Texas Lottery Commission v. Associates in
Implants
Claim Number: FA0203000105739
PARTIES
The
Complainant is Texas Lottery Commission,
Austin, TX (“Complainant”) represented by Dwayne
K. Goetzel. The Respondent is J. Kurpis Associates in Implants,
Ridgewood, NJ (“Respondent”) represented by Edward M. Weisz, of Cohen,
Pontani, Lieberman & Pavane.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <txlottery.com>,
registered with Network Solutions, Inc.
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.
Alan
L. Limbury as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (“the Forum”)
electronically on March 4, 2002; the Forum received a hard copy of the
Complaint on March 6, 2002.
On
March 7, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain name <txlottery.com>
is registered with Network Solutions, Inc. and that the Respondent is the
current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
Inc. registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On
March 8, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of March 28,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@txlottery.com by e-mail.
A
timely Response was received and determined to be complete on April 8, 2002.
On
April 15, 2002 the Complainant filed an additional submission, to which
Respondent filed a Response on April 17, 2002.
On April 17, 2002, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Alan L. Limbury
as Panelist.
RELIEF SOUGHT
The
Complainant requests that the domain name be transferred from the Respondent to
the Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
disputed domain name is confusingly similar to Complainant’s trademarks TEXAS
LOTTERY and TEXAS LOTTERY AND DESIGN.
Repondent has no rights or legitimate interests in respect to the
disputed domain name, which was registered and is being used in bad faith.
B.
Respondent
Complainant
has not established that it had any rights in either trademark before the
disputed domain name was registered. Respondent has a legitimate interest in
the disputed domain name, which Respondent obtained in good faith
C.
Additional Submissions
Complainant
had substantial common law rights in its mark TEXAS LOTTERY before the disputed
domain name was registered.
Respondent
The U.S.
PTO has not recognized Complainant’s rights in its trademark TEXAS LOTTERY.
Complainant has not put forth any evidence that Respondent registered the
disputed domain name in bad faith.
FINDINGS
Complainant, a Texas State Agency, is and
has been for years prior to 1996 the only entity authorized to sell electronic
and non-electronic lottery tickets in that State, pursuant to Texas Government
Code §§ 466.014-015. It commenced use of the trademark TEXAS LOTTERY on May 18,
1992 and has used it continuously and substantially exclusively since then,
spending over $100 million in advertising promoting that mark between 1992 and
1996 and generating over $11 billion in sales under that mark from 1992 to
1996.
On July 20, 1992 Complainant applied to
register the trademark TEXAS LOTTERY AND DEVICE with the U.S. PTO and that mark
was registered on March 9, 1993, with a disclaimer of the exclusive right to
use “TEXAS LOTTERY” apart from the mark as shown, (ie. including the design).
On September 27, 2001 Complainant applied to register TEXAS LOTTERY with the
U.S. PTO as a word mark. That application remains pending.
By May 2, 1996 Complainant had acquired
common law rights in the mark TEXAS LOTTERY and that mark was very well known
in Texas and elsewhere in the United States.
May 2, 1996 was the date on which
Respondent registered the disputed domain name <txlottery.com>,
for the purpose of offering lottery tickets and related goods and services from
that domain name address (in anticipation that evolving laws and attitudes
towards lotteries and online gaming will soon allow Respondent to do so) and in
the meantime to disseminate information about online gaming and to launch
lobbying efforts, particularly in the State of Texas, to legalize online
lottery sales.
Respondent has also registered the following domain names
all of which, prior to the commencement of this proceeding, contained “coming
soon” information, and which, since the commencement of this proceeding, offer
opportunities to participate in a petition seeking online lottery sales:
<malottery.com> on April 30, 1996
<njlottery.com> on April 30, 1996
<nylottery.com> on April 30, 1996
<azlottery.com> on April 30, 1996
<ctlottery.com> on April 30, 1996
<ohlottery.com>
on October 10, 1996
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights;
(2) the 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.
