DECISION

Washington State Lottery v. Kendell Lang d/b/a Virtual CIO

Claim Number: FA0208000123893

PARTIES

Complainant is Washington State Lottery, Olympia, WA (“Complainant”) represented by Meredith Wright Morton, of Office of the Attorney General.  Respondent is Kendell Lang d/b/a Virtual CIO Del Mar, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <walottery.com> and <washingtonlottery.com>, registered with Bulkregister.

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 27, 2002; the Forum received a hard copy of the Complaint on August 30, 2002.

On August 29, 2002, Bulkregister confirmed by e-mail to the Forum that the domain names <walottery.com> and <washingtonlottery.com> are registered with Bulkregister and that Respondent is the current registrant of the names.  Bulkregister has verified that Respondent is bound by the Bulkregister 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 September 5, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 25, 2002 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@walottery.com, and postmaster@washingtonlottery.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On October 15, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

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.”  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.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

The  <walottery.com> and <washingtonlottery.com> domain names are confusingly similar to Complainant's WASHINGTON STATE LOTTERY mark.

Respondent has no rights or legitimate interests in the disputed domain names.

Respondent registered and used the disputed domain names in bad faith.

B. Respondent

Respondent failed to submit a Response.

FINDINGS

Complainant, Washington State Lottery, has sold lottery tickets throughout the state of Washington for twenty years.  Complainant promotes, markets, advertises, and sells instant scratch and online tickets.  Complainant uses its WASHINGTON STATE LOTTERY mark in connection with lottery tickets, stationery, posters, advertising and website in promoting the sales of lottery tickets. 

Complainant is the record owner of a Washington State Trademark Registration for WASHINGTON STATE LOTTERY.  Complainant has used the mark in commerce continuously since October 27, 1982.  Complainant has spent millions of dollars since 1982, promoting the WASHINGTON STATE LOTTERY mark throughout the state of Washington.  Complainant’s mission is mandated by the Washington State Legislature, therefore it is required to “produce the maximum amount of net revenue for the state consonant with the dignity of the state and the general welfare of the people.”  Complainant’s mark is extremely valuable to the success of this mission.  Complainant’s mark identifies the source of Washington State’s only legal lottery.

Respondent registered the disputed domain names on April 26, 1998.  Respondent has not created a website at the domain names, even though they have been registered since 1998.  Complainant’s investigation has revealed that Respondent engages in the practice of warehousing domain names in order to sell them.

DISCUSSION

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 the 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.

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 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.

Identical and/or Confusingly Similar

Complainant has established that it has rights in the WASHINGTON STATE LOTTERY mark through registration with the state of Washington, and continuous use for the last twenty years.

Respondent’s <walottery.com> and <washingtonlottery.com> domain names are confusingly similar to Complainant’s WASHINGTON STATE LOTTERY mark because they are both abbreviations of Complainant’s mark.  The  <walottery.com> domain name merely abbreviates “Washington” and omits the word “state,” whereas <washingtonlottery.com> merely omits the word “state.”  The primary element of both domain names is the fact that they signify WASHINGTON STATE LOTTERY, which is distinctive because it is the only lottery in Washington.  The abbreviation of a word does not create a distinct mark capable of overcoming a claim of confusing similarity.  See Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name is confusingly similar to Complainant’s MINNESOTA STATE LOTTERY registered mark); see also Coca-Cola Co. v. Busch, 44 F.Supp. 405, 410 (E.D.Pa. 1942) (“the abbreviation of the trade-mark which the public has used and adopted as designating the product of the [trademark owner] is equally as much to be protected as the trademark itself”).  Furthermore, the omission of the word “state” in both domain names does not create a distinct mark because the words “Washington lottery” are the dominant elements of Complainant’s mark.  See Down East Enter. Inc. v. Countywide Communications, FA 96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the domain name <downeastmagazine.com> confusingly similar to Complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE); see also WestJet Air Center, Inc. v. West Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to Complainant’s mark, where Complainant holds the WEST JET AIR CENTER mark).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to respond, therefore it is assumed that Respondent lacks rights and legitimate interests in the disputed domain names.  When Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

Furthermore, because Respondent has not submitted a Response, it is appropriate for the Panel to accept all reasonable allegations and inferences in the Complaint as true.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

Respondent has held the two disputed domain names since 1998 and has failed to make any use of them.  There is currently no website at either domain name.  The passive holding of a domain name for such a length of time gives rise to the presumption that Respondent lacks rights and legitimate interests in the domain names because they are not being used in connection with 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).  See Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest can be found when Respondent fails to use disputed domain names in any way); see also Ziegenfelder Co. v. VMH Enter., 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 the domain name).

Complainant is the only state sanctioned lottery, and therefore it may be presumed that Respondent is not commonly known as WASHINGTON STATE LOTTERY or any derivative of Complainant’s mark.  Furthermore, Respondent has not come forward with any evidence that it is commonly known as WASHINGTON LOTTERY, WA LOTTERY, <washingtonlottery.com>, or <walottery.com>, therefore it has failed to establish that it has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent has been passively holding the disputed domain names since 1998.  Respondent has not developed a website, or used the domain names in any other manner.  After Respondent has passively held a domain name for two years a presumption of bad faith registration and use arises.  Therefore, Respondent’s behavior is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Mondich & Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that Respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith).

Furthermore, based on the fact that Respondent has engaged in the warehousing of domain names for sale, it can be inferred that Respondent registered <washingtonlottery.com> and <walottery.com> with the intention of selling, renting or transferring its rights to the domain names.  Registration of a domain name with the primary intention of selling the registration is considered to be evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i).  See Universal City Studios, Inc. v. Meeting Point Co., D2000-1245 (WIPO Dec. 7, 2000) (finding bad faith where Respondent made no use of the domain names except to offer them to sale to Complainant); see also Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby GRANTED.

Accordingly, it is Ordered that the domain names <walottery.com> and <washingtonlottery.com> be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated: October 21, 2002

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