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WIPO-UDRP Decision
D2009-0587

Case number
D2009-0587
Complainant
Florida Department of Management Services
Respondent
Texas International Property Associates - NA NA
Panelist
Naumann, Stefan
Status
Closed
Decision
Transfer
Date of Decision
30.07.2009

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Florida Department of Management Services v. Texas International Property Associates

Case No. D2009-0587

1. The Parties

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

Respondent is Texas International Property Associates of Dallas, Texas, United States, represented by Rothstein Rosenfeldt Adler, United States.

2. The Domain Names and Registrar

The disputed domain names <myfloridadcfaccess.com>, <myfloridahealth.com>, <myfloridamarketplace.net> and <4myflorida.com> (the “domain names”) are registered with Compana LLC d/b/a Budgetnames.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2009. On May 6, 2009, the Center transmitted by email to Compana LLC d/b/a Budgetnames.com a request for registrar verification in connection with the disputed domain names. On May 7, 2009, Compana LLC d/b/a Budgetnames.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on May 22, 2009. 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” 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 May 25, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 14, 2009. The Response was filed with the Center on June 12, 2009.

The Center appointed Stefan Naumann as the sole panelist in this matter on July 20, 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 the public entity Florida Department of Management Services, an administrative agency of the state of Florida organized under the laws of Florida, that owns a number of United States (“US”) trademarks that include the words “My Florida” alone or in combination with other terms or devices to designate services in international classes 35 and 42.

Complainant submitted database print-outs from the US Patent and Trademark Office for the following trademarks:

- MYFLORIDA (number 2720387) registered on June 3, 2003;

- MYFLORIDA.COM (number 2723081) registered on June 10, 2003;

- MYFLORIDA.COM and device (number 2723083) registered on June 10, 2003;

- MY FLORIDA MARKET PLACE and device (number 3097056) registered on May 30, 2006.

Some of these trademarks were registered by the State Technology Office, State Agency Florida. Complainant has submitted into evidence print-outs of the 2000 Florida statutes that show that the State Technology Office is part of the Florida Department of Management Services.

Complainant has submitted ample evidence of the use of these trademarks by various state agencies including as domain names for websites that provide visitors, businesses and citizens access to various government agencies and administrations, and/or that serve for electronic public procurement purposes.

5. Parties' Contentions

A. Complainant

Complainant asserts that its trademarks and the domain names incorporating said trademarks serve as a gateway to the state of Florida's electronic resources and are used on Florida license plates. The state has spent substantial sums in support of the use of these trademarks.

Complainant contends that the disputed domain name <myfloridamarketplace.net> is identical to the MYFLORIDAMARKETPLACE trademark and the disputed domain names <myfloridahealth.com>, <4myflorida.com> and <myfloridadcfaccess.com> are nearly identical to the MYFLORIDA and MYFLORIDA.COM trademarks except for the addition of the number “4”, the generic term “health”, or of an acronym “dcf” together with the word “access”, which are designed to give the impression to an Internet user that he or she will reach the state of Florida's Department of Children and Families.

Complainant alleges that Respondent has no right or legitimate interest in the domain names <myfloridamarketplace.net>, <myfloridahealth.com>, <4myflorida.com> or <myfloridadcfaccess.com> because they were registered after Complainant had established rights in its various MY FLORIDA trademarks. According to Complainant, Respondent cannot have been unaware of Complainant's trademarks and domain names at the time it registered the disputed domain names, and the use it makes of the domain names is neither a legitimate use in connection with a bona fide offering of goods or services by Respondent nor a legitimate noncommercial or fair use.

Complainant argues that bad faith use and registration of the domain names is demonstrated by Respondent's intention to attract Internet users to Respondent's websites by creating a likelihood of confusion with Complainant's trademarks as to the source, sponsorship or affiliation of Respondent's websites with Complainant. In Complainant's view, Respondent registered the domain names in bad faith because it was necessarily aware of the Complainant's trademark rights and the use of Complainant's trademarks on the Internet, and because Respondent is a serial cybersquatter.

