Texas Lottery Commission v. Johannes
Eggers
Claim Number: FA0501000405059
PARTIES
Complainant
is Texas Lottery Commission (“Complainant”),
represented by Dwayne K. Goetzel, 700 Lavaca, Suite 800, Austin, TX
78701. Respondent is Johannes Eggers (“Respondent”), P.O.
Box 130781, The Woodlands, TX 77393-0781.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <texas-lottery.org>
(the “Domain Name”) registered with GoDaddy.com
(the “Registrar”).
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Michael
Albert as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
18, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 20, 2005.
On
January 19, 2005, GoDaddy.com confirmed by e-mail to the National Arbitration
Forum that the domain name <texas-lottery.org>
is registered with GoDaddy.com and that the 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-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On
January 21, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 10, 2005 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@texas-lottery.org by e-mail.
A
timely Response was received and determined to be complete on February 7, 2005.
On February 21, 2005, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Michael Albert as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
contends that:
-
It is the owner of both common-law and federally registered trademark rights in
the mark TEXAS
LOTTERY. Its common-law usage dates
back to 1992, and it obtained federal registration on May 6, 2003, which was
approximately seven months before Respondent registered the Domain Name;
- Its mark is used in connection with games of chance
and lottery services, and has spent over $200 million advertising and promoting
its mark and related goods and services;
- Respondent lives in Houston, Texas, one of the
locations where Complainant heavily advertises its lottery services, which are
also available on the web at <txlottery.org>; and therefore it may be
presumed that Respondent knew of Complainant and its mark;
- Under Texas law, Complainant is the only entity authorized to sell
lottery tickets or offer lottery-related services in the State of Texas. See Texas
Government Code §§ 466.014-015;
- Respondent has no authorization to use the mark, nor
any affiliation with Complainant.
Notwithstanding a cease and desist letter, Respondent refused to
transfer the Domain Name. Respondent
offers no goods or services under the Domain Name, but rather has “parked”
it. Respondent’s Domain Name
impermissibly suggests that it will offer lottery-related services in Texas and
that Respondent has some affiliation with Complainant;
- Respondent’s registration and use of the Domain Name
have been in bad faith as evidenced by his non-use of the Domain Name for any
bona fide offering of goods or services, his failure to use the name to refer
to his own business (Respondent allegedly does business under the name Tetrix
at www.textrix.com); Respondent’s registration has confused or diverted
Complainant’s customers, diluted Complainant’s mark, prevented Complainant from
registering its own mark as a domain name, and falsely suggested an affiliation
with Complainant.
B.
Respondent
Respondent
contends that he is not properly named as a Respondent in this proceeding
because his registration of the Domain Name terminated effective December 18,
2004, prior to the initiation of this proceeding; and although the “whois”
listing continues to identify him as the registrant, this fact is due to the
Registrar’s choice, for reasons of its own, to maintain this listing regardless
of the termination of Respondent’s term as registrant.
Respondent
further contends that Complainant’s allegations are baseless. He argues that Complainant’s assertions that
traffic has been diverted or that Complainant has been unable to register its
own mark are baseless.
FINDINGS
The Panel finds that Complainant has met
its burden of proof to show that the Domain Name is confusingly similar to a
trademark owned by Complainant; that Respondent does not have legitimate rights
in the Domain Name; and that the Domain Name was registered in bad faith.
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.
Before
addressing these issues, however, the Panel must address a threshold question
raised by Respondent regarding this proceeding.
Jurisdictional Objection
Respondent
raises a threshold objection to this proceeding on the grounds that he is
allegedly not properly identified as the Respondent because he is no longer the
registrant of the Domain Name. He
argues that, as a result, the Panel lacks “subject matter jurisdiction” over this
proceeding.
Leaving
aside whether this is properly an issue of “subject matter jurisdiction” or
“personal jurisdiction” – or neither, since this is an arbitration panel and
not a court – the gist of Respondent’s contention appears to be that Complainant
named the wrong party as Respondent and should not be allowed to proceed
without naming the correct party.
Mr.
Eggers contends that his registration expired on December 18, 2004, and that
this proceeding was not brought until January 21, 2005, some 34 days
later. He asserts that, although the
Registrar has continued to list the ownership of the Domain Name in his name,
and has offered him on several occasions, including after the expiration of his
initial registration period, the opportunity to renew his registration on a
priority basis over any and all other applicants, he has not renewed and
therefore is no longer the registrant.
