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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

State of Florida Department of Management Services v. Mr. Siegfried Maier and Edelsbacher Design Group KEG

Case No. D2008-0318

1. The Parties

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

The Respondents are Mr. Siegfried Maier, Steyr, Austria, and Edelsbacheler Design Group KEG Steyr, Austria.

2. The Domain Name and Registrar

The Disputed Domain Name <myfloridamagazine.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2008. On March 4, 2008, the Center transmitted by email to Network Solutions, LLCa request for registrar verification in connection with the domain name at issue. On March 3, 2008, the Complainant and the Center received an informal communication from Mr. Guenther Edelsbacher, Sarasota, Florida, United States of America. On March 4, 2008, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Disputed Domain Name’s holder is Mr. Siegfried Maier. On March 17, 2008, 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 March 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2008.

On April 4, 2008, the Center received a further informal communication from Mr. Siegfried Maier, that, on request of the Center, was translated and resent to the Center on April 6, 2008.

The Center appointed Alistair Payne as the sole panelist in this matter on April 9, 2008. 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 Florida Department of Management Services, an administrative agency of the Florida Government, responsible under Florida law for providing “an integrated electronic system for deploying government products, services, and information to individuals and businesses”.

The Complainant registered the domain name <myflorida.com> on September 2, 1999. It hosts the State of Florida’s official Internet portal, which went online on July 24, 2000 and, since that time, has served as a gateway to the State’s electronic resources.

The Complainant also owns two United States trademark registrations for the word mark MYFLORIDA and an United States trademark registration for the device mark MYFLORIDA.COM. All of these registrations, which were filed on September 12, 2000, are registered in relation to the services included in the international classes 35 and 42.

The Complainant is seeking the transfer of the Disputed Domain Name.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the Disputed Domain Name is identical to or confusingly similar to its United States registered service trademarks. The Complainant submits evidence to prove that it has also widely used its trademark MYFLORIDA in the United States of America. Indeed, the Complainant states, in one hand, that <myflorida.com> is one of the most frequently visited government websites in the United States of America, experiencing an average of three million hits per weekday and, in the other, that the trademark MYFLORIDA.COM has been incorporated, by State of Florida, into over 13 million Florida license plates.

Furthermore, the Complainant asserts that in a recent fiscal year (2006-2007), the State of Florida spent approximately $594,965 in support of the Myflorida.com portal.

The Complainant notes that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. The Complainant contends that the Respondent has never been known by the Disputed Domain Name (or any variant thereof), that it has not used the Disputed Domain Name for any legitimate non commercial or fair use and, finally, that it has no connection to the State of Florida or any of its agencies or subdivisions.

The Complainant asserts that the Disputed Domain Name was registered and has been used in bad faith. In particular, the Complainant notes that on October 25, 2007, Mr. Guenther Edelsbacher, suggested that the Complainant “make an offer” to the Edelsbacher Design Group to purchase the Disputed Domain Name. The Complainant contends that such an offer establishes that the Respondent registered and has used the domain name at issue in bad faith.

The Complainant also highlights that it has tried to resolve this matter amicably through several letters and e-mails sent to the different subjects that seem to be involved in this matter. On September 26, 2006 and on December 7, 2006 the Complainant sent a cease and desist letter to Edelsbacher Design Group, Inc. On December 20, 2006, Mr. Guenther Edelsbacher sent to the Complainant an email in which he affirmed that the Disputed Domain Name was already transferred to an organization outside of the United States of America. On October 25, 2007, the Complainant received a further email from Mr. Guenther Edelsbacher in which he confirmed that the Disputed Domain Name was transferred to Edelsbacher Design Group and that the Complainant could make an offer to buy the Disputed Domain Name from the above mentioned company.

B. Respondents

Mr. Guenther Edelsbacher and Edelsbacher Design Group

Mr. Edelsbacher and Edelsbacher Design Group did not file any response. They have claimed in informal e-mail correspondences with the Complainant, that they are not infringing the Complainant’s trademarks because they have no intention of providing any services identical or similar to the services offered by the Complainant and protected by the trademark registrations.

