WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Florida Department of Management Services v. Anthony Gorss (or AGCS)

Case No. D2009-1194

1. The Parties

Complainant is Florida Department of Management Services of Florida, United States of America, represented internally.

Respondent is Anthony Gorss (or AGCS) of Florida, United States of America.

2. The Domain Names and Registrar

The disputed domain names <myflorida411.com> and <myflorida411.net> are registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2009. On September 10, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On September 11, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that 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 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. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on September 7, 2009. On September 9, 2009, the Center received an informal email communication from Respondent.

The Center appointed Gary J. Nelson as the sole panelist in this matter on October 13, 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

Complainant is an administrative arm of the State of Florida.

Complainant is the owner of United States Trademark Registration Nos. 2720387 (MYFLORIDA) and 2723081 (MYFLORIDA.COM) and 2723083 (MY MYFLORIDA.COM and Design). All three registrations are for the promotion of goods and services offered by businesses operating in the State of Florida and for providing general governmental information regarding the services provided by the State of Florida. All three registrations have a priority date of September 12, 2000 (i.e., the date the applications were filed with the United States Patent and Trademark Office (“USPTO”)).

Complainant has operated a website at “myflorida.com” since 2000 that is the State of Florida's official portal and serving as a gateway to many electronic resources offered by the State of Florida.

Respondent registered <myflorida411.net> on August 30, 2006 and registered <myflorida411.com> on August 28, 2007. Respondent operates a website featuring various click-through opportunities at this URL address.

5. Parties' Contentions

A. Complainant

Complainant has been using its MYFLORIDA and MYFLORIDA.COM and MY MYFORLIDA.COM and Design trademarks since 2000 and owns corresponding United States Trademark Registrations for all three of these marks.

Complainant operates a website at “www.myflorida.com” where it offers information on the State of Florida to Internet users and which is the primary access point for visitors, businesses and citizens to 365 State of Florida agencies, committees, commissions, cities and counties, among others.

Complainant's rights in its MYFLORIDA-based trademarks were established before Respondent registered the contested domain names.

The contested domain names are confusingly similar to Complainant's MYFLORIDA-based trademarks.

Respondent has no rights or legitimate interest in the contested domain names.

Respondent registered and is using the contested domain names in bad faith.

B. Respondent

The Respondent did not timely reply to the Complainant's contentions. However, Respondent did submit a brief response where it alleged ownership of the contested domain names since 2006, with priority, based on a previous owner, back to 2003. The response also made clear that Respondent wished to contest Complainant's allegations contained in the Complaint.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

In view of the fact Respondent's submission consists of only several short paragraphs, to the extent Respondent's submission does not address the specific allegations made by Complainant, when appropriate, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel will give full consideration to the comments and defenses presented by the Respondent.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(i) The domain name in issue is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no right or legitimate interest in the contested domain name; and

(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has registered its MYFLORIDA and MYFLORIDA.COM and MY MYFLORIDA and Design trademarks with the United States Patent and Trademark Office. The priority dates for these registrations (i.e., filing date of September 12, 2000) precede the dates upon which Respondent registered the contested domain names (i.e., 2006 and 2007). Even if Respondent's priority claim for registering the contested domain names was established in 2003, as Respondent alleges it is entitled through the ownership of an unrelated third party, Complainant has still established priority (i.e., September 12, 2000, as compared to 2006 or 2003). Therefore, Complainant has established rights in these marks pursuant to Policy, paragraph 4(a)(i). See Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption).

Both of the contested domain names,

<myflorida411.com>

<myflorida411.net>,

are confusingly similar to Complainant's MYFLORIDA-based trademarks because they incorporate the entirety of Complainant's MY FLORIDA mark and merely add generic or descriptive terms along with the generic top-level “.com,” and “.net” domain names. Neither the addition of a generic or merely descriptive term to a well-known mark or the addition of a generic top-level domain name is sufficient to create a distinct domain name capable of overcoming a proper claim of confusingly similarity. See Arthur Guinness Son & Co. (Dublin) Limited. v. Tim Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word...nor the suffix ‘.com' detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY”) and thus Policy, paragraph 4(a)(i) is satisfied). The addition of the number “411” is insufficient to over come Complainant's allegation of confusing similarity.

Confusing similarity is especially acute in this case where the generic or merely descriptive term (i.e., “411” commonly known in the United States as being the equivalent of the word “information”), simply describes informational services provided by Complainant at its “www.myflorida.com” website. See ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners, WIPO Case No. D2002-0625 (“confusion is only heightened when the generic word added by Respondent is descriptive of the Complainant's goods or services marketed in relation to the trademark”).

