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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Department of Management Services, State of Florida v. Digi Real Estate Foundation

Case No. D2007-0547

 

1. The Parties

The Complainant is the Department of Management Services of the State of Florida, United States of America, represented by Gerard T. York.

The Respondent is Digi Real Estate Foundation, Panama City, Panama.

2. The Domain Name and Registrar

The disputed domain name <myflorrida.com> is registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2007. On April 13, 2007, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the domain name(s) at issue. On April 13, 2007, eNom, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that 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 April 17, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2007.

On May 7, 2007, the Complainant advised the Center that the Respondent had registered the domain name <myfloridaa.com> on April 20, 2007. The Complainant asked to explore the amendment of its Complaint to address what it deemed to be another violation of the UDRP by the Respondent.

The Center replied on May 8, 2007, to the Complainant stating that the Rules do not explicitly provide for a complaint to be amended after the commencement of the proceeding to include additional domain names but that the Center would transmit the request to the Panel (when duly appointed).

The Center appointed David J.A. Cairns as the sole panelist in this matter on May 23, 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

The Complainant is the Florida Department of Management Services, an administrative agency of the State of Florida, United States of America. Under the Florida Statutes, the Florida Department of Management Services is charged with providing an integrated electronic system for deploying government products, services, and information to individuals and businesses.

The Department registered the <myflorida.com> domain name on September 2, 1999. It hosts the State of Florida’s official internet portal, which went on line on July 24, 2000. The State’s official internet website has since served as a gateway to the State’s electronic resources. The site receives an average of 3 million visits per weekday.

The Florida State Technology Office is the registered owner of the following trademarks registered with the U.S. Patent and Trademark Office. (i) Registration Nє 2723081 for the word mark MYFLORIDA.COM registered on June 10, 2003 and based on a first use in commerce of July 24, 2000; (ii) Registration Nє 2720387 and the word mark MYFLORIDA registered on June 3, 2003 and based on a first use in commerce of July 24, 2000 and (iii) Registration Nє 2723083 for a design consisting of a styilized ‘MY’ and the words MYFLORIDA.COM registered on June 10, 2003 and based on a first use in commerce of July 24, 2000. The mark MYFLORIDA.COM has since been reproduced on state stationery and over 13 million Florida license plates.

The Respondent is Digi Real Estate Foundation, with address in Panama City, Panama. The Respondent has been a party in several previous UDRP proceedings.

The Respondent registered the disputed domain name <myflorrida.com> on October 21, 2005, and is currently using the disputed domain name as a portal with hyperlinks to other websites offering a range of services. There are many Florida related links, including a link called ‘My Florida’. Some of the links are described in the site as “Sponsored Links”.

 

5. Parties’ Contentions

A. Complainant

According to the Complainant, the State of Florida’s official Internet portal “www.myflorida.com” has become one of the most frequently visited government websites in the United States. This website has been serving as a gateway to the State’s electronic resources to citizens, businesses and tourists. In addition, the Complainant states that its MYFLORIDA.COM trademark has also been widely used on state stationery and license plates, and alleges that under United States law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.

The Complainant submits that the disputed domain name is the same as the mark MYFLORIDA except for the addition of an additional letter “R”. It is an obvious example of typosquatting, and is confusingly similar to the MYFLORIDA trademark.

The Complainant states that it is inconceivable that the Respondent was unaware of the MYFLORIDA marks given that the Respondent’s website includes a ‘My Florida’ link. It submits that the use of the disputed domain name at issue is neither a legitimate use in connection with a bona fide offering of goods and services nor a legitimate noncommercial fair use. Rather, it is a blatant act of cyberpiracy. The Complainant submits that given the WHOIS contact information of the disputed domain name, one can infer that Respondent is not “commonly known by” the name MYFLORIDA in any derivation.

