. D2008-0318 ().
The Panel finds that the first element of the Complaint has been established. B. Rights or Legitimate Interests
The Complainant asserts, without contradiction, that the Complainant has not authorized the Respondent's use of the Complainant's marks.
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which the Respondent could nevertheless demonstrate rights or legitimate interests in the domain name, including the following:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 asserted without elaboration that he registered the Domain Name for “legitimate business purposes” and that “my firm intends to use the domain name.” He did not name the firm or its business, and there is no indication that he or any related company has been known by a name corresponding to the Domain Name. The Respondent has not used the Domain Name in more than six years since registering it, and the Respondent has not furnished evidence of “demonstrable preparations” to use the Domain Name. The pay-per-click parking website associated with the Domain Name is commercial, but it does not advertise any alleged business of the Respondent.. The distinctive portion of the Domain Name refers to Florida, but the Domain Name has not been used for content related to the geographic reference associated with that name, and the Respondent has not provided concrete evidence of plans for doing so.
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden to the Respondent to come forward with evidence of a right or legitimate interest in the Domain Name, once the Complainant has made a prima facie showing (as it has in this case). See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
The Respondent has not rebutted the Complainant's prima facie case in this proceeding, and the Panel therefore concludes that the Complainant has established the second element of the Complaint. C. Registered and Used in Bad Faith
The Respondent is a Florida resident and does not deny prior knowledge of the Complainant's marks. The Domain Name was initially created the year after the marks were registered in the United States, following several years of commercial use of the marks. Indeed, the marks are widely exposed in Florida, since they appear on Florida automobile license plates, billboards, and broadcast media, as well as online.
The Respondent has asserted without elaboration that he had “legitimate business purposes” for registering the Domain Name, but these purposes are not apparent in the Response or in the actual use of the Domain Name over the past six years for a pay-per-click advertising website operated by the registrar.
The Panel concludes on the present record that the Respondent was likely aware of the Complainant's marks and selected or acquired the Domain Name to take advantage of the fame of those marks for commercial gain, either through misleading Internet users as to source and directing them to the Respondent's website or a pay-per-click advertising website, or through the sale of the Domain Name to the Complainant. The Respondent has offered nothing in the Response to effectively rebut the Complainant's arguments with regard to the Respondent's bad faith in the registration and use of the Domain Name.
The Panel concludes that the third element of the Complaint has been established. D. Complainant's Eligibility for the Domain Name
The Respondent argues that the Complainant should not obtain the Domain Name through this proceeding because the Complainant is a governmental entity and should be restricted to registering domain names in the “.gov” top-level domain name available for use by governmental bodies in the United States.
There is no restriction articulated by the Internet Corporation for Assigned Names and Numbers (ICANN) or any other authoritative body on the kinds of entities that can register domain names in the “.com” generic top-level domain, or on the commercial or noncommercial nature of the registrant's activities. Thus, the Respondent has not demonstrated that the Panel cannot or should not order the transfer of the Domain Name to the Complainant on this ground. 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.
W. Scott Blackmer
Sole Panelist
Dated: June 1, 2010
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