national arbitration forum

 

DECISION

 

Department of General Services, State of Maryland v. Domain Privacy Group

Claim Number: FA1303001488524

PARTIES

Complainant is Department of General Services, State of Maryland (“Complainant”), represented by John B. Evermann, Maryland, USA.  Respondent is Domain Privacy Group (“Respondent”), Massachusetts, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <emarylandmarketplace.com>, registered with Domain.com, LLC.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

The Honourable Neil Anthony Brown QC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 5, 2013; the National Arbitration Forum received payment on March 5, 2013.

 

On March 5, 2013, Domain.com, LLC confirmed by e-mail to the National Arbitration Forum that the <emarylandmarketplace.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name.  Domain.com, LLC has verified that Respondent is bound by the Domain.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On March 6, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 26, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@emarylandmarketplace.com.  Also on March 6, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On April1, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

Complainant made the following contentions.

1. Complainant was the registrant of the disputed domain name and used it as a government procurement portal from 2001 until 2012 when its registration lapsed and was not renewed.

2. Respondent thereupon became the registrant of the domain name.

3. The disputed domain name is identical to the service mark of the Complainant and Complainant’s longstanding governmental common law marks EMARYLAND and EMARYLAND MARKETPLACE.

4. Complainant has held the two service marks and continuously operated under them in furtherance of its procurement authority since 2001.

5. The two service marks were also cancelled by the United States Patent and Trademark Office (“USPTO”) on October 5, 2012.

6. Complainant previously held and has filed to renew both federal service marks.

7. Respondent has no rights or legitimate interests in the domain name as the use of the disputed domain name misleadingly diverts consumers to a separate on-line location of Prosper.com providing personal loan products and services. UDRP Rule 3(b)(ix)(2); UDRP Policy ¶ 4(a)(ii) and ¶ 4(c). These services are in no way related to the services provided by a governmental entity and have no public purpose.

8. The disputed domain name was registered by Respondent and is being

used in bad faith.

9. Respondent knew, or reasonably should have known, that Complainant holds the common law trademarks and had them previously registered with the United States Patent and Trademark Office.

10. In addition, Respondent knew, or reasonably should have known of the State’s online procurement system by the same name as its domain name- eMarylandMarketplace.com.

11. Evidence of the Respondent’s knowledge is clear on the face of Respondent’s website where the internet pages currently posted offer similar information and language to the Complainant’s eMaryland Marketplace procurement site. Indeed, Respondent likely registered the name because of the State’s use of the site as its sole online procurement system.

12. Respondent has infringed on the State’s online presence and is an individual

unfairly profiting from the resulting public confusion.

 13. Complainant alleges that Respondent, in using emarylandmarketplace.com,

intentionally seeks to mislead Internet users in believing that the products and

services available therein are sponsored, affiliated and/or endorsed by a

governmental entity. Respondent’s current website of

eMarylandMarketplace.com is accessed by typing in the domain name address in the internet address bar. Once at the website, there are several tabs mimicking the legitimate services provided by the State’s eMaryland Marketplace. Included

among these tabs at Respondent’s eMarylandMarketplace.com site, is a new tab

inserted by Respondent titled “Loans” that when hovered over provide three

options – “Loan Types”, “Personal Loans” and “Business Loans”. Once any of

these options are clicked the unsuspecting user is deceptively redirected

immediately to the Prosper.com website and offered loan services. The

Department of General Services and the State of Maryland is not authorized and

therefore, does not provide nor endorse loan services to the public.

14. Complainant further alleges that this activity results in private commercial gain and has no public purpose, and is a parasitic use and infringement of the State’s legitimate

trademarks. Complainant has notified the Respondent by two letters forwarded

by the Domain Name Registration Service Provider, Dotster.com, that it must

cease and desist use of the domain name eMarylandMarketplace.com, that

Respondent must relinquish its registration and transfer the domain name to the

State, and that Complainant was renewing its federal trademarks. Respondent has failed to do so. UDRP Rule 3(b)(ix)(3); UDRP Policy ¶ 4(a)(iii) and ¶ 4(b).

 

B. Respondent

Respondent failed to submit a Response in this proceeding. However, Respondent replied to Complainant’s first cease and desist letter by way of email dated October 17, 2012 and as the Panel has had regard to it in reaching its decision and to assure Respondent that it has been taken into account, it will set out the email here.

