North Carolina State Lottery v. arman amir basrah
Claim Number: FA1705001729728
Complainant is North Carolina State Lottery (“Complainant”), represented by David D. Kalish of Coats & Bennett, P.L.L.C., North Carolina, USA. Respondent is arman amir basrah (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nclottery.games>, registered with Name.com, Inc.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
David S. Safran, Vali Sakellarides and The Honourable Neil Anthony Brown QC (Chairman) as Panelists.
Complainant submitted a Complaint to the Forum electronically on May 2, 2017; the Forum received payment on May 2, 2017.
On May 3, 2017, Name.com, Inc. confirmed by e-mail to the Forum that the <nclottery.games> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 May 12, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 2017 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@nclottery.games. Also on May 12, 2017, 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 June 9, 2017, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed David S. Safran, Vali Sakellarides and The Honourable Neil Anthony Brown QC (Chairman) as Panelists.
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
Complainant made the following contentions.
Complainant, North Carolina State Lottery, administrates and represents the state lottery of North Carolina from Raleigh, North Carolina. In connection with this business Complainant uses the NORTH CAROLINA EDUCATION LOTTERY and NORTH CAROLINA LOTTERY marks to promote its goods and services. Complainant has rights in the NORTH CAROLINA EDUCATION LOTTERY based upon registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,341,669, registered Nov. 20, 2007). See Compl., at Attached Annex 4. The NORTH CAROLINA EDUCATION LOTTERY is commonly known as NORTH CAROLINA LOTTERY by members of the public; and media has recognized such an association such that common law rights are present for the NORTH CAROLINA LOTTERY mark. See Compl., at Attached Annex 11. Respondent’s <nclottery.games> is confusingly similar to Complainant’s mark as it abbreviates NORTH CAROLINA to “nc,” removes the term “education” and appends the generic top-level-domain (“gTLD”) “.games” to make it resolve.
Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the <nclottery.games> domain name nor has Complainant authorized Respondent to register the domain name. Further, Respondent failed to use <nclottery.games> in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, <nclottery.games> resolves to a page that attempts to pass off as Complainant. See Compl., at Attached Annex 9.
Respondent registered and is using <nclottery.games> in bad faith. Respondent intentionally attracts Internet users seeking Complainant for Respondent’s financial gain. Respondent is operating a phishing scheme via the disputed domain name. Respondent had actual notice of Complainant’s rights in the marks prior to registration and use of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a North Carolina State Agency engaged in the business of operating the official North Carolina State Lottery.
2. Complainant has established its registered trademark rights in the NORTH CAROLINA EDUCATION LOTTERY mark based upon its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,341,669, registered Nov. 20, 2007).
3. Respondent registered the <nclottery.games> domain name on November 29, 2016.
4. The domain name resolves to a website the contents of which have been plagiarised by Respondent from Complainant’s official website and by means of which Respondent seeks to pass itself off as Complainant and to phish for information.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely.
Complainant submits that it has rights in the NORTH CAROLINA EDUCATION LOTTERY based upon registration with the USPTO (Reg. No. 3,341,669, registered Nov. 20, 2007). See Compl., at Attached Annex 4. The lottery is known by the public as the North Carolina Lottery. Registration with a trademark authority such as the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). The Panel therefore finds that Complainant has rights in the NORTH CAROLINA EDUCATION LOTTERY mark. The Panel also finds that Complainant has common law trademark rights in NORTH CAROLINA LOTTERY as that is the name by which the public and media know the lottery.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s NORTH CAROLINA EDUCATION LOTTERY mark. Complainant contends Respondent’s domain name, <nclottery.games>, is confusingly similar to Complainant’s mark as it abbreviates NORTH CAROLINA to “nc,” removes the term “education” and appends the gTLD “.games” to make it resolve. Abbreviation of a term does not remove the resulting domain name from the realm of confusing similarity; likewise, removal of a term and addition of a gTLD do not remove the resulting domain name from the realm of confusing similarity per Policy ¶ 4(a)(i). See Black Hills Ammunition, Inc. v. ICS INC, FA 1541572 (Forum Mar. 4, 2014) (finding that the <black-hillsammo.com> domain name is confusingly similar to the BLACK HILLS AMMUNITION mark under Policy ¶ 4(a)(i).); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”); Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). As such, the Panel finds Respondent’s domain name is confusingly similar to Complainant’s NORTH CAROLINA EDUCATION LOTTERY mark per Policy ¶ 4(a)(i). The Panel also finds that the domain name is confusingly similar to Complainant’s NORTH CAROLINA LOTTERY common law trademark as that is the name by which the public and the media know the lottery and an objective bystander would naturally assume that the domain name was referring to the same lottery.
