DECISION

Texas Lottery Commission v. TXB Marketing Group c/o Will Parkinson

Claim Number: FA0112000103052

PARTIES

Complainant is Texas Lottery Commission, Austin, TX (“Complainant”) represented by Dwayne K. Goetzel, of Conley, Rose & Tayon, P.C.  Respondent is TXB Marketing Group c/o Will Parkinson, Fort Worth, TX (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <tx-lottery.com>, registered with Intercosmos Media Group Inc. dba directNIC.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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 17, 2001; the Forum received a hard copy of the Complaint on December 17, 2001.

On December 18, 2001, Intercosmos Media Group Inc. dba directNIC.com confirmed by e-mail to the Forum that the domain name <tx-lottery.com> is registered with Intercosmos Media Group Inc. dba directNIC.com and that Respondent is the current registrant of the name.  Intercosmos Media Group Inc. dba directNIC.com has verified that Respondent is bound by the Intercosmos Media Group Inc. dba directNIC.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 December 18, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 7, 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@tx-lottery.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 January 28, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 name be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The disputed domain name <tx-lottery.com> is confusingly similar to the registered TEXAS LOTTERY mark, in which Complainant holds rights.

Respondent has no rights or legitimate interests in respect of the disputed domain name.

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

B. Respondent

Respondent did not submit a Response in this proceeding.

FINDINGS

Complainant registered the TEXAS LOTTERY trademark on the Principal Register of the United States Patent and Trademark Office as Registration No. 1,757,208 on March 9, 1993, and has continuously used the mark in interstate commerce since May 18, 1992.  Complainant uses the mark in connection with games of chance and related lottery services pursuant to Texas Government Code §§ 466.014-015.  Complainant spends millions of dollars each year promoting its TEXAS LOTTERY mark and also maintains an Internet presence at <txlottery.org>.

Respondent registered the disputed domain name on March 28, 2001.  There is no evidence that the domain name has been used in any way.  Respondent also holds registrations of <texas-lottery-results.com>, <texas-lottery-tickets.com>, and <texas-lottery-online.com>.

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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(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.

Identical and/or Confusingly Similar

Complainant has established its rights in the TEXAS LOTTERY mark through registration with the U.S. Patent and Trademark Office and subsequent continuous use.

The disputed domain name is confusingly similar to Complainant’s mark.  The fact that Respondent abbreviated the word TEXAS as TX in the domain name does not defeat the confusing similarity between the mark and the domain name.  See See Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar to Complainant’s mark even though the word MICROSOFT is abbreviated); see also Minnesota State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name was confusingly similar to Complainant’s MINNESOTA STATE LOTTERY registered mark).

The addition of a hyphen in the mark and the use of “.com” after the mark are insignificant to the determination of confusing similarity.  See Nintendo Of Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000) (finding <game-boy.com> identical and confusingly similar the Complainant’s GAME BOY mark, even though the domain name is a combination of two descriptive words divided by a hyphen); see also InfoSpace.com v. Tenenbaum Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant has established its rights and interests in the TEXAS LOTTERY mark.  Because Respondent has not provided any evidence to suggest it holds rights or interests in the disputed domain name, the Panel may presume that no such rights or interests exist.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

There is no evidence that Respondent has used the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), that Respondent is commonly known as “tx-lottery” or “tx-lottery.com” pursuant to Policy ¶ 4(c)(ii), or that Respondent has made a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where Respondent advanced no basis on which the Panel could conclude that it had a right or legitimate interest in the domain names, and where no use of the domain names had been established); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent had not come forward to suggest any right or interest it may have possessed).

Further, given the notoriety of Complainant and its mark, it seems unlikely that Respondent could possibly have any rights or interests in the disputed domain name.  See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).

The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied, and that Respondent has no rights or legitimate interests in respect of the disputed domain name.

Registration and Use in Bad Faith

Complainant asserts that Respondent has engaged in a practice of registering domain names that infringe on its mark.  Such a pattern of behavior amounts to bad faith registration and use under Policy ¶ 4(b)(ii).  See YAHOO! Inc. v. Syrynx, Inc. & Hamilton, D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two domain names incorporating Complainant's YAHOO! mark); see also Australian Stock Exch. v. Cmty. Internet (Australia), D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy ¶ 4(b)(ii) where Respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known Australian businesses).

In the absence of a Response to the contrary from Respondent, the Panel finds it appropriate to accept Complainant’s assertion as true.  See 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”).

Further, by intentionally registering a domain name that was confusingly similar to Complainant’s well known mark, Respondent demonstrated opportunistic bad faith under the Policy.  See Singapore Airlines Ltd v. P & P Servicios de Communicacion S.L., D2000-0643 (WIPO Aug. 29, 2000) (“The 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”); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark; thus, Respondent registered the domain name in bad faith).

Accordingly, 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 should be hereby granted.

Accordingly, it is Ordered that the <tx-lottery.com> domain name be transferred from Respondent to Complainant.

John J. Upchurch, Panelist

Dated: February 1, 2002

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