Complainant requests that the disputed domain names be transferred to Complainant.

B. Respondent

Respondent agrees to transfer the domain names <myfloridamarketplace.net>, <myfloridahealth.com>, <4myflorida.com> and <myfloridadcfaccess.com> to Complainant, specifying however that its offer to transfer is not an admission of the three elements of paragraph 4(a) of the Policy, but rather an offer of “unilateral consent to transfer”.

Respondent points out that some panels have considered that where a respondent consents to the transfer of a domain name, judicial economy dictates that the Panel should order the transfer without substantive review. Respondent cites two prior panel decisions, including one against it, in which panels have found (i) that under Rule 10(c), a requirement of due expedition favors such an approach and (ii) that once a respondent has consented to transfer, there is no dispute between the parties.

Respondent requests that it be given the opportunity to prepare a more formal response in the event the Panel decides that “analysis is required”.

6. Discussion and Findings

The situation in which a respondent has agreed to transfer a domain name during proceedings has been raised a number of times in previous cases, including by Respondent. Panels have proceeded in three different ways: (i) granting the relief requested by a complainant on the basis of the respondent's consent without reviewing the facts (William-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207), (ii) finding that consent to transfer meant that the three elements of paragraph 4(a) are deemed to be satisfied (Qosina Corporation v. Qosmedix Group, WIPO Case No. D2003-0620), or (iii) proceeding to consider whether on the evidence the three elements of paragraph 4(a) are satisfied because a respondent's offer to transfer is not an admission of the complainant's rights (Osram Sylvania Inc. v. Texas International Property Associates, WIPO Case No. D2007-1891; Koninklijke Philips Electronics N.V. v. Manageware, WIPO Case No. D2001-0796).

In the present matter, Respondent specified in its Response that its unilateral consent to transfer is not an admission of the three elements of paragraph 4(a) of the Policy.

As a result, there clearly exists a dispute between the parties.

The Panel considers that it is only where a respondent consents to transfer and expressly recognizes the claim contained in the complaint as well as the complainant's rights that there is no longer a dispute between the parties and that a panel can proceed to grant the requested relief without further review.

This Panel therefore disagrees that the Rules or Policy require, or even allow, a panel to avoid considering the merits of a complaint under a paragraph 4(a) analysis on the basis that a respondent consented to the requested relief even though he or she contests the claim and/or complainant's rights. The Panel considers that refusing to decide a case in such a situation may in some cases violate a complainant's right to have the merits of its case decided.

Ordering the transfer of a domain name without reviewing the facts in cases where respondents do not admit complainants' claims and rights may encourage those who register domain names in violation of the Policy to continue or to step up their activity, since they would be in a position to avoid any recognition of liability even where they compel the respective trademark owners to prepare and file complaints and supporting evidence, while at the same time decreasing their own legal costs (Osram Sylvania Inc. v. Texas International Property Associates, supra).

The present matter illustrates the potential danger of accepting a consent to transfer without review where a respondent expressly does not admit the grounds for transfer. Respondent has, since October 15, 2008, stated that it intends to assign its rights in one and then in all of the domain names to Complainant. Respondent did not do so despite Complainant's reminders. Respondent then changed legal counsel before the present proceeding began. The evidence shows that service of process on Respondent was difficult, although actual notice was achieved via email and postal mail. Two days before the deadline, Respondent filed its Response in which it again consents to transfer the disputed domain names, but without admission of the grounds for such a transfer and with a request for yet more time to prepare a Response on the merits.

Taking into account the history in this matter of Respondent consenting to the transfer of domain names while avoiding to do so, the Panel finds that Respondent's consent to transfer in response to the Complaint is not a genuine consent, but is merely designed to avoid recognition of liability. If the Panel were to order the transfer of the disputed domain names without review, this would allow Respondent to continue to engage in cybersquatting while systematically avoiding any decision finding that it has committed acts of cybersquatting.

Based on the foregoing, the Panel must therefore decide whether based on Complainant's evidence and arguments it is persuaded that the three elements of paragraph 4(a) are satisfied.

