Texas Lottery Commission v. Admin c/o
LaPorte Holdings
Claim
Number: FA0506000493451
Complainant is Texas Lottery Commission (“Complainant”),
represented by Dwayne K. Goetzel, 700 Lavaca, Suite 800, Austin, TX
78701. Respondent is Admin c/o LaPorte Holdings (“Respondent”),
5482 Wilshire Blvd. # 90036, Los Angeles, CA 90036.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <txloterry.com>, <texasalottery.com>,
<texasllottery.com>, <texaslottorey.com>, and <texaslottory.net>,
registered with Nameking.com, Inc.
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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
8, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 10, 2005.
On
June 16, 2005, Nameking.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <txloterry.com>, <texasalottery.com>,
<texasllottery.com>, <texaslottorey.com>, and <texaslottory.net>
are registered with Nameking.com, Inc. and that Respondent is the current
registrant of the names. Nameking.com, Inc. has verified that Respondent is
bound by the Nameking.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
June 16, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 6, 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@txloterry.com, postmaster@texasalottery.com,
postmaster@texasllottery.com, postmaster@texaslottorey.com, and
postmaster@texaslottory.net by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
July 13, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Tyrus R.
Atkinson, Jr.,as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <txloterry.com>,
<texasalottery.com>, <texasllottery.com>, <texaslottorey.com>,
and <texaslottory.net> domain names are confusingly similar to
Complainant’s TEXAS LOTTERY mark.
2. Respondent does not have any rights or
legitimate interests in the <txloterry.com>, <texasalottery.com>,
<texasllottery.com>, <texaslottorey.com>, and <texaslottory.net>
domain names.
3. Respondent registered and used the <txloterry.com>, <texasalottery.com>,
<texasllottery.com>, <texaslottorey.com>, and <texaslottory.net>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Texas Lottery Commission, provides lottery services and various games of chance
for the state of Texas and has done so continuously since 1992. Complainant’s lottery services have been
among the most successful in the United States and worldwide bringing them increasing
renown throughout the years.
Complainant has
registered the TEXAS LOTTERY mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 2,712,848 issued May 6, 2003) for use in conducting
and administering lottery services and various games of chance as well as in
promotional and marketing materials.
From 1992 through 1999, the Texas Lottery Commission spent over $200
million in advertising and promoting the games and services offered under the
TEXAS LOTTERY mark.
Over a period of
twelve months in 2004, Respondent registered the following domain names: <txloterry.com>,
<texasalottery.com>, <texasllottery.com>, <texaslottorey.com>,
and <texaslottory.net>.
There is no evidence that any of Respondent’s domain names are currently
used in connection with an active website.
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."
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(e), 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 (Nat.
Arb. 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.").
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.
Complainant has
submitted evidence of registration of the TEXAS LOTTERY mark with the
USPTO. In the absence of evidence
suggesting otherwise, the Panel accepts Complainant’s assertion that the mark
is inherently distinctive and rights are established for the purposes of Policy
¶ 4(a)(i). See 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); see also U.S. Office of Pers. Mgm’t
v. MS Tech. Inc., FA 198898 (Nat. Arb.
Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is
registrable . . . an ICANN panel is not empowered to, nor should it, disturb
that determination.”).
Each of
Respondent’s five domain names is a variation of some sort on Complainant’s
registered mark. Two of the domain
names, <texasalottery.com> and <texasllottery.com>,
contain Complainant’s entire mark along with an added letter, whereas <texaslottorey.com>
and <texaslottory.net> are simply misspelled variations of
Complainant’s mark. Panels have long
held that such additions or misspellings are insufficient to properly
distinguish domain names from registered marks pusuant to Policy ¶
4(a)(i). See Victoria’s Secret v.
Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by
misspelling words and adding letters to words, a respondent does not create a
distinct mark but nevertheless renders the domain name confusingly similar to
the complainant’s marks); see also Am. Online, Inc. v. Tencent Commc’ns Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and
<oicq.com> are confusingly similar to the complainant’s mark, ICQ); see
also Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding
that <kelsonmd.com> is identical or confusingly similar to the complainant’s
federally registered service mark, “Kelson”).
The fifth domain name, <txloterry.com>, also includes a
misspelled variation of the mark in conjunction with the well known postal
abbreviation for the state of Texas.
Again, these are distinctions insufficient to properly differentiate the
domain name from Complainant’s registered mark pursuant to Policy ¶
4(a)(i). See Belkin Components v.
Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the
<belken.com> domain name confusingly similar to the complainant's BELKIN
mark because the name merely replaced the letter “i” in the complainant's mark
with the letter “e”); See also Microsoft Corp. v. Montrose Corp.,
D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name
<ms-office-2000.com> to be confusingly similar even though the mark
MICROSOFT is abbreviated).
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant
contends that Respondent does not have rights or legitimate interests in the
confusingly similar <txloterry.com>, <texasalottery.com>,
<texasllottery.com>, <texaslottorey.com>, and <texaslottory.net>
domain names. Complainant’s assertion
is sufficient to establish a prima facie case in support of its
contentions shifting the burden onto Respondent to demonstrate that such rights
or legitimate interests exist. See Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under
certain circumstances the mere assertion by the complainant that the respondent
has no right or legitimate interest is sufficient to shift the burden of proof
to the respondent to demonstrate that such a right or legitimate interest does
exist); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug.
21, 2000) (holding that where the complainant has asserted that the respondent
has no rights or legitimate interests with respect to the domain name it is
incumbent on the respondent to come forward with concrete evidence rebutting
this assertion because this information is “uniquely within the knowledge and
control of the respondent”). By failing
to submit a response, Respondent has not met the burden of proof necessary to
establish rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). As a result, the Panel accepts Complainant’s
allegations that no rights or legitimate interests exist. See Am. Express
Co. v. Fang Suhendro, FA 129120 (Nat. Arb.
Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is
presumed that Respondent lacks all rights and legitimate interests in the
disputed domain name.”); see also Broadcom Corp. v. Ibecom PLC,
FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to
the Complaint functions as an implicit admission that [Respondent] lacks rights
and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set
forth…as true.”).
Respondent has
not made use of any of the five domain names nor has evidence been presented
suggesting that preparations have been made to use the domain names in
connection with a bona fide offering of goods or services. As a result the Panel finds that Respondent
lacks rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13,
2000) (finding no rights or legitimate interests where the respondent failed to
submit a response to the complaint and had made no use of the domain name in
question); see also Vestel
Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000)
(“Merely registering the domain name is not sufficient to establish rights or
legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.”).
Furthermore, the
fact that Respondent’s domain names are all typosquatted versions of
Complainant’s TEXAS LOTTERY mark, is evidence “in and of itself that the
respondent lacks rights or legitimate interests in the disputed domain name[s]
. . . .” Diners Club Int’l Ltd. v.
Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum
June 23, 2003); see also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718
(Nat. Arb. Forum Feb. 6,
2003) (“Considering the nonsensical nature of the [<wwwmedline.com>]
domain name and its similarity to Complainant’s registered and distinctive
[MEDLINE] mark, the Panel concludes that Policy ¶ 4(c)(ii) does not apply to
Respondent.”).
Finally, nothing
in the record indicates that Respondent has been commonly known by or
authorized to register any derivation of the disputed domain names. Therefore, no rights or legitimate interests
exist pursuant to Policy 4(c)(ii). See
Gallup, Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark); see
also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected).
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has
failed to connect any of the five registered domain names with a functioning
website since their 2004 registration.
Such failure to use domain names for legitimate purposes amounts to
passive holding and supports a reasonable inference of bad faith registration
and use pursuant to 4(a)(iii). See DCI S.A. v. Link Commercial Corp.,
D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive
holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the
Policy); see also Clerical Med.
Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000)
(finding that merely holding an infringing domain name without active use can
constitute use in bad faith).
Furthermore,
registration of domain names that are confusingly similar to another’s mark
with actual or constructive knowledge of the mark holder’s rights is evidence
of bad faith registration and use under 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 Entrepreneur Media, Inc.
v. Smith, 279
F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a
mark he knows to be similar to another, one can infer an intent to
confuse."). In the case at hand,
Complainant has registered the TEXAS LOTTERY mark with the USPTO prior to any
notice of Respondent’s domain name registrations. Complainant’s registration puts the public on notice that
exclusive rights exist in this particular mark and unauthorized use is not
permitted. Therefore, constructive
knowledge is conferred on Respondent at the time of each domain name
registration, violating Policy ¶ 4(a)(iii).
See 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.”).
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established
all three elements required under the ICANN Policy, the Panel concludes that
relief shall be GRANTED.
Accordingly, it
is Ordered that the <txloterry.com>, <texasalottery.com>,
<texasllottery.com>, <texaslottorey.com>, and <texaslottory.net>
domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
July 22, 2005
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