“From: <xxxxxx@fas.harvard.edu>

To: <xxxxxx@dgs.state.md.us>, <xxxxxx@dgs.state.md.us>

Date: 10/17/2012 4:07 PM

Subject: RE: EMarylandMarketplace.com Domain Name

Dear Mr. Evermann, et al:

Regarding a letter from yourself and Mr. Scott C. Walchak which was forwarded to me by the registrar of the internet domain name "EMarylandMarketplace.com":

Claim 1: That "EMarylandMarketplace.com" was previously owned by your state.

I stipulate that this domain was previously owned by the State of Maryland and

that the State of Maryland previously used this domain to do online procuring.

As you may know, the domain name EMarylandMarketplace.com was not renewed by the State of Maryland. In fact, it appears that the State of Maryland has moved its procurement operations to another provider and another domain name some time ago. This is likely why the domain name was not renewed by your department and/or the service providers with whom you contracted to run it.

As you know, when a name, in this case EMarylandMarketplace.com, is not paid

for, all ownership rights are thereby relinquished and the name is placed back

into the public pool of names - which are then available for purchase by anyone

choosing to pay for such ownership and all the rights which accompany same.

Claim 2: That the State of Maryland holds a registered trademark on the term

"emarylandmarketplace".

As you may not be aware, all trademarks regarding this particular name are as of

my research today expired and/or cancelled - "DEAD" in the language of the USPTO- some of them having been in this "DEAD" state for quite a long period of time.

There are no "LIVE" trademarks impacting the use of the domain name.

I welcome you to research this matter but I have already wasted time doing it.

Claim 3: Concern on the part of the State of Maryland that use of this name may

"be misleading to consumers, be in violation of federal cyberpiracy law, or an

infringement of the trademark held by the State of Maryland"

To slip out of lawyer mode for a moment, this website is merely a placeholder,

biding time, while a "stealth" start-up company is developed around this name,

something which - as it may create opportunities in MD - I'm sure you support.

There is, at the moment - and, likely, for quite some time - no "commerce" of

which to speak, no way for a user to interact with the site, no requests for

login credentials (usernames or passwords) of any type, and NO intention to

mislead consumers. There is additionally NO "pirated" content on the site, nor

does the State of Maryland any longer have any claims - ownership, trademark, or otherwise - upon this domain. I have already addressed the trademark issue, in full, above.

In closing, I would like to point out that upon purchasing this domain, we took

great pains to include a disclaimer ("This site is not affiliated with the

Government of the State of Maryland") on each page, purely out of an abundance of caution, and, additionally, to make sure that most "non-direct" traffic to (12/3/2012) John Evermann - RE: EMarylandMarketplace.com Domain Name Page 2 the site (via, eg, Google) would be sent, automatically, to your State's new procurement portal residing at Buyspeed.com. This was done because we know that it often takes the search engines quite a bit of time to update their listings - and we did not want you, or your State, to suffer due to that delay- even though doing such was beyond the standard of normal care and, I believe, shows our good intentions and good faith in this matter.

If you would like for us to remove this disclaimer or to stop sending traffic

which, because of search engine delays, may be visiting our site instead your

new site, at Buyspeed.com, all you have to do is inform us, and it will be so.

Otherwise we invite you to rest easy on this matter and accept our good faith.

Regards and thanks, et cetera.”

 

FINDINGS

1. Complainant is a department of government in the State of Maryland in the United States.

2. Among other things, it is responsible for the public procurement of goods and services in Maryland.

3. Complainant was formerly the registered proprietor of two service marks for EMARYLAND and EMARYLAND MARKETPLACE, the registration of both of which was not renewed and the registrations were cancelled on October 5,l 2012.

4. Complainant has applied to register the two service marks anew.

5. Complainant registered the disputed domain name in 2001 and held it for 11 years, whereupon its registration lapsed and the Respondent registered it, presumably on a date in 2012.

6. The disputed domain name is used in such a way that it diverts internet users

 to a separate on-line location of <prosper.com> that provides personal loan products and services.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this 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."

 

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:

 

(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  Respondent has no rights or legitimate interests in respect of the domain name; and

(3)  the domain name has been registered and is being used in bad faith.

 

In view of Respondent's failure to submit a formal response, but in view also of the fact that Respondent sent the above email to Complainant, the Panel shall decide this administrative proceeding on the basis of Complainant's submissions and evidence and the contents of Respondent’s email.  