Complainant has established that it has acquired trademark rights in the marks MYFLORIDA, MYFLORIDA.COM and MY FLORIDA MARKET PLACE and that these rights are prior to the registration of the domain names.

The Complainant has also shown that it owns various domain names using these trademarks.

A. Identical or Confusingly Similar

In the present matter, Respondent added the terms “dcfaccess” or “health” or the number “4” to the MYFLORIDA mark.

The Panel considers that the websites operating at the domain names could be considered by the public as websites of various Florida state agencies and/or providing access to state government services. The addition of the word “health” or the number 4, which is pronounced “for”, as well as the acronym “dcf” and the word “access” have the effect of or are intended to increase the risk of confusion.

The Panel therefore finds that the domain names <myfloridamarketplace.net>, <myfloridahealth.com>, <4myflorida.com> and <myfloridadcfaccess.com> are confusingly similar to Complainant's trademarks.

B. Rights or Legitimate Interests

In the present matter, Respondent has chosen to deny Complainant's contentions without offering any grounds for its position. The Panel has found no indication in the evidence it received that any of the circumstances described in the Policy, paragraph 4(c)(i)-(iii) could apply in the present matter. Nor has Respondent claimed or demonstrated any other circumstances that could demonstrate its rights to or legitimate interests in the domain names.

The Panel finds that Respondent's choice to systematically consent to transfer before and during the present UDRP proceeding, while compelling Complainant to file and substantiate its demands, has been deliberate and that Respondent's motion to order the transfer shows that it does not have any arguments or evidence that, in its opinion, would constitute circumstances demonstrating its rights or legitimate interests in any of the disputed domain names.

If Respondent believed that it had rights or a legitimate interest, it could easily and without undue burden have explained in its Response why it chose to consent to transfer the domain names while not recognizing some or all of the elements of paragraph 4(a). Alternatively, Respondent could have consented to transfer with an admission of said elements.

The Panel therefore finds that Respondent has no rights or legitimate interests in the domain names <myfloridamarketplace.net>, <myfloridahealth.com>, <4myflorida.com> and <myfloridadcfaccess.com>.

C. Registered and Used in Bad Faith

For Complainant to prevail, the Panel must be persuaded that the domain names at issue were both registered and used in bad faith.

In the present matter, Respondent registered the domain names <myfloridamarketplace.net>, <myfloridahealth.com>, <4myflorida.com> and <myfloridadcfaccess.com> in bad faith insofar as it has not shown any rights or legitimate interests in the constituent terms, and was or should have been aware of Complainant's prior rights in the marks MYFLORIDA, MYFLORIDA.COM and MYFLORIDAMARKETPLACE as they are registered as trademarks in the United States.

In addition, Respondent registered a number of domain names with both the exact terms of Complainant's trademarks and with variations using the “My Florida” marks as domain names, and has a substantial track record of bad faith domain name registrations as shown by prior panel decisions.

The Panel therefore finds that the domain names were registered in bad faith.

Complainant further alleges that the domain names were used in bad faith.

Respondent operates websites under its domain names that purport to provide links, services and information on Florida state government services.

In addition, engaging in a pattern of registering infringing domain names can be indicative of bad faith use pursuant to paragraph 4(b)(ii) of the Policy.