Mr./Dr. Siegfried Maier

Even if the content of the Respondent’s email dated April 6, 2008 is not taken into account in the analysis of this matter, for sake of completeness, the Panel notes that in the above mentioned communication the Respondent contends that neither he nor the previous owners have ever used the Disputed Domain Name. The Respondent also asserts that owning a domain name is not an infringement and that the Disputed Domain Name was registered for supporting or as yet unascertained a future business. Thus, the Respondent affirms that if this business will be established in Austria, he will have rights and legitimate interests in the Disputed Domain Name.

6. Discussion and Findings

A. Respondents Identity

A preliminary question in this case concerns the identity of the appropriate Respondent or Respondents. Pursuant to paragraph 1 of the Rules the Respondent is the holder of a domain name registration against which a complaint is initiated and the proper Respondent should therefore be Mr./Dr. Siegfried Maier. According to the supporting materials provided by the Complainant, Mr. Guenther Edelsbacher has never owned the Disputed Domain Name but he is presumably the “moving spirit” behind the Edelsbacher Design Group which was a previous registrant. Consequently, while it is not possible to consider Mr. Guenther Edelsbacher as a respondent, the Panel is prepared, for the reasons set out below, to consider the Edelsbacher Design Group’s position.

As noted by this Panel in a previous decision, it is generally possible to envisage circumstances in which an initial or previous registrant of a domain name may retain an ongoing beneficial interest in that domain name, such that a subsequent registrant could be deemed to be acting in effect on behalf of the previous registrant (see CompuCredit Corporation, CompuCredit Intellectual Property Holdings Corporation III v. Domain Capital and Aspire Prints, WIPO Case No. D2007-0407). A reading of UDRP decisions reveals that in such cases a panel recognized that there may be more than one respondent (See WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, WIPO Case No. D2006-0975; TDS Telecommunications Corporation v. Registrant [20758] Nevis Domains and Registrant [117460] Moniker Privacy Services, WIPO Case No. D2006-1620).

The Panel notes that on March 3, 2008, (and, therefore, when the Complaint was already filed) Mr. Guenther Edelsbacher, on behalf of Edelsbacher Design Group KEG, sent an e-mail to the Center stating that “we am really looking forward to respond to the WIPO. We believe it is about time that somebody stands up for all others who own or owned a domain name with myflorida in it”. Further, the Panel notes that the address of Edelsbacher Design Group is the same as one of Mr./Dr. Sigfried Maier’s addresses and that Mr. Guenther Edelsbacher sent an e-mail to the Complainant on October 25, 2007 in which he referred to the new holder as “the European branch”.

Accordingly, based on the evidence provided by the Complainant, it appears to the Panel that the current holder is acting on behalf of Edelsbacher Design Group KEG or at very least the latter maintains an ongoing beneficial interest in the Disputed Domain Name.

In the Panel’s view, the above mentioned circumstances are sufficient to infer that the Edelsbacher Design Group retains a beneficial interest in the Disputed Domain Name and that it is proper to consider both Mr./Dr. Siegfried Maier and Edelsbacher Design Group as the relevant Respondents in this decision.

B. UDRP Elements

If the Complainant is to succeed, it must prove each of the three elements referred to in Paragraph 4(a) of the Policy, namely that:

i. the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; and

ii. the Respondents have no rights or legitimate interests in respect of the Disputed Domain Name; and

iii. the Disputed Domain Name has been registered and is being used in bad faith.

The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in Paragraph 4(a) of the Policy.

C. Identical or Confusingly Similar

The Complainant has provided and the Panel accepts, evidence of its United States registered trademarks and common law usage rights for MYFLORIDA and for MYFLORIDA.COM. Both of the above mentioned trademarks have been widely used.

As noted above, based on the evidence provided by the Complainant, the trademark MYFLORIDA.COM has been incorporated into over 13 million Florida license plates and the trademark MYFLORIDA has been used as domain name since 2000 and the hosted website is one of the most frequently visited government websites in the United States of America.

The Disputed Domain Name wholly incorporates the Complainant’s trademarks. Numerous panels have held that when a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish identity or confusing similarity for the purposes of the Policy. (See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).

Further, the Disputed Domain Name differs from the Complainant’s trademarks merely by the addition of the generic and dictionary word “magazine”. This addition does not materially change the appearance, sound or meaning of the Complainant’s trademarks. In fact, the additional word is a generic term and could be a product (or service) offered by the Complainant (see Lilly ICOS LLC v. Lei Lu WIPO Case No. D2005–0436).

