national arbitration forum

 

DECISION

 

Texas Lottery Commission v. CyberIntegration, LLC

Claim Number: FA1101001370321

 

PARTIES

 

Complainant is Texas Lottery Commission (“Complainant”), represented by Dwayne K. Goetzel, Texas, USA.  Respondent is CyberIntegration, LLC (“Respondent”), represented by John Brier of TinBu, LLC, Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

         

The domain name at issue is <texaslotterylive.com>, registered with GoDaddy.com (“Domain Name”).

 

PANEL

 

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Hugues G. Richard, Chair, Karl V. Fink and Diane Cabell as Panelists.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 31, 2011; the National Arbitration Forum received payment on January 31, 2011.

 

On January 31, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <texaslotterylive.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name.  GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 February 1, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 2011 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@texaslotterylive.com.  Also on February 1, 2011, 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 February 10, 2011.

 

On February 15, 2011, a timely Complainant’s Additional Submission was received by the Forum.

 

On February 16, 2011, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Karl V. Fink, Diane Cabell and Hugues G. Richard as Panelists.

 

On February 22, 2011, a timely Respondent’s Additional Submission was received by the Forum.

 

RELIEF SOUGHT

 

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

 

A.  Complainant

 

a.    The Domain Name is confusingly similar with Complainant’s marks TEXAS LOTTERY & Design and TEXAS LOTTERY, which has been used for some 14 years prior to the Domain Name’s registration;

 

b.    Respondent has no legitimate interest in the Domain Name because (i) the website does not constitute a bona fide offering of goods or services, (ii) Respondent is not known by the Domain Name, and (iii) no legitimate noncommercial or fair use of the Domain Name is made;

 

c.    The Domain Name was registered and used in bad faith, in light of (i) the use of the Domain Name for commercial gain, through marketing and promotion of competing lottery services, and (ii) Respondent’s knowledge of Complainant and its marks.

 

B.  Respondent

 

a.    The Domain Name is not confusingly similar with Complainant’s trademarks because the marks consist of descriptive words;

 

b.    Respondent has a legitimate interest because the website is a bona fide offering of services in that it displays lottery results which are public information. Relying on advertising to generate revenue is a common practice. The website does not promote competing services, since online lotteries differ greatly from the services provided by Complainant;

 

c.    Respondent did not register and use the Domain Name in bad faith because the use of third party advertising as a source of revenue is a common practice in various forms of media, and the website does not create a likelihood of confusion with Complainant’s marks.

 

C. Additional Submissions

 

Complainant

 

a.    The Domain Name is confusingly similar with Complainant’s marks TEXAS LOTTERY & Design and TEXAS LOTTERY because the two are identical, saving the addition of the generic term “live”, which does not negate the finding of confusing similarity, and because the marks are not descriptive;

 

b.    The Domain Name is registered and used in bad faith, as evidenced by the fact that Respondent is preventing Complainant from using the Domain Name which reflects its trademarks, and the fact that Respondent has engaged in a pattern of such conduct.

 

Respondent

 

a.    The Domain Name is not confusingly similar with Complainant’s marks because it clearly identifies what information is displayed on Respondent’s website;

 

b.    Respondent has rights or legitimate interests in that it is providing a bona fide service in displaying public information (lottery results), and does so for all US states.

 

FINDINGS

 

Complainant holds trademark registrations with the United States Patent and Trademark Office for TEXAS LOTTERY & Design (Reg. No. 1,757,208, registered March 9, 1993) and TEXAS LOTTERY (Reg. No. 2,712,848, registered May 6, 2003). Complainant has used the marks continuously since at least as early as 1992 in interstate commerce in connection with games of chance and lottery services provided by Complainant, pursuant to Texas Government Code §§ 466.014-015. Complainant also operates a website under the domain name <txlottery.org>.

 

Respondent registered the Domain Name <texaslotterylive.com> on July 31, 2006. The Domain Name is used to operate a website displaying, among other things, the drawing results of a number of Complainant’s lotteries.

 

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.

 

Identical and/or Confusingly Similar – 4(a)(i)

 

Complainant has established that it has rights in the TEXAS LOTTERY & Design and TEXAS LOTTERY marks through registrations with the USPTO and continuous use of the marks in interstate commerce since at least 1992, predating the registration of the Domain Name. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i)”).

 

Respondent’s Domain Name <texaslotterylive.com> consists of Complainant’s mark TEXAS LOTTERY in its entirety, excepting the omission of the space in between the words and of the generic term “live”. Complainant’s mark is the most prominent element of the Domain Name. It has been widely recognized that the addition of a generic term to a trademark does not prevent a finding of confusing similarity. See eBay Inc. v. SGR Enterprises and Joyce Ayers , Case No. D2001-0259 (WIPO April 11, 2001) (A registrant that simply adds numerals or generic terms to Complainant’s trademark does not avoid a finding that domain name to be confusingly similar to a trademark in which Complainant has rights).

 

In particular, the generic term “live” has been held not to distinguish a mark adequately. See Viacom International Inc. v. Transure Enterprise Ltd. Case No. D2009-1616 (WIPO January 20, 2010) (the addition of the term “live” in the disputed domain name is insufficient to distinguish the disputed domain name from Complainant's trademark, and could increase the confusing similarity with Complainant's marks. Domain name <nickjrlive.com> was found to be confusingly similar with trademark NICK JR.). The addition of “live” to Complainant’s mark in the Domain Name does not decrease the confusing similarity of the two.