Identical and/or Confusingly Similar
The
test of confusing similarity under the Policy is confined to a comparison of
the disputed domain name and the trademark alone, independent of the other
marketing and use factors usually considered in trademark infringement or
unfair competition cases: BWT Brands, Inc
and British American Tobacco (Brands), Inc v. NABR, D2001-1480 (WIPO Mar. 26, 2002);
Koninklijke Philips Electronics N.V. v. In Seo Kim, D2001-1195 (WIPO Nov. 12, 2001); Energy
Source Inc. v. Your Energy Source, FA
96364 (Nat. Arb. Forum Feb.
19, 2001 ); Vivendi Universal v. Sallen, D2001-1121
(WIPO Nov. 7, 2001) and the cases there cited.
See also the similar approach adopted by the U.S. Federal
court in Northern Light Technology, Inc. v. Northern Lights Club 2000
U.S. Dist. LEXIS 4732 (D. Mass. Mar 31, 2000). In Microsoft Corp. v. Microsof.com aka
Tarek Ahmed, D2000-0548 (WIPO July 21, 2000) contributing factors to the
likelihood of confusion were held to be the visual similarity between the
domain name and the complainant’s mark and the mark being strong and
immediately recognizable.
The Panel finds the disputed domain name
to be confusingly similar to Complainant’s common law mark TEXAS LOTTERY,
having regard to the common use of TX as an abbreviation for Texas and as the
postcode for that State. See Microsoft Corp. v. Montrose Corp., D2000-1568
(WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com>
confusingly similar to Complainant’s mark even though the word MICROSOFT is abbreviated);
see also Minnesota State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum
Apr. 2, 2001) (finding the domain name <mnlottery.com> confusingly
similar to the mark MINNESOTA STATE LOTTERY).
Complainant has established this element
of its case.
Rights or Legitimate Interests
Complainant has not authorized
Respondent’s use in a domain name of its mark or a mark confusingly similar
thereto. Respondent is not known by the disputed domain name. Respondent has
used the disputed domain name only to post a “holding” message.
These circumstances are sufficient to
constitute a prima facie showing by
Complainant of absence of rights or legitimate interest in the disputed domain
name on the part of Respondent. The
evidentiary burden therefore shifts to Respondent to show by concrete evidence
that it does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) and the cases
there cited.
In State
Farm Mutual Auto. Ins. Co. v. Faw, FA 94971 (Nat. Arb. Forum July 12, 2000)
the respondent was found to have no legitimate interests in respect of the
domain name where he had not used nor developed the domain name for a
legitimate non-commercial or fair purpose and was not using the domain name in
connection with a bona fide offering of goods or services. See also Leland
Stanford Junior University v. Zedlar Transcription & Translation, FA
94970 (Nat. Arb. Forum July 11, 2000).
Respondent has shown no preparations,
prior to this dispute, to use the disputed domain name and admits its use for
its intended purpose would be illegal, because only Complainant is authorized
to offer lottery tickets in Texas. The Panel finds Respondent was aware of
these circumstances at the time of registration of the disputed domain name,
since Respondent has displayed knowledge of the Congressional ban in the 1800s
on interstate lotteries and of recent moves to have this ban lifted.
Respondent’s intention to launch lobbying
efforts, by means of the disputed domain name, particularly in the State of
Texas, indicate an awareness of the likelihood that the use of the letters TX
in the disputed domain name would be understood as referring to that State.
Under these circumstances and having regard to the enormous sums spent by
Complainant since 1992 in promoting its common law mark TEXAS LOTTERY, the
Panel finds Respondent was aware of that mark prior to registering the disputed
domain name and was aware that any use of the disputed domain name in
connection with lotteries and Texas would be to trade off the fame of
Complainant’s mark. Use
which intentionally trades on the fame of another cannot constitute a ‘bona
fide’ offering of goods or services: Madonna Ciccone, p/k/a
Madonna v. Dan Parisi and “Madonna.com,” D2000-0847 (WIPO Oct. 12, 2000).
The Panel finds Respondent has not shown
a legitimate interest in the disputed domain name and that Complainant has
established this element of its case.
Registration and Use in Bad Faith
None of the circumstances in paragraph
4(b) of the Policy is established. That paragraph is not exhaustive, however.