In this context, the Panel notes the reasoning in Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493, to the effect that “generally, a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it” (see also The Price Company v. Price Club, also known as Tsung-Pei Chang, WIPO Case No. D2000-0664).

In the Panel’s view, the Disputed Domain Name is confusingly similar to both of the Complainant’s registered trademarks, MYFLORIDA and MYFLORIDA.COM.

As such, the Complainant has satisfied Paragraph 4(a)(i) of the Policy.

D. Rights or Legitimate Interests

The Complainant must establish a prima facie case that the Respondents have no rights or legitimate interests in the Disputed Domain Name. The Respondents are not commonly known by the name “myflorida” and the Complainant has not licensed or authorized the Respondent to use this name. Moreover, the Respondents have never used the Disputed Domain Name (as Mr./Dr. Maier declares in the email sent to the Center on April 6, 2008). Accordingly, the Panel is satisfied that the Complainant has established a prima facie case that the Respondents have no rights or legitimate interests in the Disputed Domain Name.

The Respondents have not provided any proper explanation for its interest in registering the Disputed Domain Name. It is notable that in his e-mail dated April 6, 2008 the Respondent (Mr./Dr. Siegfried Maier) asserts that he has never used the Disputed Domain Name. There is no other indication apparent to the Panel as to why the Respondents have any right or interest in the Disputed Domain Name.

Based on the above, the Panel is satisfied that the Respondents have not rebutted the Complainant’s prima facie case that the Respondent’s have no rights or a legitimate interests in the Disputed Domain Name.

Therefore, the Complainant has satisfied Paragraph 4(a)(ii) of the Policy.

E. Registered and Used in Bad Faith

The Panel considers that, at the time of the Disputed Domain Name’s registration, it was highly unlikely that the Edelsbacher Design Group as the initial registrant was unaware of the Complainant’s trademark rights. As noted above, the Complainant’s trademarks for MYFLORIDA and for MYFLORIDA.COM were registered in the United States of America on September 12, 2000. In the same year the MyFlorida.com Internet portal was launched by the Complainant which became one of the most frequently visited government websites in the United States of America. It is noteworthy, that the trademark MYFLORIDA.COM has been incorporated into more than 13 million Florida license plates. The Panel infers that the Disputed Domain Name is likely to be well known to people in the United States of America and elsewhere both as a result of its advertisement and of the general reknown of the State of Florida. For these reasons and in particular in light of the Edelsbacher’s comments as noted above, the Panel infers that the Disputed Domain Name was registered purposely and in full knowledge of the Complainant’s trademark rights.

The Panel notes that the Disputed Domain Name has never been used since registration. Other panels have concluded that a “mere passive holding of a domain name can qualify as bad faith if the domain name owner's conduct creates the impression that the name is for sale” (see Cruzeiro Licenciamentos Ltda. v. David Sallen, Sallen Enterprises and J.D.Sallen Enterprises WIPO Case No. D2000-0715). In the case at issue, as noted above, there has been no positive use of the Disputed Domain Name and the Complainant was informed by Mr. Guenther Edelsbacher that if it was interested he was prepared to sell the Disputed Domain Name for a consideration.

Further, the Disputed Domain Name was transferred by a company (Edelsbacher Design Group) to an individual who apparently resides in Austria before the Complaint was filed, but after it received two letters from the Complainant objecting to use of the Disputed Domain Name. This transfer without due explanation appears to the Panel to be a sham transfer in an effort to avoid judicial or UDRP proceedings or, at very least, to make it more difficult for the Complainant to succeed. In the Panel’s view this amounts to an example of cyberflying and, consequently, bad faith on the part of the Respondents. Consequently, the Panel is prepared to infer that the Disputed Domain Name was both registered and used in bad faith.

For the reasons stated above, the Panel is satisfied that the Disputed Domain Name was registered and used in bad faith. As such, Paragraph 4(a)(i) of the Policy is satisfied.

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 <myfloridamagazine.com> be transferred to the Complainant.

Alistair Payne
Sole Panelist

Dated: April 23, 2008