 

Accordingly, the Panel finds that Complainant has established Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests – 4(a)(ii)

 

Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name. 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 Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). 

 

4(c)(ii)

Complainant alleges that Respondent is not commonly known by the Domain Name, and the two parties have no affiliation or relationship. In Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006), the Panel found that the respondent was not commonly known by the disputed domain names <shoredurometer.com> or <shoredurometers.com>, where the WHOIS information indicated the registrant of the domain names as “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t,” and no other evidence suggested that the respondent is commonly known by the domain names. The “about us” section of the website operated at <texaslotterylive.com> states that the Domain Name is run as a part of the “World Wide Lotto Network” by TinBu, LLC. Further, the WHOIS information for <texaslotterylive.com> shows that the domain is owned by CyberIntegration, LLC. Therefore, the Panel finds that Respondent is not commonly known by the Domain Name.

 

4(c)(iii)

Respondent is not making a legitimate noncommercial use of the Domain Name, in light of the advertising-based revenue Respondent makes using the website, and the fact that Respondent runs a network of lottery result websites. In La Société des Loteries du Québec v. RSA Software Inc., Case No. D2002-0051(WIPO April 22, 2002), the respondent alleged that the sole purpose of his website was to disseminate to the internet public a wide variety of lottery results, free of charge.  The Panel found it hard to credit that anyone would go to the trouble of assembling lotto results from a broad range of jurisdictions and maintain a website for them for purely altruistic reasons, and in the absence of any compelling evidence, could not find noncommercial use. The same reasoning applies to the present case.

 

4(c)(i)

Respondent alleges in both its response and its additional submission that offering public access to public information is a bona fide offering of goods and services. While Complainant asserts that it is the only entity authorized to advertise, offer for sale or sell lottery related goods or services in the state of Texas pursuant to the Texas Government Code §§ 466.014-0.15, nothing in the law prohibits anyone from displaying the results of the lottery. Indeed, in TruGreen L.P. v. Pitchman101, Jerry Malczewski, Case No. D2009-1625 (WIPO January 11, 2010), the Panel would have considered the respondent’s intention to use the disputed domain name <trugreen.mobi> to post lottery results as a legitimate interest, if not for the fact that the respondent’s website contained links to websites selling products in the lawn care business in direct competition with the complainant. It is the opinion of the majority of this Panel that Respondent’s arguments about bona fide use are what distinguish the present case from La Société des Loteries du Québec v. RSA Software Inc., Case No. D2002-0051(WIPO April 22, 2002). In that case, the respondent’s argument for legitimate interest rested on noncommercial or fair use of the domain name in posting lottery results under a confusingly similar domain name to the complainant’s mark LOTO-QUÉBEC, which the panel rejected in light of the respondent’s false assertions that the website was not operated for commercial gain.

 

The adjective bona fide was intended, in the opinion of the majority of this Panel, as a descriptor of Respondent's goods and services, not of Respondent's state of mind or legal rights.  This is why the phrase bona fide is used instead of such adjectives as "good faith" or "non-infringing."  It is also why the Policy treats legitimate rights as a distinct and separate element from bad faith.  Respondent may well be infringing on the mark by offering competing goods and services in commerce; further, there is substantial evidence of bad faith use.  However the UDRP was not intended to substitute for a court of law in determining rights between rival competitors.  See National Collegiate Athletic Association v. Rosemary Giancola (WIPO Case No. D2000-0836).

 

Accordingly, the Panel finds that Complainant has not established Policy 4(a)(ii).

 

Registration and Use in Bad Faith – 4(a)(iii)

 

Complainant alleges bad faith use and registration on the part of the Respondent because Respondent’s website features content, links and advertisements of third-party business offering goods and services in direct competition with Complainant, while using a domain name which is confusingly similar to Complainant’s marks. In light of the majority of this Panel’s finding that Respondent has a legitimate interest using the Domain Name in providing a bona fide offering of goods or services, and in light of Respondent’s submissions, this Panel cannot conclude that the registration of the Domain Name was done in bad faith. Respondent registered the Domain Name as a part of its “World Wide Lotto Network” with a view to providing a bona fide offering of goods and services. See Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).

 

Whether Respondent has used the Domain Name in bad faith is another issue which need not be addressed by the Panel since it has decided that the Domain Name was not registered in bad faith.

 

Accordingly, the majority of the Panel finds that Complainant has not established Policy ¶ 4(a)(iii).

 

DECISION

 

Having established only one out of three elements required under the ICANN Policy, the majority of the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <texaslotterylive.com> Domain Name REMAIN WITH Respondent.

 

Hugues Richard, Chairman

Dated March 1st, 2011

 

DISSENTING OPINION

 

I respectfully dissent from the majority’s finding that Respondent is making a bona fide offering of goods or services.  Bona fide means done or made in good faith.  The American Heritage Dictionary Second College Edition (1985).  In my opinion, bona fide refers to the good faith intent in using the domain name. Knowingly using the mark of another in a domain name to market services or products does not constitute a bona fide offering of goods or services.  See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).

 

 

Karl V. Fink, Panelist

Dated March 1st, 2011

 

 

 

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