Accordingly, he contends that this Panel is without authority to
proceed, at least as against him as Respondent, and that any proceeding would
need to be brought against the Registrar who, according to Mr. Eggers, is now
the real owner of the Domain Name, having held onto it and failed to release it
to the general public.
This
objection calls upon the Panel to determine the meaning of the term
“Respondent” as used in the Policy. If
Mr. Eggers is not, in fact, the “Respondent,” then indeed this proceeding would
not properly have been initiated with him as the named respondent (although
possibly an appropriate amendment could be allowed in which a proper respondent
could be named).
Section
1 of the Policy defines “Respondent” as “the holder of a domain-name
registration against which a complaint is initiated.” The Panel must therefore decide who (if anyone) is the “holder” of
the Domain Name registration.
The
facts are these: Mr. Eggers requested,
and paid for, a domain name registration which took effect on December 18, 2003
and expired, or was to expire, on December 18, 2004. Notwithstanding several opportunities to renew that were offered
to him both prior to and after December 18, 2004, Mr. Eggers did not request
(or pay for) a renewal of his registration.
On the
other hand, as noted above, the Registrar did confirm to the National
Arbitration Forum that Mr. Eggers is the current registrant of the Domain
Name. Absent a showing of error in this
representation, weight must be given to the Registrar’s representation. Evidently, Mr. Eggers’ name has not been
removed from the registration list, although the term for which he paid for a
registration has expired. The “whois”
record appended to the Complaint further confirms that Mr. Eggers was (and
remains) the listed registrant.
Inasmuch
as ICANN-approved registrars, among their other functions, maintain the lists
of registrants of domain names registered under their auspices, such registrars
may be in a better position than anyone else to know who is, in fact, the
registrant for a particular domain name.
There is a longstanding principle of U.S. administrative law (known as
the Chevron doctrine, after the Supreme Court’s decision in Chevron U.S.A. v. Natural Resources Defense
Council, 467 U.S. 387 (1984)), which provides that reviewing
courts should generally defer to reasonable agency interpretations of
ambiguities in statutes implemented by that agency. Of course, registrars are not agencies and this Panel is not a
court. Nevertheless, the Panel finds
the Chevron doctrine to have some
persuasive value, by analogy, in the present situation. If the Registrar considers Mr. Eggers to be
the registrant, and more generally considers a carry-over registrant (i.e. a
registrant who has not renewed his term as domain-name owner but whose domain
name has not yet been reassigned or canceled) to be a registrant, that fact is
helpful in resolving any ambiguity that may exist regarding the meaning of the
phrase “holder of a domain-name registration” as used in the Policy.
Mr.
Eggers argues that he is not responsible for the Registrar’s decision, which
Mr. Eggers contends is a “sales & marketing exercise,” to keep him listed
as the registrant for a period of time subsequent to the expiration of the time
period for which he requested (and presumably paid for) a registration.
While it
may be true that Mr. Eggers did not ask to be a registrant for any longer than
the one-year term that ended in December, it is also true that he remains the
listed registrant. Were he to renew his
payment, his registration and ownership of the Domain Name would presumably
continue unabated. He has taken, as far
as the Panel is aware, no affirmative steps to terminate his status as the
registrant of the Domain Name, or if he has, those steps have thus far
apparently been ineffective. While the
issue Mr. Eggers raises is certainly an interesting and perhaps unusual one,
the Panel must resolve it one way or the other in order to decide this case;
and this Panel finds that someone who deliberately requested, paid for, and
obtained a domain name registration remains the “registrant” of the domain
name, and thus a “Respondent” within the meaning of Section 1 of the Policy,
until such time as his or her registration is no longer effective under the
terms, conditions, and policies then in effect at the registrar through whom
the domain name in question was registered.
Accordingly, Mr. Eggers was properly named in this proceeding as the
“Respondent.”
Indeed,
were the Panel to reach the opposite conclusion, complainants would face the
difficulty of having no identifiable “Respondent” to name although a domain
name previously registered might still be used, controlled, or operated by a
lapsed registrant. That situation could
potentially disable complainants from making use of the Policy to resolve
legitimate domain name disputes. By
contrast, the risk to respondents seems minimal. A respondent who has already chosen to relinquish ownership or
control over a domain name, and has therefore failed or refused to renew his or
her registration, seems unlikely to be harmed in any material way by a ruling
of a panel under the Policy pursuant to which that domain name (which the
registrant has in any event decided to abandon) may be transferred to a
complainant.
