Texas Lottery Commission v. Domain Investments
Claim Number: FA2107001955384
Complainant is Texas Lottery Commission (“Complainant”), represented by Dwayne K. Goetzel, Texas, USA. Respondent is Domain Investments (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <texaslotter.com>, registered with 1API GmbH.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 15, 2021; the Forum received payment on July 15, 2021.
On July 16, 2021, 1API GmbH confirmed by e-mail to the Forum that the <texaslotter.com> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH 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 July 16, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 5, 2021 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@texaslotter.com. Also on July 16, 2021, 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 Forum transmitted to the parties a Notification of Respondent Default.
On August 10, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant, Texas Lottery Commission, is a government-operated lottery. Complainant has rights in the TEXAS LOTTERY mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,712,848, registered May 6, 2003). The disputed domain name is confusingly similar to Complainant’s mark since it incorporates Complainant’s mark in its entirety, minus the letter “y.”
ii) Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the TEXAS LOTTERY mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use because Respondent offers the domain name for sale on the website and engages in typosquatting in misspelling “lottery” as “lotter.”
iii) Respondent registered and uses the disputed domain name in bad faith because Respondent offers the domain for sale and engages in typosquatting, which diverts consumers from Complainant’s online location and is likely to cause confusion among relevant consumers. Moreover, Respondent had constructive and/or actual knowledge of Complainant’s rights in the TEXAS LOTTERY mark based on Complainant’s use of the mark in commerce and registration with the USPTO years prior to Respondent’s acquisition of the domain name. Complainant also owns <txlottery.org>, registered 22 years prior to Respondent’s registration of the disputed domain name.
B. Respondent
Respondent did not submit a response to this proceeding.
1. The disputed domain name was registered on March 16, 2021.
2. Complainant has established rights in the TEXAS LOTTERY mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,712,848, registered May 6, 2003).
3. Respondent offers the disputed domain name for sale.
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 response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the TEXAS LOTTERY mark through its registration with the USPTO (e.g., Reg. No. 2,712,848, registered May 6, 2003). Registration of a mark with a national trademark agency is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name is confusingly similar to Complainant’s TEXAS LOTTERY mark because it incorporates Complainant’s mark in its entirety, minus the letter “y.” Eliminating a letter from the mark and appending a gTLD do not generally negate a finding of confusing similarity. See Klein Tools, Inc. v. chenxinqi, FA 1617328 (Forum July 6, 2018) (finding that the <klentools.com> domain name is confusingly similar to the KLEIN TOOLS mark as it contains the entire BANK OF AMERICA mark and merely omits the letter “l” and adds the “.com” generic top-level domain (“gTLD”)); see also Geisinger Clinic v. Hulmiho Ukolen / Poste restante, FA 1704945 (Forum Jan. 10, 2017) (“Complainant alleges that Respondent’s <geisnger.org> domain name is confusingly similar to the GEISINGER mark because it contains the mark, minus a letter “i,” combined with the gTLD “.org.” The Panel finds the <geisnger.org> domain name confusingly similar to the GEISINGER mark.”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent does not have rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the TEXAS LOTTERY mark. Under Policy ¶ 4(c)(ii), when no response is submitted, relevant WHOIS information may demonstrate that a respondent is not commonly known by a disputed domain name. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”). Additionally, lack of authorization to use a mark is further evidence that a respondent is not commonly known by the mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information identifies “Domain Investment” as the registrant of the domain name. Additionally, Complainant asserts that it has not licensed or permitted Respondent to use the TEXAS LOTTERY mark. Thus, the Panel finds that Respondent is not commonly known by the domain names under Policy ¶ 4(c)(ii).
Furthermore, Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent offers the domain name for sale on the website. Offering the domain name for sale, for example, by displaying a “for sale” message on the website, does not constitute bona fide offerings of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015) (“The Resolving parked page advertises the sale of the domain name with the message ‘Would you like to buy this domain?’ The Panel accepts this offer as demonstrative of Respondent’s willingness to sell the disputed domain name, and finds that such behavior provides additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name.”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)). Complainant provides screenshots of Respondent’s website, which displays the message that “<texaslotter.com> is available for sale!” Thus, the Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent registered and uses the disputed domain name in bad faith because Respondent offers the domain for sale. Under Policy ¶ 4(b)(i), bad faith has been found when a respondent makes a general offer for sale of the domain name on the website. See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”). The Panel recalls that Complainant provides screenshots of Respondent’s website, where there is a message offering the domain name for sale. The Panel therefore finds bad faith under Policy ¶ 4(b)(i).
Furthermore, Complainant contends that Respondent’s bad faith is evidenced by Respondent’s use of typosquatting in misspelling “TEXAS LOTTERY” as “Texas Lotter.” Complainant contends that this practice diverts consumers from Complainant’s online location and is likely to cause confusion among relevant consumers. Per Policy ¶ 4(a)(iii), typosquatting is itself evidence of bad faith registration and use. See Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant.”); see also Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sept. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”). Therefore, the Panel finds Respondent’s bad faith registration and use of the disputed domain name per Policy ¶ 4(a)(iii).
Lastly, Complainant argues that Respondent registered the disputed domain name with actual and/or constructive knowledge of Complainant’s rights in the TEXAS LOTTERY mark based on Complainant’s use of the mark to offer its goods and services and Complainant’s registration of the mark with the USPTO, years prior to Respondent’s acquisition of the domain name. While constructive knowledge is insufficient for finding of bad faith, per Policy ¶ 4(a)(iii) actual knowledge of a complainant’s trademark rights is sufficient to establish bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). The Panel notes that Complainant started using the mark in commerce 19 years before Respondent’s registration of the disputed domain name. Complainant also contends that its own domain name, <txlottery.org>, was registered 22 years prior to Respondent’s registration of the disputed domain name. The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain name by Respondent that Respondent had actual knowledge of Complainant’s rights in the TEXAS LOTTERY mark, and thus it finds bad faith registration of the disputed domain name pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <texaslotter.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: August 12, 2021
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