Claim Number: FA1007001337211
PARTIES
Complainant is Texas Lottery Commission (“Complainant”), represented by Dwayne
K.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <lottotexas.com>, <lottotexas.net>,
and <megaplier.org>,
registered with GoDaddy.com, 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.
Roberto A. Bianchi as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 23, 2010.
On July 26, 2010, GoDaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <lottotexas.com>, <lottotexas.net>,
and <megaplier.org>
domain names are registered with GoDaddy.com,
Inc. and that the Respondent is the current registrant of the
names. GoDaddy.com,
Inc. has verified that Respondent is bound by the GoDaddy.com, 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 July 28, 2010, the Forum served the Complaint and all Annexes,
including a Written Notice of the Complaint, setting a deadline of August 17,
2010 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@lottotexas.com,
postmaster@lottotexas.net, and postmaster@megaplier.org. Also on July 28, 2010, the Written Notice of
the Complaint, notifying Respondent of the email 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.
A timely Response was received and determined to be complete on August 17, 2010.
On August 23, 2010, Complainant submitted Complainant’s Additional
Submission. On August 30, 2010, Respondent submitted Respondent’s Additional
Response. Both additional submissions were timely, and in accordance with The
Forum’s Supplemental Rule 7.
On August 24, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Roberto A. Bianchi as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
In its Complaint, Complainant contends as follows:
- The disputed domain names are identical or confusingly similar to trademarks or service marks in which Complainant has rights.
-
Respondent has no legitimate interests in the disputed
domain names. Respondent, under the domain names, does not make a bona fide offering of goods or services. Respondent
admits that it is using the disputed domain names to market and promote its
website “The Lotto Report”. While Respondent may offer its goods or services
under the name “The Lotto Report,” the subsequent acquisition of domain names
that contain Complainant’s registered trademarks is not necessary to the
operation or identification of Respondent’s business, and is not a bona fide use of Complainant’s
trademarks. Respondent admittedly is
using Complainant’s trademarks to “market and promote” “The Lotto Report”,
thereby indicating that Respondent is attracting Internet users to its website
through the use of Complainant’s marks.
Therefore, the use of the Domain Names by Respondent is not bona fide. Respondent is known as “The Lotto Report”, and it is not known by
the disputed domain names. Respondent
has no affiliation or relationship with Complainant. Respondent is not an authorized vendor or
retailer of lottery-related services in the State of
- Respondent had been offering “The Lotto Report” for approximately 6 years before registering <megaplier.org> and about 10 years before obtaining the third party registration to <lottotexas.com> and <lottotexas.net>. There is no plausible reason for an individual domain name registrant such as the Respondent to register the Domain Names other than to trade on the goodwill inherent in LOTTO TEXAS and MEGAPLIER for its own commercial gain, to impede Complainant’s rights and duties, and to prevent Complainant from registering and using the disputed domain names simply out of malice towards Complainant.
- Respondent’s use of the Domain Names is not in connection with any noncommercial or fair use. Respondent sells subscriptions to “The Lotto Report”. In addition, Respondent admits that it uses the disputed domain names to market “The Lotto Report”. Consumers will be confused and will become frustrated if the site associated with the disputed domain names is not in fact related to Complainant or its services, or if these domain names are used in connection with a website that generally finds fault with every single thing that Complainant may do or say. Such pages reflect poorly upon Complainant, and affect the purchasing decisions of consumers.
- The disputed domain names were registered and are used in bad faith. Respondent admits that it is using the domain names to “market and promote” “The Lotto Report”. Respondent’s own website indicates that it sells subscriptions to third parties of “The Lotto Report”. Therefore, Respondent is using the domain names, which contain Complainant’s registered trademarks, for Respondent’s own commercial benefit. Respondent’s registration of <lottotexas.com>, <lottotexas.net>, and <megaplier.org> and admission of using those domain names to “market and promote” “The Lotto Report”, impermissibly suggests that Respondent is, or will be, offering lottery-related services under the domain names, which constitutes an unauthorized trading upon the goodwill in and to Complainant’s registered trademarks in violation of Complainant’s rights, and suggests the potential future unauthorized offering of lottery related services.
-
Complainant is authorized to provide and administer its
games of chance and lottery related services pursuant to the Texas Government
Code §§ 466.014-015. The foregoing statutes were “on the
books” for years prior to Respondent’s registration of the disputed domain
names. Respondent therefore knew or
should have known that it was not authorized to register or utilize the domain
names “lottotexas.com,” “lottotexas.net,” or “megaplier.org.” As a self-appointed
“overseer” of Complainant’s activities, Respondent certainly knew of Complainant and its trademark rights
prior to obtaining the Domain Names. Respondent’s prior knowledge is
further confirmed by virtue of the fact that Complainant registered its own
domain name, <txlottery.org>, in April 1999, more than five years prior
to Respondent’s registration of <megaplier.org>
and more than nine years before Respondent acquired any rights to <lottotexas.com> and <lottotexas.net>. Complainant has used its LOTTO
- Respondent’s registration and/or acquisition of the disputed domain names came after (1) Complainant’s trademarks were first used, (2) applications for Complainant’s trademarks were filed, (3) the LOTTO TEXAS marks were registered, and (4) Complainant’s domain name was registered. This bad faith usage has diverted consumers from Complainant’s online location to a site accessible under the domain names, which will cause a likelihood of confusion, harm the goodwill represented by Complainant’s trademarks, and prevent Complainant from using its trademarks in association with the domain names.