The Complainant submits that the Respondent is a serial cybersquatter. It states that in approximately forty reported cases, panels have determined that the Respondent has engaged repeatedly in typosquatting or cybersquatting and that the Respondent’s registrations were done in bad faith. The Complainant submits that typosquatting is itself evidence of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

The first issue, of a procedural nature, is the Complainant’s application to amend the Complaint to add an additional domain name registered by the Respondent after this administrative proceeding had commenced. The Claimant applied to amend its Complaint on May 7, 2007 to include <myfloridaa.com>, registered by the Respondent on April 20, 2007. This application from the Complainant was received after registrar verification, notification of the Respondent, and commencement of the proceeding, and on the same day as the expiration of the due date for the Response, in respect of the disputed domain name <myflorrida.com>.

As the Center informed the Complainant, the Rules do not provide for a complaint to be amended after the commencement of the proceeding to include additional domain names. The Panel is aware that similar applications have been considered in earlier cases, particularly Archipelago Holdings LLC, v. Creative Genius Domain Sales and Robert Aragon d/b/a/ Creative Genius Domain Name Sales, WIPO Case No. D2001-0729, where the addition to the Complaint was refused with the following reasoning: “If the Panel were to grant Complainant’s request, it would cause substantial delay in the final resolution of this dispute. The Center would have to submit new Registrar Verifications, and the Respondent would have to be given 20 days to respond to Complainant’s claims that these domain names are identical or confusingly similar to its trademarks, that Respondent has no legitimate interest in these domain names, and that Respondent registered and used them in bad faith. Had this request been made shortly after the filing of the initial complaint, then the amendment likely would have been acceptable, as it would have caused neither prejudice nor delay. That, in fact, was the circumstance in Maruti Udyog Ltd. v. Subba Raju, WIPO Case No. D2000-1036 and Louis Vuitton Malletier v. Somsak Sooksripanich, WIPO Case No. D2000-0866, the two cases on which Complainant relies in its motion. The request might also have been acceptable if it were made shortly after the domain names were registered, especially if they were registered after the filing of the initial Complaint.”

The decision of a Panel as to whether to allow the amendment of a Complaint to add further domain names must be made in accordance with paragraph 10 of the Policy. In particular the Panel must ensure that its decision respects the procedural rights of the Parties (paragraph 10(b)), and is compatible with the Panel’s obligation to ensure the administrative proceeding takes place with due expedition (paragraph 10(c)).

Respect for the Respondent’s procedural rights means that the addition of another domain name to the Complaint requires re-notification of the Respondent and a new period of twenty days to submit a Response in accordance with paragraph 5 of the Policy. For this reason the procedural economy of hearing two domain name disputes between the same parties together might be outweighed by the Panel’s obligation to determine the original dispute with due expedition, as in the Archipelago Holdings decision referrred to above.

The Archipelago Holdings decision recognises that certain circumstances make the addition of a domain name more acceptable, including if it were made shortly after the domain names were registered, especially if they were registered after the filing of the initial Complaint”. This is exactly the case before the present Panel, where the additional domain name was registered three days after the notification of the Complaint to the Respondent on April 17, 2007.

However, the Panel must reject the request for an amendment even in these circumstances, because the addition of a new domain name after a sole panelist has been appointed is inconsistent with the Panel’s duty to ensure the Parties are treated with equality. Procedural equality means that each party must have the option of having the dispute determined by a three member panel (see paragraph 3(b)(iv), 5(b)(iv) and (v) and 5(c) of the Policy). However, if the amendment to the Complaint were now allowed, and a new domain name added, then the Respondent would have lost the right to have the dispute regarding the additional domain name determined by a three member Panel.

This procedural problem cannot readily be solved by providing an opportunity for the Respondent to object to the addition of a new domain name on the basis that it wishes to exercise its right to a three member panel in respect of the added domain name, as such a course further complicates the procedure, and is likely to create additional delay. In this Panel’s view the course most consistent with paragraph 10 of the Policy, and the principles of the UDRP system, is generally not to permit the addition of new domain names to a Complaint after a single member panel has been appointed. This might appear hard to a complainant, as in the present case, not guilty of any omission, oversight or delay, but is an inherent limitation in the simplified dispute resolution system for domain names. It is, of course, open to the Complainant to bring a separate Complaint in respect of the additional domain name if it so desires.