Complainant owns common-law and
federally-registered rights in the mark TEXAS LOTTERY. See Men’s Wearhouse, Inc. v. Wick,
FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law,
registered marks hold a presumption that they are inherently distinctive and
have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption).
The panel finds the Domain Name to be
identical, or at a minimum confusingly similar, to Respondent’s mark. The two are, in fact, identical but for the
addition of a hyphen and of the gTLD “.org.”
It is well established, in cases too numerous to list, that these two
modifications to a trademark do not eliminate or even seriously undermine the
similarity for purposes of Paragraph 4(a)(i) of the Policy. See,
e.g., CBS Broad., Inc. v.
LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that a domain
name which adds a hyphen between the words of Complainant’s mark creates a
domain name identical and confusingly similar to Complainant’s mark); Easyjet
Airline Co. Ltd. v. Harding, D2000-0398 (WIPO June 22, 2000) (finding
<easy-jet.net> virtually identical, and thus confusingly similar,
to Complainant's EASYJET mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that a top-level domain such as “.net” or “.com” does not affect the
domain name for the purpose of determining whether it is identical or
confusingly similar).
Respondent
is not a licensee of, or otherwise affiliated with, Complainant. Complainant’s rights in the mark precede
Respondent’s registration. Respondent
is not commonly known by the Domain Name.
Complainant has thus made a prima facie showing, which Respondent has
not rebutted, that Respondent lacks rights or legitimate interests in the
domain name. See, e.g., Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where Respondent was not commonly known by the mark and never applied for a
license or permission from Complainant to use the trademarked name).
That
Respondent cannot offer lottery services as a matter of Texas law further
supports this conclusion.
Respondent had, at a minimum,
constructive knowledge of Complainant’s rights in the TEXAS LOTTERY mark when
Respondent registered the Domain Name because Complainant had
federally-registered trademark rights.
It seems evident that Respondent also had actual knowledge, inasmuch as
he resides in the state of Texas, in a city in which Complainant advertises
heavily. This knowledge supports a
conclusion of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Digi Int’l v. DDI
Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a
legal presumption of bad faith, when Respondent reasonably should have been
aware of Complainant’s trademarks, actually or constructively”); see also
Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Orange Glo Int’l v. Blume, FA 118313
(Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof.”).
Because
Complainant is the sole entity authorized to sell lottery tickets or offer
lottery-related services in the State of Texas, see Texas Gov’t Code §§ 466.014-015, it would
be illegal for Respondent to
operate a state lottery. His domain
name, with its suggestion that such services would be offered, is suggestive of
opportunistic bad faith. See Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it
is “inconceivable that the respondent could make any active use of the disputed
domain names without creating a false impression of association with the
Complainant”); see also Harrods Ltd. v. Harrod’s Closet, D2001-1027
(WIPO Sept. 28, 2001) (finding that where a mark is so obviously connected with
well-known products, its very use by someone with no connection to these
products can evidence opportunistic bad faith); see also Albrecht v. Natale, FA 95465 (Nat. Arb.
Forum Sept. 16, 2000) (finding registration in bad faith where there was no
reasonable possibility, and no evidence from which to infer, that the domain
name was selected at random since it entirely incorporated Complainant’s name).
Respondent’s registration and lengthy
period of non-use of the Domain Name further supports a finding of bad
faith. See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000)
(finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used
the domain name because “[i]t makes no sense whatever to wait until it actually
‘uses’ the name, when inevitably, when there is such use, it will create the
confusion described in the Policy”); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO
Nov. 23, 2000) (finding bad faith where Respondent made no use of the domain
name in question and there are no other indications that Respondent could have
registered and used the domain name in question for any non-infringing
purpose); see also Body Shop Int’l
PLC v. CPIC NET & Hussain, D2000-1214 (Nov. 26, 2000) (finding bad
faith where Respondent failed to use the domain name and it is clear that
Respondent registered the domain name as an opportunistic attempt to gain from
the goodwill of Complainant).
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 <texas-lottery.org>
domain name be TRANSFERRED from Respondent to Complainant.
Michael Albert, Panelist
Dated: March 9, 2005
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