 

Identical and/or Confusingly Similar

The first question that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant used to have two service marks for EMARYLAND and EMARYLAND MARKETPLACE that would have served for that purpose, but they were both cancelled by USPTO on October 5, 2012. Complainant says that this happened because of a changeover in State personnel. Complainant does not therefore have a trademark or service mark that it can rely on in this proceeding. Complainant says , however, that it has common law or unregistered trademark rights and it is well established that if a complainant can make out a case for a common law or unregistered trademark  that will suffice in proceedings under the UDRP.

 

The Panel finds that Complainant has made out a case for a common law or unregistered trademark in EMARYLAND and EMARYLAND MARKETPLACE, based on the evidence adduced by Complainant. In summary that evidence is that the State used the registered service marks since January 1, 2001 in furtherance of the Complainant’s statutory procurement authority to procure on-line goods and services for the State. It appears that a large amount of procurement has been effected through the use of the two service marks and the brand that they embody and inevitably they would have become well known, at least to the market of those who sell goods and services to the State of Maryland, both generally and as the source of the services provided under the marks and of the buying and selling of goods through the portal that they operated. In that regard, it seems from the Complaint that the use of the name is wider than within the State of Maryland and that it has probably become known throughout other parts of the United States, at least among suppliers and potential suppliers of goods and services, as the source of purchasing services offered by the State of Maryland.

 

In addition, the Panel has been influenced by the fact, as it is stated in the Complaint, that “ “eMaryland Marketplace” appears in Maryland State Statute and was enacted into law as the State of Maryland’s Internet based procurement system since 2002 (See Maryland Annotated Code, State Finance and Procurement Article, §13-101, et seq.).” If the same name that the State of Maryland says is a common law trademark which it has used for over 10 years is enshrined in a State statute, the Panel should accept that the name in question has in fact been identified to the public as the source of the services offered under that name. It therefore qualifies as a common law trademark on that basis.

 

Accordingly, the Panel finds that Complainant has common law trademark rights to EMARYLAND and EMARYLAND MARKETPLACE and that it has had those rights since at least 2001.

 

The next question that arises is whether the disputed domain name is identical or confusingly similar to the common law trademarks. Having made a comparison between the domain name and the two trademarks, the Panel finds the <emarylandmarketplace.com> domain name is identical to the EMARYLAND MARKETPLACE trademark and confusingly similar to the EMARYLAND trademark.

 

Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:

 

(a)  Respondent has chosen to take Complainant’s EMARYLAND and EMARYLANDMARKETPLACE common law trademarks and to use them in their entirety in the domain name, raising the presumption in the minds of at least some internet users that it is an official domain name that will lead to an official website of the State of Maryland, especially as the evidence is that the two trademarks have become known over several years as the official State portals used for government procurement in Maryland;

(b)  Respondent has then used the domain name to resolve to a website that has wording on it that suggests it is associated with government procurement of goods and services and which, because of tabs on the site, can lead to www.prosper.com which offers personal loan products and services that are in no way related to the services provided by Complainant and have no public purpose.

(c)  Respondent has engaged in these activities without the consent or approval of Complainant.

As Complainant has made out a prima facie case, it is then a matter of determining if Respondent has rebutted that case. Although Respondent’s version of events was provided by email before the Complaint was filed and although it has not filed a formal Response, the Panel has an understanding of Respondent’s position on this issue as result of considering the contents of that email. Respondent seeks to mount its case by submitting as follows.

 

First, it argues that the domain name expired and that Respondent is within its rights to acquire it. That is true enough as a matter of fact and many domain names are acquired after their registration has expired. But a party in the position of Complainant, or indeed any other party that believes it has a right to the domain name is still able to file a Complaint under the UDRP and such a claim is then judged on its merits. That is the process that is presently under way.

 

Secondly, Respondent says that Complainant has no trademark as its registered marks have expired. The latter statement is true, but it is now well established that under the UDRP a party can make out a claim for a common law or unregistered trademark and that is what has happened in the present case. It is is not always easy to see if a common law or unregistered trademark has been made out, but in the present case the Panel has concluded that a case can be made out, mainly because the registered service marks, while they were registered, were widely used and over a considerable period of time and must have become known in the commercial community as they means by which the State of Maryland provided one of its important services, namely procurement. Moreover, it should be noted that EMARYLAND MARKETPLACE has been legislated for by name and the Panel should not lightly disregard that fact.