Turning to the merits, the Panel is required to decide the Complaint on the basis of the statements and documents submitted, and in accordance with the Policy, the Rules and any rules and principles of law that it deems appropriate.

The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent’s domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of the domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant owns United States Patent and Trademark Office registrations for MYFLORIDA and MYFLORIDA.COM trademarks.

The disputed domain name is not identical to the MYFLORIDA.COM word mark, but has an immediate similarity and only differs in the addition of a single letter “R”.

The Panel finds that the disputed domain name is confusingly similar to the MYFLORIDA.COM trademark for the following reasons: (i) MYFLORIDA.COM is an invented compound consisting of the personal pronoun “my”, the name of a State of the United States of America, and the top-level domain name suffix “.com”, and is inherently distinctive; (ii) the extensive use by the Complainant of its MYFLORIDA.COM trademark since registration in state stationery, license plates and its official governmental internet portal had attached a strong secondary meaning to this mark, thus increasing its distinctiveness; (iii) the single letter that distinguishes the disputed domain name from the Complainant’s trademark is of little visual and no phonetic significance.

In light of the foregoing the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s MYFLORIDA.COM trademark, and the first element of the Policy is satisfied.

B. Rights or Legitimate Interests

The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (i) there is no evidence that the Respondent has any proprietary or contractual rights in any registered or common law trademark corresponding in whole or in part to the disputed domain name; (ii) the Respondent is not authorized or licensed by the Complainant to use the MYFLORIDA.COM or MYFLORIDA marks or to register and use the disputed domain name; (iii) there is no evidence that the Respondent has been commonly known by the disputed domain name; and (iv) the Respondent is using the disputed domain name to generate revenue through sponsored links.

Paragraph 4(c) of the Policy provides a list of three circumstances, any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name. There is no evidence before the Panel of the existence of any of these circumstances in the present case. In relation to paragraph 4(c)(i) and (iii) the Panel finds that the Respondent’s use of the disputed domain name is for commercial gain through sponsored links, and also that a use of the disputed domain name to attract Internet traffic to a website based on confusion, inadvertence or error (through the misspelling of the Complainant’s mark by Internet users) is not a use in connection with a bona fide offering of goods or services.

Accordingly, and in the absence of any response from the Respondent providing any evidence to support a possible basis on which the Respondent may have acquired rights or legitimate interests in respect of the domain name, 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

Paragraph 4(b) of the Policy sets out four non-exclusive circumstances any of which, if found by the Panel, shall be evidence of registration and use of a domain name in bad faith.

Paragraph 4(b)(iv) states that if the Panel finds that the Respondent has used the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website, it should be taken as evidence of the registration and use of the domain name in bad faith.

The Panel is satisfied that the disputed domain name has been registered and is being used in bad faith within the meaning of paragraph 4(b)(iv). The Respondents’ use of the disputed domain name with the intention to attract Internet users for commercial gain is established in this case by the fact that the disputed domain name hosts a website containing sponsored links. The likelihood of confusion as to source, sponsorship, affiliation or endorsement is established here by the fact that the disputed domain name is confusingly similar to the Complainant’s MYFLORIDA and MYFLORIDA.COM trademarks.

Further, the Panel is satisfied that the Respondent deliberate chose the disputed domain name to take advantage of the Claimant’s goodwill and the internet traffic associated with the Complainant’s website. This is a clear case of typosquatting which, in itself, constitutes registration and use in bad faith (see e.g. National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011: “Typosquatting….is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”).

Finally, the Panel is satisfied that the Respondent has engaged in a pattern of registering the trademarks of others as domain names, and this constitutes bad faith.

Thus, the Panel is satisfied that the disputed domain name was registered and is being used 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 name <myflorrida.com> be transferred to the Complainant.


David J.A. Cairns
Sole Panelist

Dated: June 6, 2007

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2007/d2007-0547.html

 

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