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Generic Top Level Domain Name (gTLD) Decisions |
State of Oregon, by and through the
Oregon State Lottery v. Patrick Moore d/b/a FreeMachines, Inc.
Claim Number: FA0211000133677
PARTIES
Complainant
is State of Oregon, by and through the
Oregon State Lottery, Salem, OR (“Complainant”) represented by James E. Geringer, of Klarquist Sparkman, LLP. Respondent is Patrick Moore d/b/a FreeMachines Inc., Sumner, WA
(“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <oregonlottery.com>
and <oregonlottery.net>, registered with Network Solutions, Inc.
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.
Judge
Irving H. Perluss (Retired) is the Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on November 14, 2002; the Forum received
a hard copy of the
Complaint on November 15, 2002.
On
November 21, 2002, Network Solutions,Inc. confirmed by e-mail to the Forum that
the domain names <oregonlottery.com> and <oregonlottery.net> are registered with Network Solutions,
Inc. and that the Respondent is the current registrant of the names. Network Solutions, Inc. has verified that
Respondent is bound by the Network Solutions, 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
November 22, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of December 12, 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@oregonlottery.com and
postmater@oregonlottery.net by e-mail.
A
timely Response was received and determined to be complete on December 4, 2002.
Complainant
filed a timely Additional Submission on December 9, 2002. Respondent also filed a timely Additional
Submission on December 10, 2002.
On December 12, 2002, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Judge Irving H.
Perluss (Retired) as Panelist.
RELIEF
SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A. Complainant
1.
Oregon
Lottery is an agency of the State of Oregon in the United States, established
and operated pursuant to the Constitution of the State of Oregon and Oregon
statute. Oregon Lottery has sold and
advertised its games and services continuously under the name and mark OREGON
LOTTERY since at least 1985. Annual
sales of genuine OREGON LOTTERY games have been in the tens of millions of
dollars over a decade, and now exceed $100 million
dollars a year.
2.
Respondent
registered and is using domain names that are identical to Complainant’s famous
name and trademark, with full knowledge
of its true owner. Respondent’s transparent purpose in doing so
was to benefit from Complainant’s fame, both by selling the resulting traffic
and by
selling the domain name registrations themselves to Complainant.
3.
The use of
the dispute domain names has caused substantial actual confusion and injury to
Complainant.
4.
Respondent
has no rights or legitimate interests in the disputed domain names because
Respondent’s only use of the names including
“Oregon Lottery” has been and
continues to be as an infringer.
Respondent did not register the earliest of the disputed domain names until
December 4, 1998, more than thirteen years after Complainant
began offering its
genuine goods and services. Respondent
registered these domain names in full knowledge of the Oregon Lottery’s
existence, after playing OREGON LOTTERY games himself.
5.
Respondent
is not making any legitimate non-commercial or fair use of the domain
names. Rather, Respondent’s use of the
disputed domain names is garden-variety trademark infringement creating the
impression that the domains
are operated under the auspices of, or have the
approval of, Oregon Lottery.
6.
The
disputed domain names were registered and are being used in bad faith.
7.
Respondent
offered to sell the <oregonlottery.com> domain name registration
to Complainant for $250,000, far in excess of the costs he incurred in wrongly
registering the Oregon Lottery’s
domain name and mark as his own.
8.
Respondent
has used <oregonlottery.com> and <oregonlottery.net>
to make money from gambling related traffic.
By using the name Oregon Lottery, Respondent has created a likelihood of
confusion with Complainant (including but not limited to
initial confusion) as
to the source, sponsorship, affiliation, or endorsement of Respondent’s website
and the products, services,
and material offered there. The fact that Respondent deliberately chose
Oregon Lottery as its name is itself sufficient evidence of Respondent’s bad
faith.
B. Respondent
1.
The
disputed domain names are not identical to Complainant’s trade name or service
mark. Respondent has applied for and is
in the process of obtaining his own unique service mark. Respondent’s service mark, like
Complainant’s service mark, contains both words and a design. Both Complainant’s and Respondent’s service
marks contain the words Oregon Lottery.
It has been determined by the Trademark office that the words alone,
“Oregon Lottery,” both for Complainant and Respondent, do not
qualify for a
trademark. Furthermore, it has been
determined by the United States Trademark Department that “There is no
likelihood of confusion” associated
with Respondent’s mark.
2.
It was
brought to the attention of Respondent in April of 1999 that there may be
confusion if consumers are not aware of “the source,
sponsorship. . .of goods
and services.” Shortly after Respondent
received this letter, he placed, and has maintained, a clearly visible disclaimer
as to the source and sponsorship
of the site.