B. Respondent
In its Response, Respondent contends the following:
-
The disputed domain names are not identical or
confusingly similar to a trademark or service mark in which the Complainant has
rights. Respondent disputes the validity of the “Lotto Texas” (Registration
numbers 2,812,137 and 2,708,643) mark as geographically descriptive along with
Complainant’s disclaimer (“No claim is made to the exclusive right to use
‘Lotto’ apart from the mark as shown.”) Complainant, through its own admission,
claims to not have an exclusive right to use the work “Lotto” as a mark.
-
Respondent, The Lotto Report, has rights and
legitimate interests in respect of the disputed domain names. Respondent Dawn
Nettles is making a bona fide offering of services at <lottotexas.com>, <lottotexas.net>
and <megaplier.org> by
providing lottery results and prize payouts immediately. Respondent also
provides Texas Lottery Commission rule changes, profit/loss data, game
information, news, public information and hearing announcements “very quickly,
accurately and in laypersons’ terms.” Respondent provides information about the
Texas Lottery Commission, recent lottery results, payout prizes and archived
results on <lottotexas.com>, <lottotexas.net> and <megaplier.org> to visitors
accurately and rapidly, free of charge. The domain names <lottotexas.com> and <lottotexas.net>
have been used since 1996 continuously as a public service in reporting lottery
results in an organized manner to Texans and has not made any income from the
sales of products or services. Respondent purchased <lottotexas.com> and <lottotexas.net>
from Bobby Knight on December 30, 2008 for $50. Respondent has maintained the
content per the wishes of the previous owner and the user community. The Texas
Lottery did not have a website until 1999.
-
The links from <lottotexas.com>,
<lottotexas.net> and <megaplier.org> do not resolve to
the “subscribe to” the Lotto Report as claimed by the Complainant. These links
resolve to pages where visitors can quickly determine how to find lottery
results, prize payouts, past winning numbers, financial data and consumer news
all pertaining to the
-
Respondent has been known as the “Lotto Texas
Watchdog” and “Lotto Texas Expert” since at least as early as 1999. Respondent
has prominently displayed the disclaimer to having any relationship to the
Complainant as shown on the disputed web sites.
-
Respondent has not registered the domain names in bad
faith. As previously discussed, she continued the legacy of the domain names of
lottotexas.com/net for Bobby Knight who held the domain names since 1996, three
years prior to Texas Lottery Commission obtaining a website for their lottery.
-
It is curious that Complainant states that Respondent
had “inside knowledge” about the “megaplier” trademark by attending a public
hearing. Complainant admits to using the mark “MEGAPLIER” mark in commerce
since October 16, 2003. A lottery supporter, Todd Northrop, registered
megaplier.com on October 17, 2003. Todd Northrop also owns lotterypost.com
which is highly critical and very negative about this Respondent. Complainant
has never pursued Todd Northrop’s <megaplier.com> or
<megaplier.net>, they only seek Respondent’s <megaplier.org> dedicated to providing financial information
about megaplier lottery ticket sales. If Respondent had inside information
about “megaplier” would she not have registered <megaplier.org> on October 17, 2003 like Todd Northrop did?
Instead, she waited to see if the Texas Lottery Commission would register the
domain name. She waited for almost 6 months and registered <megaplier.org> on March 25, 2004 since it was still available
for so long. Now, six years later, Complainant decides to take action. The
motives of Complainant are unclear as they have not sought to obtain the
commercial version of megaplier in the .com or .net realm. They only seek the
.org version to silence someone who provides valuable information, free of
charge, and does not compete with Complainant because she does not sell lottery
tickets.
-
Respondent knew that Complainant has been attempting
to obtain these domain names from the prior registrant since at least as early
as 2001. Since the prior registrant was always successful at retaining these
disputed domain names, she believed the disputed domain names “titles” were
clear. That is, the Texas Lottery Commission already has a website and she
acquired the disputed domain names as a favor to the prior registrant to
continue his work. Respondent registered megaplier.org prior to Complainant
filing for a
C. Additional Submissions
The Panel has considered the Parties’ additional submissions, but the
elements therein contained do not change the Panel conclusions based on the
complaint and the response.
FINDINGS
Complainant is the State agency of the State of
Complainant owns
the following federal trademarks:
-
LOTTO
-
LOTTO TEXAS & Design, Registration No.