In the present matter, Complainant lists numerous decisions ordering Respondent to transfer domain names. The number of decisions tends to indicate that Respondent engages in a pattern of registering infringing domain names. This pattern is confirmed by the following decisions: Osram Sylvania Inc. v. Texas International Property Associates, supra; Vienna Beef Ltd v. Texas International Property Associates, WIPO Case No. D2007-1133; Schweizerische Rückversicherungs-Gesellschaft v. Texas International Property Associates- NA NA, WIPO Case No. D2007-1455; American Funds Distributors Inc. v. Texas International Property Associates, WIPO Case No. D2007-0994; Tullett Prebon Group Limited v. Texas International Property Associates, WIPO Case No. D2007-0828; The Southern Company v. Texas International Property Associates, WIPO Case No. D2007-0773; American Automobile Association Inc. v. Texas International Property Associates, WIPO Case No. D2007-0592; Fifth Third Bancorp v. Texas International Property Associates, WIPO Case No. D2007-0537; Vitalife, Inc. dba Tabak's Health Products v. Texas International Property Associates, WIPO Case No. D2007-0507; Rockstar Games v. Texas International Property Associates, WIPO Case No. D2007-0501, State of Florida Department of Management Services v. Texas International Property Associates, WIPO Case No. D2007-0908; Barry D. Sears, Ph.D. vs. Texas International Property Associates, WIPO Case No. D2007-0284; Amgen Inc. v. Texas International Property Associates, WIPO Case No. 2007-0155; Fry's Electronics, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0343; The Benevolink Corporation v. Texas International Property Associates, WIPO Case No. D2007-0404; Associated Bank Corp. v. Texas International Property Associates, WIPO Case No. D2007-0334; Sports Holdings, Inc. v “Texas International Property Associates”/”Sports Holdings Inc,” WIPO Case No. D2007-0430; SurePayroll, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0464; Asbury Automotive Group v. Texas International Property Associates, NAF Claim No. 958542; The Orvis Company, Inc. v. Texas International Property Associates, NAF Claim No. 954151; Constellation Wines U.S., Inc. v. Texas International Property Associates, NAF Claim No. 948436; Disney Enterprises, Inc. v. Texas International Property Associates, NAF Claim No. 945379; West Publishing Company v. Texas International Property Associates, NAF Claim No. 944496; California Academy of Sciences v. Texas International Property Associates, NAF Claim No. 944494; Bond & Co. Jewelers, Inc. v. Texas International Property Associates, NAF Claim No. 937650; NextTen Stauer, LLC v. Texas International Property Associates, NAF Claim No. 921983; Genzyme Corporation v. Texas International Property Associates, NAF Claim No. 921807; Jerry Dameson, Inc. v. Texas International Property Associates, NAF Claim No. 916991; David Hall Rare Coins v. Texas International Property Associates, NAF Claim No. 915206; American Airlines v. Texas International Property Associates, NAF Case No. 914854; ZRT Laboratory, LLC v. Texas International Property Associates, NAF Claim No. 907499; JELD-WEN, inc. v. Texas International Property Associates, NAF Claim No. 882053; Skyhawke Technologies, LLC v. Texas International Property Associates, NAF Claim No. 977213; Redcats USA, L.P. v. Texas International Property Associates, NAF Claim No. 960604; Hospira, Inc. v. Texas International Property Associates, NAF Claim No. 959934; Ganz v. Texas International Property Associates, NAF Claim No. 991778; RMC of Illinois Inc. v. Texas International Property Associates, NAF Claim No. 998091; Grounded Nomads, LLC d/b/a Vocation Vacations v. Texas International Property Associates, NAF Claim No. 999659; Mary's Futons, Inc. v. Texas International Property Associates – NA NA, NAF Claim No. 1012059.

The Panel finds that Respondent has regularly and repeatedly registered third party trademarks as domain names in which it has no rights or legitimate interests as set forth in numerous prior panel decisions, that it has used the trademarks of Complainant in a manner that creates a likelihood of confusion, and that the foregoing examples are evidence of bad faith use.

In its Response, Respondent did not provide any justification for the registration of the domain names, but instead tried to limit its exposure by offering to unilaterally consent to the transfer of the domain names without any recognition that it did in fact, once again violate the Policy.

The Panel concludes from the evidence that Respondent registered and used the domain names <myfloridamarketplace.net>, <myfloridahealth.com>, <4myflorida.com> and <myfloridadcfaccess.com> 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 domains names <myfloridamarketplace.net>, <myfloridahealth.com>, <4myflorida.com> and <myfloridadcfaccess.com> be transferred to the Complainant.

Stefan Naumann
Sole Panelist

Date: July 30, 2009