In SportSoft Golf, Inc. v. Hale
Irwin’s Golfers’ Passport, FA 94956 (Nat. Arb. Forum July 11, 2000) a
finding of bad faith was made where the respondent “knew or should have known”
of the registration and use of the trade mark prior to registering the domain
name. Likewise Marriott International, Inc. v. John Marriot, FA 94737
(Nat. Arb. Forum June 15, 2000); Canada Inc. v. Sandro Ursino, AF-0211
(eResolution July 3, 2000) and Centeon L.L.C./Aventis Behring L.L.C. v.
Ebiotech.com, FA 95037 (Nat. Arb. Forum July 20, 2000). Here the Panel has
found Respondent had actual knowledge of Complainant’s common law mark at the
time of Registration of the disputed domain name, knew any use of the domain
name for the purpose of a lottery available in Texas would be illegal and knew
people would likely be misled into thinking his site was associated with
Complainant.
Under these circumstances the Panel finds
the disputed domain name was registered in bad faith.
It is common ground that Respondent has
not used the disputed domain name, save for an innocuous “holding” notice at
the web site. However, the ‘use’ requirement has been found not to require
positive action, inaction being within the concept: Telstra Corp. Ltd. v.
Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000); Barney’s, Inc. v.
BNY Bulletin Board, D2000-0059 (WIPO Apr. 2, 2000); CBS Broadcasting,
Inc. v. Toeppen, D2000-0400 (WIPO
July 6, 2000); Video Networks Ltd. v. King, D2000-0487 (WIPO July 20, 2000);
Recordati S.P.A. v. Domain Name Clearing Co., D2000-0194 (WIPO July 21,
2000) and Revlon Consumer Products Corporation v. Yoram Yosef aka Joe
Goldman, D2000-0468 (WIPO July 27, 2000).
The leading case on passive use, Telstra
Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb.18, 2000)
emphasized that all the circumstances of the case must be considered. In that
case passive holding was held to amount to acting in bad faith where:
(i) the
Complainant’s trademark had a strong reputation and was widely known;
(ii) the
Respondent provided no evidence of any actual or contemplated good faith use by
it of the domain name;
(iii) the
Respondent had taken active steps to conceal its true identity, by operating
under a name that is not a registered business name;
(iv) the
Respondent had actively provided, and failed to correct, false contact details,
in breach of its registration agreement, and
(v) taking
into account all of the above, it was not possible to conceive of any plausible
actual or contemplated active use of the domain name by the Respondent that
would not be illegitimate, such as by being a passing off, an infringement of
consumer protection legislation, or an infringement of the Complainant’s rights
under trademark law.
Here there is no question of any false
contact information or concealment. However, Complainant’s trademark is
distinctive and well-known in Texas, where Respondent proposes to make
available its lottery business, and elsewhere. The descriptive nature of the
disputed domain name is such that it cannot be used in relation to lotteries in
Texas without infringing Complainant’s rights nor can it be used in Texas or
elsewhere in the United States in connection with non-lottery related services
without misleading the public. Respondent has been waiting, in circumstances in
which it cannot legitimately use the disputed domain name for the purpose for
which Respondent says it was registered. Since registering the disputed domain
name in 1996 Respondent has taken no steps to obtain the necessary regulatory
approval to operate a lottery that would be available in Texas. Under these
circumstances the Panel finds Respondent’s passive use is in bad faith.
Further, In light of Respondent’s choice
of domain name with knowledge (as the Panel has found) of Complainants’ mark
and reputation in the lottery industry and Respondent’s expressed intention to
use the domain name to provide online lottery services (which would be
available in Texas) if he can obtain a licence to do so, the Panel finds the
Respondent is using the domain name (albeit passively) in order to advance his
aim of obtaining such a licence, knowing that the domain name represents the
goodwill of Complainant and that, while Respondent remains the registrant of
the disputed domain name, Complainant may be coerced into dealing with
Respondent when it comes to granting such a licence. The Panel finds such use
to be use in bad faith. See Gilmour,
et al v. Cenicolla, D2000-1459 (WIPO Dec. 15, 2000).
Complainant has
established this element of its case.
DECISION
Pursuant
to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel directs that
the domain name <txlottery.com> be transferred to the
Complainant.
___________________________________________________
Alan L. Limbury, Panelist
Dated: April 29, 2002
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