Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Minnesota State Lottery, Roseville, MN, USA ("Complainant") represented by E. Joseph Newton. The Respondent is Bryan Mendes, Newark, NJ, USA ("Respondent").

The domain name at issue is <mnlottery.com>, registered with Network Solutions.

On March 26, 2001, pursuant to Complainant’s request to have the dispute decided by a one member Panel, the Forum appointed James P. Buchele as Panelist. The undersigned Panelist certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as a panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on February 21, 2001; the Forum received a hard copy of the Complaint on February 21, 2001.

On February 26, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <mnlottery.com> is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 4.0 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 February 27, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 19, 2001 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@mnlottery.com by e-mail.

A timely response was received and determined to be complete on March 19, 2001.

Complainant requests that the domain name be transferred from Respondent to Complainant.

Complainant has used the mark, MINNESOTA STATE LOTTERY, in commerce in connection with the promotion, marketing, advertising and selling of instant and online lottery tickets since April 17, 1990. Complainant registered its mark with the United States Patent and Trademark Office on April 30, 1996. Complainant contends Respondent’s domain name, <mnlottery.com>, is confusingly similar to its MINNESOTA STATE LOTTERY mark, because MN is the standard abbreviation for the State of Minnesota; that Respondent has no rights or legitimate interests in the disputed domain name because there is no evidence that Respondent has made any use of the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; does not have any connection with the Minnesota Lottery nor hold a legal right to conduct a legitimate lottery and that registration of Complainants widely known trademark is evidence of bad faith.

B. Respondent

Respondent contends that MN is not well known as an abbreviation for the State of Minnesota outside the state; that there is a project under construction and will be in operation post arbitration for use of the disputed domain name and that holding a dormant web site is not evidence of bad faith.

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.

The domain name in dispute is substantively identical to Complainants established and registered mark. The use of the abbreviation MN is commonly used for the state of Minnesota and therefore is confusingly similar to Complainants mark. See 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). Complainant has satisfied the requirements under Policy ¶ 4(a)(i).

Complainant has shown that Respondent has passively held on to the domain name. Such evidence demonstrates that Repondent has not established rights or legitimate interests in the domain names. See Ziegenfelder Co. v. VMH Enterprises, Inc. D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that Respondents have not established any rights or legitimate interests in said domain name) and Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding no legitimate rights or interests when Respondent has not used the domain names in connection with any type of bona fide offering of goods and services). An unsupported assertion claiming existence of a business plan does not establish legitimate rights or interests in the domain name.

Complainant has satisfied the requirements under Policy ¶ 4(a)(ii).

Complainant has shown that Respondent has demonstrated bad faith by not developing a web site utilizing the domain name. Passive holding of a domain name permits an inference of registration and use in bad faith. 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 paragraph 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the Respondent had made no use of the domain name or web site that connects with the domain name, and passive holding of a domain name permits an inference of registration and use in bad faith).

It has been established that when a party obtains a domain name of a well known trademark with no connection to the entity holding the mark it is evidence of bad faith. See Singapore Airlines Ltd v. P & P Servicios de Communicacion S.L., D2000-0643 (WIPO Aug. 29, 2000) (holding that "[t]he domain name <singaporeairlines.com> is so obviously connected with a well-known airline that its very registration and use by someone with no connection to the airline suggests opportunistic bad faith…").

The name <mnlottery.com > as stated above strongly implies affiliation with the Minnesota Lottery. Respondent has not shown that he is authorized by the Minnesota legislature to conduct a lottery in Minnesota. Complainant has shown that Respondent has registered at least three other domain names utilizing state abbreviations with the word lottery. Respondent is not engaged in operation of any state lottery and it is likely it would be illegal for him to do so without legislative approval. Accordingly, registering the name <mnlottery.com> was in bad faith.

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the Panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name mnlottery.com be transferred from the Respondent to the Complainant.