Texas Lottery Commission v. 1550507 Ontario
Inc.
Claim Number: FA0511000591392
PARTIES
Complainant is Texas Lottery
Commission (“Complainant”), represented by Dwayne K. Goetzel,
700 Lavaca, Suite 800, Austin, TX 78701.
Respondent is 1550507 Ontario
Inc. (“Respondent”), represented by Elyot
R. Waller, of Momentous.ca Corporation, 26 Auriga Drive, Ottawa, ON, K2E
8B7, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lotto-texas.com>,
registered with Namescout.com.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 3, 2005; the National Arbitration Forum received a
hard copy of the Complaint on November 7, 2005.
On November 4, 2005, Namescout.com confirmed by e-mail to the National
Arbitration Forum that the <lotto-texas.com>
domain name is registered with Namescout.com and that Respondent is the current
registrant of the name. Namescout.com
has verified that Respondent is bound by the Namescout.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 November 9, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 29, 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@lotto-texas.com by
e-mail.
A timely Response was received and determined to be complete on November
29, 2005.
A timely Additional Submission was received from Complainant on
December 5, 2005.
Respondent submitted a timely additional submission which was received
on December 9, 2005
An additional Submission was submitted by Complaint on December 13,
2005 and was determined to be deficient.
The Panel has chosen to consider this Additional Submission in its
Decision.
On December 9, 2005, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The trademarks on which the Complaint is based are (1) LOTTO TEXAS word mark registered on February 10,
2004 and LOTTO TEXAS & Design registered on April 22, 2003 collectively,
the “Mark.” An
application for registration of the Mark was applied for before Respondent’s
registration of the domain name. The Mark is used in connection with games of
chance and lottery services provided by Complainant.
In addition to the registration of
the Mark, Complainant owns substantial common law rights to the Mark, which has been in use by Complainant in
interstate commerce since at least as early
as 1992.
Complainant registered its own domain name, <txlottery.org>, in April 1999. Respondent cannot argue that it was unaware of Complainant or its rights, since its registration of the domain name came after (1) Complainant’s Mark was used, (2) Complainant’s Mark was applied for, (3) Complainant’s LOTTO TEXAS & Design mark was registered, (4) Complainant’s Mark became distinctive, and (5) Complainant’s domain name was registered.
Complainant spent well over $200 million from 1992 through 1999 promoting and advertising the Mark and goods and services offered thereunder.
Complainant is authorized to provide and administer its games of chance
and lottery related services within the State of Texas. Complainant is the only entity authorized to
sell lottery tickets or offer lottery-related services in the State of Texas.
Respondent has no affiliation or relationship with Complainant. Respondent’s web site is accessible in the
State of Texas and, as such, impermissibly suggests an affiliation with the
State of Texas and impedes the rights and duties of Complainant and prevents
consumers from accessing Complainant’s web site. There is no plausible reason for an individual domain name
registrant such as Respondent to register the <lotto-texas.com> domain
name other than to trade on the goodwill inherent in LOTTO-TEXAS for its own
commercial gain, to impede Complainant’s rights and duties, or to hold onto
such domain name in hopes of selling it for profit to a third party (or to
Complainant).
On May 19, 2004, Complainant sent a cease and desist letter to Respondent
and Respondent answered, without transferring the domain name to Complainant.
Respondent has no legitimate interests in the domain name. Respondent is not commonly known by the <lotto-texas.com> domain name and
does not offer any legitimate goods or services under the domain name.
Respondent’s registration of <lotto-texas.com> and creation of a general search page under the domain name impermissibly suggests that Respondent is, or will be, offering competing lottery related services under the domain name <lotto-texas.com>, which constitutes an unauthorized trading upon the goodwill in and to the Mark in violation of Complainant’s rights and suggests the potential future unauthorized offering of lottery related services.
The activities of Respondent are and have been without authorization from Complainant and were taken in bad faith. Respondent’s use of a general search page with respect to the domain name presents a likelihood of confusion to relevant consumers.
Respondent has not offered any bona fide goods or services in association with its Internet web site that utilizes the domain name, prior to notice by Complainant.