<oregonlottery.com> automatically redirects to <oregonlottery.net>
at which point the disclaimer is present and in plain view 100% of the time on
all pages. The two sites are used in
order to facilitate the various services offered such as free mail at <oregonlottery.com>. Although the disclaimer is located at <oregonlottery.net>,
it still reads <oregonlottery.com> and sits directly to the left
of Respondent’s famous service mark.
3.
There was
no offer to sell the <oregonlottery.com> domain name registration
for $250,000 because that was a solicited request from Complainant.
4.
Respondent
has rights and legitimate interests in the disputed domain names. Respondent registered <oregonlottery.com>
in December of 1998 and Complainant did not apply for a service mark until
December 1999. Respondent immediately
began using the site for bona fide commercial use, promoting the sale of goods
and services of others through
the distribution of printed material and promotional
contests; contests and incentive award programs to promote the sale of products
and services of others.
5.
The domain
names are not being used in bad faith.
Respondent has been using the site just as his service mark states,
promoting the goods and services of others.
6.
Respondent
has maintained the assumed business names of “Oregon Lottery,”
“OregonLottery.com” and “Oregon Lottery.com,” registered
with the State of
Oregon’s Secretary of State since mid-year 1999.
C. Additional
Submissions by Complainant
1.
The
dispositive facts in this case cannot be disputed. In particular, Respondent does not dispute the fact that he
registered <oregonlottery.com> and <oregonlottery.net>
with full knowledge of Oregon Lottery’s pre-existing fame and widespread use of
the OREGON LOTTERY mark.
2.
Respondent’s
registration of “Oregon Lottery,” “OregonLottery,” and “OregonLottery.com” as
assumed business names, his registration
of the domain names
<oregonlottery.biz> and <oregonlottery.info>, and his pending
application for a U.S. trademark for
a design that includes the words
“OregonLottery.com” establish that Respondent’s actions in registering the
disputed domain names
are part of a deliberate, concerted plan by Respondent to
use the words “Oregon Lottery” for his own commercial use, in disregard
of the
Oregon Lottery’s rights and the adverse impact on a confused public.
3.
It is
established Oregon law that the registration of assumed business names does not
confer any rights or interest in the registered
words.
4.
An application
to register a design mark has no bearing on whether Respondent has the right to
register the exact words “Oregon Lottery”
as a domain. In any event, there is nothing in the record
to indicate that the Trademark Examiner compared the alleged mark of
Respondent’s application
to Complainant’s common law OREGON LOTTERY mark, its
Oregon Lottery trade name, or the Oregon Lottery and design registration.
5.
In La
Societe des Loteries du Quebec v.RSA Software, Inc., D2002-0051 (WIPO April 22, 2002),
there was specifically rejected the argument that Respondent’s disclaimer can
justify Respondent’s
domain names that directly mimic the true Oregon Lottery’s
famous name and mark. It was stated
therein that such a disclaimer “may be ignored or misunderstood by Internet
users and it does not dispel the initial
Internet confusion inevitable from
Respondent’s actions. (Citing Madonna
Ciccone, p/k/a Madonna v. Dan Parisi, D2000-0847, (WIPO Oct. 12,
2000)).
D. Additional Submissions by Respondent
1.
Respondent
denies any claims or allegations that the names <oregonlottery.com/.net/.biz/.info>
and any variations were, could have been, or could be registered in bad
faith. Respondent further denies any
claims or allegations that Respondent had any knowledge of a trade name or
service mark giving Complainant,
or anyone, rights to the words “Oregon
Lottery” at the time of registration.
Complainant’s trademark design logo was not even applied for until
December 1999, a full year after Respondent had registered the
domain name <oregonlottery.com>.
2.
Respondent
also has a trademark logo, not simply an application as the Complainant
implies, but a logo, which can be marked and includes
the words “Oregon
Lottery.” It has been clearly stated by
the U.S. Trademark Office that “the examining attorney has searched the Office
records and has found
no similar registered or pending mark which would bar
registration under the Trademark Act Section 2(d), 15 U.S.C. Section
1052(d).” Respondent does not deny that
its mark is “pending,” but whether the mark has been “officially” placed on the
registry does not change
the fact that there is “no similar registered or
pending mark which would bar registration.”
3.
None of the
cases cited by Complainant are similar to this matter aside from the fact that
the domain names are similar.
Complainant has shown no evidence that it has exclusive, trademark
rights to the words “Oregon Lottery.”