2,708,643, Reg. Date April 22, 2003, first use August 24, 1992, first use in
commerce November 7, 1992: This mark covers lottery related products, namely,
lottery tickets, and ticket sets for playing games of chance of International
Class 28, and the following services of International Class 41: Organizing,
conducting and administering periodic drawings, namely, lotteries, and “online”
games by which tickets are purchased at retailers through a central computer,
for awarding monetary and other prizes; games of chance, namely, lotteries,
“online” games purchased at retailers through a central computer, and
scratch-off ticket games, for awarding monetary and other prizes.
- MEGAPLIER, Registration No. 2,961,130, Reg. Date June 7, 2005, filed August 5, 2003, first use October 16, 2003, first use in commerce October 29, 2003. This mark covers lottery related products, namely, lottery tickets, and ticket sets for playing games of chance of International Class 28, and the following services of International Class 41: lottery services; organizing, conducting and administering games of chance; organizing, conducting and administering “online” lotteries and games of chance in which tickets are purchased at retailers through a central computer, for awarding monetary and other prizes; organizing, conducting and administering “online” games of chance, namely, “online” lotteries, and “online” games purchased at retailers through a central computer, for awarding monetary and other prizes.
On February 16, 2000, a third party registered the <lottotexas.net> domain name. On June 12, 1996, a third party registered the <lottotexas.com> domain name. On March 25, 2004, Respondent registered the <megaplier.org> domain name. On December 30, 2008, Ms. Dawn Nettles purchased the <lottotexas.com> and <lottotexas.net> domain names from Mr. Bobby Knight.
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.
With printouts
taken from the United States Patent and Trademark Office database Complainant
has evidenced that it owns the following federal trademarks for LOTTO
TEXAS, Registration No. 2,812,137.and 2,708,643, and for MEGAPLIER,
Registration No. 2,961,130. See section on “Findings” above.
In
her Response, Respondent disputes the validity of the LOTTO TEXAS mark arguing
that it is geographically descriptive. Since the U.S. Patent and Trademark
Office has authorized such a registration on the
Principal Register a Panel must accept its validity for the purposes of UDRP
proceedings. As to Complainant’s disclaimer (“No claim is made to the exclusive
right to use ‘Lotto’ apart from the mark as shown”, it certainly does not make
the expression “LOTTO TEXAS”, taken as a whole, inapt for trademark protection.
Accordingly, the Panel finds that the disputed
domain names are identical to Complainant’s marks LOTTO
By denying that any of the circumstances of Policy ¶ 4.c be applicable in the instant case, Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names. It is up to Respondent to come forward with allegations and evidence that she has some right or legitimate interest in the domain names.
In Texas Lottery Commission v. Terry Fisher a/k/a LottoMasta International, FA 289071 (NAF, Aug 5, 2004) a panel decided that the respondent’s plans to use a future website at the <texas-lotto.info> domain name to provide to players of Texas lottery games, for free, scientifically proven information on playing lotteries, was a bona fide offer of goods and services, and denied the complaint, relying on Complainant’s LOTTO TEXAS marks.
Lastly,
Respondent’s use of any the disputed domain names is not a fair use or a
legitimate, noncommercial use because the redirection of the disputed domain
names to Respondent’s commercial website, where subscriptions for a price are
being offered, however important or successful, has a commercial purpose.
Besides, commercial websites usually offer some information or other services
for free, as an incentive to keep Internet users visiting the website.
For the above
reasons the Panel finds that Respondent has no rights or legitimate interests
in the domain name at issue.
Because Respondent
resides in
In any case, by using the domain names to lead Internet
users to her website and therein offering goods or services unrelated to
Complainant, i.e. subscriptions, for sale, not only Respondent is not making a bona fide offering of goods or services,
but also she is using the disputed domain names in bad faith pursuant to Policy
¶ 4.b.iv (“by using the domain name,
you have intentionally attempted to attract, for commercial gain, Internet
users to your web site 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 your web site or location or of a product or
service on your web site or location.”). Given the scope of such text,
it is immaterial that the
links redirecting from <lottotexas.com>,
<lottotexas.net> and <megaplier.org> to <lottoreport.com>
do not directly resolve to the “subscribe to” section of the Lotto Report site;
once the Internet user is redirected from the websites at the disputed domain
names to this involuntary destination, the attempt to attract Internet users to
the website has already happened. Moreover, Complainant is right that Respondent
admits that it is using the disputed domain names to market and promote her
www.lottoreport.com website.
The <lottoreport.com> website contains a text indicating that Respondent is not associated with any state lottery nor does she provide links to web sites that sell lottery products online for profit. However, by the time Internet users reach the disclaimer, initial diversion has already taken place. See Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, D2000-0869 (WIPO Sept. 25, 2000) (“The fact that the users, once so diverted or attracted, are confronted with numerous disclaimers does not cure the initial and illegitimate diversion. Accord, Gallo v. Hanna Law Firm, Case No. D2000-0615; DFO, Inc. v. Christian Williams Case No. D2000-0181”).
The Panel concludes that Respondent registered and is using the disputed
domain names in bad faith.
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 <lottotexas.com>, <lottotexas.net>, and <megaplier.org>
domain names be TRANSFERRED from Respondent to Complainant.
Roberto A. Bianchi, Panelist
Dated: September 7, 2010
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