In a case involving the same Respondent as that herein, the panel found for the trademark owner and ordered the domain names at issue transferred, for the same reasons that Complainant alleges herein.
Under the circumstances of use, <lotto-texas.com> is sufficiently
similar to the Mark so that consumers are likely to believe that the two users
are somehow associated, that Complainant
has licensed the Mark to Respondent, that Complainant has licensed use of the
domain name to Respondent, or that there is some other affiliation between the
two.
B. Respondent
Respondent carries on the business of identifying domain names which generate a certain level of Internet traffic and registering those domain names from the pool of domain name registrations that are deleted by the relevant registry on any given day. Successfully registered domain names are incorporated into a parked page search engine service that provides Internet users with up-to-date information on current events, sports, entertainment, travel, business, and health. Respondent generates revenue based on the number of times Internet users click on Respondent’s client-sponsored links featured on Respondent’s domains.
Respondent registered the domain name after it was released to the general public for registration by the dot-com registry, VeriSign. Respondent registered the domain name in good faith and had no knowledge of the existence or activities of Complainant at the time it registered the domain name.
Respondent admits that Complainant has rights in the trademark LOTTO TEXAS in the United States only.
The word “lotto” has little inherent distinctiveness and therefore as a mark or feature of a mark should be given limited scope of protection. The word “lotto” has been the subject of no less than 88 Canadian trade-mark registrations and no less than 480 United States trade-mark registrations which stand in the name of various third parties and have been used in association with a variety of wares.
The word “Texas” should similarly be given little scope of protection as this word is commonly used to describe the state of Texas and, as a result, has little distinctiveness. The word “Texas” has been the subject of 122 Canadian trade-mark registrations and 3379 United States trade-mark registrations that stand in the name of various third parties and are used in association with a variety of wares.
The nature of the wares, services and business of the parties is substantially different. The Complainant runs lotteries. Respondent incorporated the domain name into a parked page search engine service.
The Complainant has submitted no evidence to establish either fame or strong secondary meaning in its alleged marks outside of the state of Texas, particularly in Canada, such that Internet users are likely to associate the domain name only with Complainant.
An Internet user would not likely conclude that the Internet services offered by Respondent under the domain name are offered by the owner of the mark LOTTO TEXAS.
Having regard to the fact that the word “Texas” is commonly understood to refer to a geographical area, that the word “Lotto” is commonly used to describe lotteries, that Complainant’s mark is generic, connoting a lottery in Texas, that numerous third parties have used both the words “Texas” and the word “lotto” as marks or parts of marks, and that the businesses of the parties are dramatically different, the domain name <lotto-texas.com> is not confusingly similar to Complainant’s trademark LOTTO TEXAS.
Respondent submits that it has not registered or used the domain name in bad faith and Complainant has adduced absolutely no evidence that any of the circumstances set out in ¶ 4(b) of the Policy applies.
Respondent’s rights to and legitimate interest in the domain name are clearly established by the fact that Respondent registered and is using the domain name in furtherance of its own bona fide business objectives.
Respondent did not have any knowledge of Complainant prior to the date that Respondent registered the domain name and specifically denies Complainant’s allegation that it, “is acting with intent to misleadingly divert consumers from Complainant’s Internet web site.”
As part of its business plan, Respondent continuously seeks to identify,
using an automated process, and register domain names that generate a certain
level of Internet traffic.
Respondent carries on a legitimate commercial business in
identifying and seeking to register soon to be deleted domain names. As over 20,000 domains are deleted
every day, Respondent employs a totally automated system to determine which
domains may have traffic generated on them, and which do not. In
addition to predicting if there will be traffic, Respondent also attempts to
determine if the domain has any advertisers willing to pay per click and what
revenue may be generated. No human
decision making is involved in the process of determining which domains
Respondent will choose to register. If
the traffic and CPC criteria are met, the domain is automatically tagged as one
which Respondent should register.
Given the generic nature of Complainant’s mark, a finding of bad faith in respect of the present dispute could impact the ability of Respondent, or any party, to register any descriptive domain name in connection with the offer informational or advertising services on the Internet for commercial gain.