In all of the cases cited by Complainant the respondents have passively
held, not developed, or simply not responded to a dispute
request, and there is
no basis for any comparison.
4.
With
respect to Complainant’s charge of Respondent’s “reliance” on a disclaimer,
Respondent has not tried to “justify” retaining the
domain name based on a
disclaimer. The disclaimer was
voluntarily placed simply to appease any concerns by the State of Oregon that
it might be possible that people
may get confused if they do not know the
source and sponsorship of the goods or services being offered.
FINDINGS
AND CONCLUSIONS
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.
If
ever a case deserved summary disposition, it is this.
Identical
and/or Confusingly Similar
It is evident that the disputed domain names are identical
and confusingly similar to Complainant’s name.
Respondent contends, however, that it
registered the disputed domain names prior to Complainant’s registration of its
mark in the
United States Patent and Trademark Office.
Respondent cannot prevail on its
contention. This is because Complainant
could and did acquire common law trademark rights based on its use of the name
since 1985. It is the actual use that
creates legal rights to the mark, not a race to the Patent and Trademark
Office. See, 4 McCarthy, Trademarks
and Unfair Competition (updated 2000), § 25:74.2; see also Passion
Group, Inc. v. Usearch, Inc. (eResolution Aug. 10, 2000)
(Complainant established sufficient rights by virtue of its distribution and
advertising to enable it,
at common law, to prevent another magazine by the
same name from being passed off as that of Complainant.)[1] A trademark examining attorney obviously
could only ascertain whether there would be “confusion with current
registrations or prior
pending applications,” not as to conflict with common
law trademark rights as here.
The name Oregon Lottery is not generic,
but very specific, and if it were not, it would have no value to Respondent as
a domain name.[2]
As determined, infra, the Panel has
found that Respondent registered and used the disputed domain names in bad
faith. It follows, accordingly, that he
has no rights or legitimate interests in the disputed domain names.
Respondent is using <oregonlottery.com>
and <oregonlottery.net> in part to offer free e-mail service
addresses. It is not unlawful to conduct
an e-mail service (except in instances like here), but Respondent would not
have registered the disputed
domain names but for the obvious connection they
have with Complainant and its operations.
Were it not for the well-known name of the Oregon agency, the
registration and use of these domains would be valueless as an e-mail
service
and for any other purpose to both the Respondent and his customers. It is not the same at all as the use of a
common surname for e-mail businesses, where the purpose is for people with the
same name
to have a shared domain.
Here, the Panel finds that Respondent registered and uses the domain
names solely because of their clear and obvious connection with
the operations
of the Oregon agency holding the trademark.
Registration
and Use in Bad Faith
The Panel finds that Respondent was fully
aware and was on actual notice of Complainant’s rights in the OREGON LOTTERY
mark when he
registered the disputed domain names. The registration of a domain name despite actual or constructive
notice of Complainant’s mark is evidence of bad faith.[3]
Respondent knew when he registered the
disputed domain names that the State of Oregon had this long-standing agency
name and with
its association in the minds of the public. He registered the disputed domain names
solely because he felt he could create a business that made use of the
trademark of another
and the association of these domains had with the Oregon
agency.
Although Respondent has placed a
disclaimer on his websites, such disclaimers are not sufficient to prevent
initial interest confusion
in cases such as this. See Madonna v. Parisi, D2000-0847
(WIPO Oct. 12, 2000) (citing Brookfield
Comm., Inc. v. West Coast Entertainment Corp. (9th Cir. 1999)
[1999] USCA9 225; 174 F.3d 1036, “[r]espondent’s use of a disclaimer on its website is
insufficient to avoid a finding of bad faith.
First, the disclaimer may be ignored or misunderstood by Internet
users. Second, a disclaimer does
nothing to dispel initial interest confusion that is inevitable from
Respondent’s actions. Such confusion is
a basis for finding a violation of Complainant’s rights”).
It is overwhelmingly clear and the Panel
so finds and concludes that the only value of the disputed domain names to
Respondent is
because of their association with Complainant and its operations.
DECISION
Based
upon the above findings and conclusions and pursuant to Policy ¶ 4(i), it is
decided that the following domain names registered
by Respondent Patrick J.
Moore shall be and the same are TRANSFERRED to Complainant State of
Oregon, by and through the Oregon Lottery:
<oregonlottery.com> and <oregonlottery.net>.
JUDGE IRVING H. PERLUSS
(Retired), Panelist
Dated: January 9, 2003
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