 

Thirdly, Respondent responds to the concern of the State of Maryland that use of the disputed domain name may "be misleading to consumers, be in violation of federal cyberpiracy law, or an infringement of the trademark held by the State of Maryland". Respondent in that regard argues that it intends to use the domain name for other purposes, that it is not misleading internet users, email traffic is redirected to a new State of Maryland website and that it has put a disclaimer on its website. Each of these steps has its own value, of course, but the difficulty with all of them is that they do not rebut the concern, which is really that Respondent is holding a domain name that would be understood by many people to be a State instrumentality providing State services, whereas at the present it appears to be a private service offering clearly commercial services and services that the State is not permitted to offer. It should be added that the disclaimer is not of much effect because of its position on the website.

 

The Panel’s view, therefore is that Respondent has not rebutted the prima facie case against it and the Panel must find that Respondent has no right or legitimate interest in the disputed domain name.

 

Complainant has thus made out the second of the three elements that it must establish.

 

Registration and Use in Bad Faith

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has also been used in bad faith: see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

 

Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith.

Paragraph 4(b) of the Policy sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive.

The four specified circumstances are:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s 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 the respondent’s website or location or of a product or service on the site or location.

The Complainant relies on paragraphs 4(b)(iv) of the Policy and also on the general notion of bad faith, which it is clearly entitled to do, for there have been many UDRP decisions that have held that bad faith is not limited to the factors set out in paragraph 4(b) of the Policy.

The Panel finds that the conduct of Respondent brings the case within paragraphs 4(b)(iv) of the Policy and also within the general notion of bad faith for the following reasons. The Panel has given close attention to two exhibits filed by Complainant. The first is Annex 8 which is a screenshot of the home page of Respondent’s website to which the domain name resolves as it was on March 5, 2013. The service offered has been given the name Electronic Maryland Marketplace and The Electronic Maryland Marketplace and contains the statement: “Online bidding portals can make bidding on government jobs faster, paperless and less of a headache. Businesses can renew their local online government bidding portals to review the long list of jobs the government needs fulfilled quickly and cost effectively.” It than contains the following statement:

“Winning a bid and supplying your local government with services adds credibility and reliability to your business. Start today and look into an alternative business practice that helps both you and your state and local government.”

These statements indicate to the Panel that the intention of Respondent was to use the domain name to give the impression that it was in some way offering government contracts for goods and services under the imprimatur of the Electronic Maryland Marketplace. It is certainly offering some sort of service under that name, the essence of which is bidding for government contracts for goods and services to be procured by the Government of Maryland. Those statements bring the case within the provisions of Paragraph 4(b) (iv) of the Policy, at least so far as the use of the domain name is concerned. But if that is its use, as the Panel finds it is, it must also be acknowledged that the domain name was registered so that it could be used in that manner and such a consideration amounts to bad faith registration.

The second exhibit that has influenced the Panel is Annex 9, a screenshot of the website as www.prosper.com to which the domain name may be directed or at least to which it could be directed on March 5, 2013 when the screenshot was taken.  This exhibit is introduced by the statement in the Complaint that:

“Once at the website (i.e. the website to which the domain name resolves) there are several tabs mimicking the Legitimate services provided by the State’s eMaryland Marketplace. Included among these tabs at Respondent’s eMarylandMarketplace.com site, is a new tab inserted by Respondent titled “Loans” that when hovered over provide three options – “Loan Types”, “Personal Loans” and “Business Loans”.

 

Those options lead to the website at www.prosper.com. The web page at www.prosper.com is revealed as a promotion from a loan service with the usual details such as interest rates. It is clear from this extract that Respondent has been using the domain name and all of the implications standing behind it, including the implication that it is a government service, to entice internet users to peruse this loan advertisement and consider loans from the provider, although offering loans is not an approved activity of the State of Maryland or its service formerly operated under the domain name. The screenshot also brings the case within the provisions of paragraph 4(b) (iv) as it creates the confusion that the loan service is affiliated with or endorsed by the State of Maryland, which is not true. This indicates to the Panel that the domain name in this respect is used in bad faith and that as it was registered to achieve this purpose it was also registered in bad faith.

 

In addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the EMARYLAND and EMARYLAND MARKETPLACE common law trademarks and in view of the way Respondent has used them, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.

 

Complainant has thus made out the third of the three elements that it must establish.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <emarylandmarketplace.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honourable Neil Anthony Brown QC

Panelist

Dated:  April 2, 2013

 

 

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