The registration of the domain name by Respondent has not prevented Complainant from reflecting its marks in corresponding domain names. Neither the sale of lottery tickets nor the administration and conduct of lotteries in Texas are affected by Respondent’s use of the domain name. There is nothing about Respondent’s use of the domain name which is contrary to Complainant’s statutory authority.
Respondent’s commercial use of the web site located at <lotto-texas.com> commenced well in advance of the date that this Complaint was filed, namely November 3, 2005, and prior to receipt by Respondent of the initial cease and desist letter dated May 4, 2004, sent on behalf of Complainant.
Respondent is making fair use of the domain name by incorporating it into a parked page and thereby providing Internet users with relevant information, in particular information relating to lotteries. It is also a legitimate commercial use of the domain name to generate revenue from pay-per-click advertisers.
At the top of the webpage located at <lotto-texas.com> it clearly states that the domain was recently acquired by Pool.com. As a result of this obvious disclaimer, an Internet user would not be misled into thinking that the site is sponsored or approved by Complainant.
As Respondent’s use of the webpage located at <lotto-texas.com> was in good faith, in furtherance of its business plan and objectives, and in association with the provision of services, Respondent has a legitimate interest in the domain name.
Complainant failed to cite in its Complaint the Panel’s decision in Tx. Lottery Comm’n v. Fisher, FA 289071(Nat. Arb. Forum. August 5, 2004). The Panel recognized that the use of the domain name <texas-lotto.info> by Respondent to provide lottery information was a bona fide offer of goods and services. Respondent’s position is further supported by that decision as the Panel viewed the potential use of a disclaimer on the site and the fact that Respondent did not sell lottery tickets very positively. In the present dispute Respondent has included a disclaimer on its site and is not engaged in the business of selling lottery tickets.
C. Additional Submissions
Complainant
Respondent’s unsupported suggestion that it did not know of Complainant is disingenuous at best, and completely lacking in credibility. Complainant was utilizing the domain name <txlottery.org> in association with its web site by at least 1999.
Respondent admittedly is using Complainant’s registered trademark in a commercial context to generate revenue for itself. Respondent’s client-sponsored links are in direct competition with Complainant. For instance, one link to a commercial site (Lottery Universe) purports to sell tickets to Complainant’s lottery games.
Respondent’s admitted use of a
“parked page” that redirects others to a portal page that features links to
third-party web sites is not a bona fide offering of goods or
services. If the foregoing were not
true, every cybersquatter in the world
would simply establish a parked page using someone else’s trademark, generate
ad revenue for themselves by directing users to third party sites, and try to
pass off such blatant infringement as bona fide.
Respondent admits that it registers many domain names simply based upon when they are “made available.” Respondent states that the domain name <lotto-texas.com> was chosen “due to the pay-per-click revenue which could be generated.”
Use of a “parked page,” which Respondent readily admits to, is tantamount to passive holding. Passive holding supports a reasonable inference of bad faith registration and use.
Respondent
Respondent has already provided considerable evidence of the generic nature of the mark in question. The reasons cited in NAF panel decisions for concluding that a mark is generic is the appearance of the terms comprising the mark on web pages. Attached to Respondent’s supplemental response is a printout of the Google search page for “lotto” and “Texas” submitted together. Also please see the Complaint’s printout of the Google search for “lotto Texas.” When taken together in quotations the words are still used on over 127,000 web pages.
Respondent uses the domain name both in connection with a bona fide offering of goods and services in accordance with clause 4(c)(i) of the Policy through its pay-per-click advertising business and, in connection with a fair use of the domain name in accordance with clause 4(c)(iii) of the Policy, by providing a search page and informational services through the domain name.
None of Complainant’s assertions with regards Respondent’s motivation for providing a link to “Texas Lottery” are correct.
The Complainant suggests that some of Respondent’s client sponsored links are in competition with Complainant. As evidence of this, Complainant identifies a link to the website for Lottery Universe. There was and is no relationship between Respondent and Lottery Universe.