Complainant has thus made out the first of the three elements that it must establish.
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 (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 (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 NORTH CAROLINA EDUCATION LOTTERY mark and to use it in its domain name abbreviating NORTH CAROLINA to “nc,” removing the term “education” and appending the gTLD “.games” to make it resolve;
(b) Respondent registered the domain name on November 29, 2016;
(c) The domain name resolves to a website the contents of which have been plagiarised by Respondent from Complainant’s official website and by means of which Respondent seeks to pass itself off as Complainant and to phish for information;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent lacks rights and legitimate interests in the <nclottery.games> domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized Respondent to register a domain name reflecting its mark. Where a Response is absent, as in the present case, WHOIS information can substantiate a finding that a respondent is not commonly known by a disputed domain name per Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). Here, the WHOIS information listed “Domain Protection Services, Inc.” as the registrant of the domain name prior to commencement of the arbitration process, and that information was lifted to reveal the registrant as “arman amir basrah.” See Compl., at Attached Annex 15. As such, the Panel finds that Respondent is not commonly known by the disputed domain name;
(f) Complainant contends Respondent failed to use the <nclottery.games> domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, the <nclottery.games> domain name resolves to a page that attempts to pass Respondent off as Complainant. See Compl., at Attached Annex 9; see also Compl., p. 10 (comparison). Use of a confusingly similar domain name to pass a respondent off as a complainant for the presumed financial benefit of respondent indicates a lack of rights and legitimate interests per Policy ¶¶ 4(c)(i) & (iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). Here, Respondent presents Internet users with a website that Complainant alleges and the Panel so finds is virtually identical to Complainant’s site in an effort to phish said users for information. The Panel therefore finds Respondent lacks rights and legitimate interests in the disputed domain name.
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 does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
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 been used in bad faith. 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. That is so for the following reasons.
First, Complainant argues Respondent registered and is using the <nclottery.games> domain name in bad faith as Respondent creates confusion as to the owner of the disputed domain name for Respondent’s commercial gain. Use of a confusingly similar domain name to divert Internet users seeking a complainant to a respondent’s domain is use indicative of bad faith per Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also Fanuc Ltd v. Mach. Control Servs., FA 93667 (Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products). Here, Complainant submits that Respondent attempts to capitalize on the confusion created by creating an identical website through the solicitation of Internet users for winning tickets. The Panel agrees with Complainant and finds Respondent acted in bad faith with regard to Policy ¶ 4(b)(iv).
Secondly, Complainant contends Respondent is operating a phishing scheme via the disputed domain name. Use of a confusingly similar domain name to deceive Internet users into providing confidential information is evidence of Respondent’s bad faith per Policy ¶ 4(a)(iii). See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum August 10, 2015) (finding that the respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)). Here, Respondent solicits Internet users diverted to Respondent’s domain name for winning tickets. As such, the Panel finds further evidence of Respondent’s bad faith per Policy ¶ 4(a)(iii).
Thirdly, Complainant argues Respondent had actual notice of Complainant’s rights in its trademarks prior to Respondent’s registration and use of the disputed domain name. Actual notice is sufficient for a finding of bad faith per Policy ¶ 4(a)(iii); constructive notice, however, would not be sufficient. 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.”). Here, Respondent uses the domain name to pass itself off as Complainant and phish for winning lottery tickets from Complainant’s customers. As such, the Panel agrees that Respondent’s behavior evidences its actual notice of Complainant’s rights in the marks and find further evidence of Respondent’s bad faith per Policy ¶ 4(a)(iii).
Fourthly, 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 NORTH CAROLINA EDUCATION LOTTERY mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used it 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.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nclottery.games> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC (Chairman),
David S. Safran and
Vali Sakellarides, Panelists
Dated: June 22, 2017
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