Complainant has proven the requirement of Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Panel finds that Respondent has no rights or legitimate interests in the contested domain names.

Respondent has filed a Response consisting of several short paragraphs sufficient to indicate its desire not to concede to the allegations made by Complainant. However, Respondent has only alleged that the State of Florida has lost a prior domain name Case, while failing to indicate how that prior decision is relevant to this pending dispute.

By filing such a sparse Response, Respondent has not provided any evidence that it is commonly known by either of the contested domain names, or that it is commonly known by any name incorporating the terms “my florida” or “my florida 411.” In Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where (1) respondent is not a licensee of complainant; (2) complainant's rights in its related trademarks precede respondent's registration of the contested domain name; and (3) respondent is not commonly known by the domain name in question. The Panel notes that all three of these conditions apply to the present case.

Respondent is currently operating websites at <myflorida411.com> and <myflorida411.net> that are merely advertising portals and parking pages that offer click-through advertisements. This type of website, in such circumstances as in this case, does not constitute a bona fide offering of goods or services under the UDRP Policy paragraph 4(c)(i). See The American Automobile. Association, Inc. v. Jack Holder, NAF Claim No. FA1227171.

Because the website associated with the contested domain names also promotes and advertises click-through websites that offer general information about various aspects of the State of Florida, the Panel concludes Respondent is using the contested domain names in association with a website that competes directly with Complainant's business interests. Furthermore, it is likely Respondent is receiving click-through fees each time an Internet user accesses the websites at <myflorida411.com> and <myflorida411.net> and clicks on any of the numerous options available. The use of another's well-known trademark for the purpose of deriving this type of commercial benefit is evidence that Respondent has no right or legitimate interest in the contested domain names.

Accordingly, the Panel concludes Respondent is not using the <myflorida411.com> and <myflorida411.net> domain names in association with a bona fide offering of goods and service pursuant to Policy, Paragraph 4(c)(iii). See America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374 (“it would be unconscionable to find […] a bona fide offering of services in a respondent's operation of [a] web-site using a domain name which is confusingly similar to the complainant's mark and for the same business”).

Complainant has proven the requirement of Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Panel finds that Respondent registered and is using the contested domain names in bad faith.

Respondent is using Complainant's MY FLORIDA-based trademarks to attract Internet users to a website associated with the <myflorida411.com> and <myflorida411.net> domain names. The corresponding websites feature click-through opportunities to services that compete directly with the services offered by Complainant under its MY FLORIDA-based trademarks. This is sufficient evidence of bad faith registration and use. See Lilly ICOS LLC v. Tudor Burdern d/b/a BM Marketing/Burden Marketing, WIPO Case No. D2005-0313.

The Panel also finds that Respondent likely chose the <myflorida411.com> and <myflorida411.net> domain names with full knowledge of Complainant's rights in the MY FLORIDA-based trademarks. Respondent's awareness of Complainant's MY FLORIDA-based trademarks may be inferred because the mark was registered with the USPTO prior to Respondent's registration of the contested domain names and since the MY FLORIDA trademark is well-known as the website operated by the State of Florida. See Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide, WIPO Case No. D2000-0911 (“the fact that Respondent [chose] to register a well-known mark to which he has no connections or rights indicates that he [was in bad faith] when registering the domain name [at issue]”).

In regard to the contested domain names, Respondent maintains a corresponding website hosting click-through advertisements providing information on the State of Florida in direct competition with Complainant. This activity constitutes evidence of bad faith registration and use of the domain names. See McDonald's Corporation. v. ZusCom, WIPO Case No. D2007-1353 (“the use of another's trademark to generate revenue from Internet advertising can constitute registration and use in bad faith as a classic illustration of the conduct condemned by paragraph 4(b)(iv) of the Policy...”); see also SAFE Credit Union v. Mike Morgan, WIPO Case No. D2006-0588 (bad faith found where respondent received a commercial benefit from using the domain name as a pay-per-click site with advertisements for competing services).

The Panel also finds that Respondent likely chose the disputed names with full knowledge of Complainant's rights in the MY FLORIDA-based trademarks. Respondent's awareness of Complainant's MY FLORIDA trademarks may be inferred because the marks were registered with the USPTO prior to Respondent's registration of the contested domain names and since the marks are well-known within the State of Florida for providing general information related to administrative operation of the State of Florida, and other opportunities available to tourists when visiting the State of Florida. See Kraft Foods (Norway) v. FredrikWide and Japp Fredrik Wide, supra.

Complainant has proven the requirement of Policy, paragraph 4(a)(iii).

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, <myflorida411.com> and <myflorida411.net> be transferred to Complainant.

Gary J. Nelson
Sole Panelist

Dated: October 21, 2009