Respondent explicitly denies any intention to trade on Complainant’s goodwill. The commercial value to Respondent, in the domain name <lotto-texas.com> is the result of the fact that the words have a specific generic meaning and may be used to describe lotteries relevant to Texas, or Texans.
The Policy is only meant to be used to allow transfers in domain names in clear cases of abuse of a complainant’s good will by the registration of a domain name intended to benefit from confusion with the complainant’s mark. Where a complainant’s mark is generic there is a presumption that a domain name registration has been made in good faith.
Complainant has failed to establish even one of the three grounds of bad faith registration and use, no rights or legitimate interests, and confusing similarity, which are collectively required as necessary conditions of any domain name transfer.
Complainant’s Response to
Respondent’s Additional Submission
Respondent makes the allegation that LOTTO
TEXAS is generic. LOTTO TEXAS is not
generic for all lottos or lotteries.
LOTTO TEXAS refers to a specific game operated by the Texas Lottery
Commission. Respondent conveniently
ignores the fact that LOTTO TEXAS is a registered U.S. trademark that had been
in constant use for over thirteen (13) years.
Respondent’s own alleged evidence of third
party web site actually supports Complainant’s position. Respondent claims that
a web search for “lotto texas” results in a large number of “hits.” What Respondent does not tell the Panel,
though, is that those hits are referring to Complainant and Complainant’s
specific game known as “Lotto Texas.”
It defies all belief to suggest that
Respondent did not know of Complainant or its rights, particularly when
Respondent’s web site specifically targets Texas and other U.S. consumers. Respondent owns web site targets consumers
in Texas and elsewhere in the United States, thereby indicating that Respondent
knew or should have known of Complainant.
Respondent’s true intent is also
demonstrated by other links on its web site.
Under “related categories,” Respondent has links for the Florida
Lottery, California Lottery, Powerball, and New York lottery, among others.
There are many examples of internationally
accessible sites referring specifically to Complainant’s LOTTO TEXAS mark and
“Lotto Texas” game, as Respondent is well aware, as shown by Respondent’s own
evidence.
Respondent attempts to mislead the Panel by
referring to a shopping page identified by Complainant, when in fact the link
to the Yahoo! Shopping page is on Respondent’s own web site.
FINDINGS
For the reasons set forth below, the Panel finds Complainant has proven that the domain name should be transferred.
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.
Complainant asserts its U.S. Patent and Trademark
(“USPTO”) registration for the LOTTO TEXAS marks. The Panel finds that Complainant’s registration of this mark
establishes rights pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); Vivendi Universal Games v. XBNetVentures Inc., FA 198803
(Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations
establish Complainant's rights in the BLIZZARD mark.”).
The Panel finds that Respondent’s <lotto-texas.com> domain name is confusingly similar to Complainant’s LOTTO TEXAS mark because the only difference between the domain name and the mark is the substitution of a hyphen for the space between words, which does not significantly distinguish the domain name from the mark. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
Complainant has proven this
element.
Complainant argues that Respondent is
appropriating Complainant’s mark to generate commercial gain. The Panel finds that using another’s mark to
take advantage of Internet traffic and generate click-through revenues is
neither a bona fide offering of a good or service pursuant to
Policy ¶ 4(a)(i) nor a legitimate non commercial or fair use pursuant to Policy
¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
demonstrated intent to divert Internet users seeking Complainant's website to a
website of Respondent and for Respondent's benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”); Seiko Kabushiki
Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003)
(“Diverting customers, who are looking for products relating to the famous
SEIKO mark, to a website unrelated to the mark is not a bona fide offering of
goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial
or fair use under Policy ¶ 4(c)(iii).”).
There is nothing in the record, including the WHOIS registration information, that establishes that Respondent is commonly known by the <lotto-texas.com> domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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).
Complainant has
proven this element.
Respondent claims it was unaware of
Complainant’s mark. However, it states
its computer program searches for marks that are going to be available that
have traffic on them.
Complainant has proven this element.
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 <lotto-texas.com>
domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: December 27, 2005
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