DECISION

Texas Lottery Commission v. Terry Fisher a/k/a LottoMasta International

Claim Number: FA0406000289071

PARTIES

Complainant is Texas Lottery Commission (“Complainant”), represented by Dwayne K. Goetzel, 700 Lavaca, Suite 800, Austin, TX 78701.  Respondent is Terence Joseph Fisher a/k/a LottoMasta International (“Respondent”), P.O. Box 196, Bond University, QL 4229, Australia.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <texas-lotto.info>, registered with eNom, 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.

Bruce E. Meyerson as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 22, 2004; the Forum received a hard copy of the Complaint on June 24, 2004.

On June 23, 2004, eNom, Inc. confirmed by e-mail to the Forum that the domain name <texas-lotto.info> is registered with eNom, Inc. and that Respondent is the current registrant of the name.  Also, eNom, Inc. has verified that Respondent is bound by the eNom, 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 June 28, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 19, 2004 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@texas-lotto.info by e-mail.

A timely Response was received and determined to be complete on July 19, 2004.

Complainant submitted a timely Additional Response on July 23, 2004.  The Panel received additional information from Respondent which was not submitted in accordance with the rules and, therefore, did not consider that material.

On July 22, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Bruce Meyerson as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant (Including Additional Submission)

Complainant contends that Respondent’s domain name, <texas-lotto.info>, is identical or confusingly similar to Complainant’s LOTTO TEXAS trademark.  Complainant has established its rights in and to LOTTO TEXAS by virtue of extensive, exclusive, and continuous use, widespread publicity and advertising, and the generation of enormous amounts of revenue and goodwill by virtue of the use of funds for public purposes.  Respondent, on the other hand, lacks proof of any rights or legitimate interests in the domain name.  Respondent is not known by the domain name, does not use it as a trade name, and has no legitimate business plan with respect to the domain name.  Thus, Complainant contends that the domain name is being used by Respondent in bad faith.  Moreover, Complainant contends that Respondent cannot use Complainant’s trademark in “good faith” for commercial purposes. 

B. Respondent

According to Respondent, the purpose of the domain name at issue is to provide a free service that provides scientific, statistically proven information on the Texas Lottery. Although Respondent hopes users will purchase materials or services from him, Respondent states this is not a condition of providing the free service.  Respondent contends that the basic concept behind the domain name in dispute is educational and informational.  Respondent avows that he does not intend to provide any services comparable to services provided by Complainant.    

Respondent contends that in 2001, a "sunrise" period was introduced with respect to the introduction of .info domain names.  During this time, anyone with a registered national trademark could apply through a registrar for a .info domain name corresponding to the trademark.  According to Respondent, Complainant did not avail itself of this opportunity.  Respondent claims that for three years after the “sunrise” protection period, Complainant could have purchased the domain for under $10, but did not do so.  Thus, Respondent contends that it was reasonable for him to assume that he was entitled to register <texas-lotto.info>.

Respondent contends that the site would have been developed but for Complainant’s cease and desist letter of May 19, 2004, received only one month after the domain was acquired.  Respondent contends he has done all the necessary preparations for the site, and can have it “live” within 2-3 days after the domain name resolves.

Respondent contends there is no likelihood of any confusion between his site and the Texas Lottery.  Moreover, Respondent contends that the disclaimers that will be displayed on the top of every page will ensure that no confusion exists.  In fact, Respondent contends that he offered Complainant the opportunity to help word the disclaimers. 

FINDINGS

The record in this case indicates the following:

The primary trademark on which the Complaint is based is LOTTO TEXAS (registered on February 10, 2004).  This mark has been in use since at least 1992 and became distinctive for Complainant’s goods and services offered prior to Respondent’s registration of the domain name.  The mark is used in connection with games of chance and lottery services provided by Complainant.  There is no dispute that Complainant has spent millions of dollars since 1992 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.  See Texas Government Code §§ 466.014-015.  Complainant is the only entity authorized to sell lottery tickets or offer lottery-related services in the State of Texas. 

Respondent registered its domain name, <texas-lotto.info>, in April 2004, approximately two months after registration of the LOTTO TEXAS word mark.  Respondent has no affiliation or relationship with Complainant.  Respondent is not an authorized vendor or retailer of lottery-related services in the State of Texas.  

On May 19, 2004, Complainant sent a cease and desist letter to Respondent.  Respondent replied indicating how he intended to use the domain name. 

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.

Identical and/or Confusingly Similar

Complainant correctly asserts that it has established rights in the LOTTO TEXAS word and design marks by registering them with the United States Patent and Trademark Office (Reg. No. 2,812,137 issued February 10, 2004 and Reg. No. 2,708,643 issued April 22, 2003). 

Complainant is also correct that the <texas-lotto.info> domain name is confusingly similar to Complainant’s LOTTO TEXAS marks because it merely inverts the exact words in the marks and adds a hyphen.  The addition of a generic top-level domain (gTLD) is insignificant in determining confusing similarity.  CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000); Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000).   

Rights or Legitimate Interests

Complainant contends that Respondent lacks rights or legitimate interests in the domain name for several reasons: (1) Respondent intends to use the domain for commercial gain and is “trading” on Complainant’s goodwill; (2) Respondent could achieve his business goals through the use of another domain name; (3) Respondent’s use of a disclaimer does not address the possibility of confusion between the domain name and Complainant’s mark; and (4) users of the domain name would be directed to the New York Lottery.

Respondent submits that he plans to use the website to provide, at no cost, scientifically proven information on playing lotteries.  Respondent contends that while the website will offer some more “up-to-the-minute analysis” for a fee, paying for such a service is not a condition for receiving the free information.  Furthermore, Respondent asserts that the purpose of the website is to provide information to players of Texas lottery games.  

Respondent is correct that the decision United States Postal Service v. Postoffice.com, Inc., FA 96313 (Nat. Arb. Forum Mar. 19, 2001) supports his position on this issue.  In that case, a majority of the panel found that the respondent’s use of the domain name in connection with its business to help Internet users find international postal and commercial e-mail services was a bona fide offer of goods and services.  Similarly, the Panel finds that the proposed use of Respondent’s site to offer information about the Texas Lottery and how to play the Texas Lottery is also a bona fide offer of goods and services. 

Complainant’s other concerns are, at this time, insufficient to cause the Panel to transfer the domain name.  After receiving Complainant’s letter, Respondent stopped proceeding with the development of its site.  Based on Respondent’s representations, once in operation, the site could be designed in a way to address the concerns raised by Complainant.[1]  Moreover, it would appear that visitors to Respondent’s site would not reasonably believe that it was operated by the Texas Lottery Commission.  Indeed, the combination of the proposed disclaimer[2], combined with the fact Respondent does not sell lottery tickets, would appear to address Complainant’s concerns.  Diversion of Internet users to the site of a potentially competing lottery is more troublesome, but the concern is premature because Respondent’s site is not currently in use.

On the other hand, because it is possible that once Respondent’s site is in operation, Complainant’s concerns may well be justified, the Panel wishes to make clear that its ruling in this case is without prejudice to the resubmission of the complaint after the site is operating, and a subsequent panel should not give this decision any preclusive effect should another complaint be filed.

Registration and Use in Bad Faith

Because Complainant has failed to establish that Respondent lacks rights or legitimate interests in the disputed domain name, it is not necessary to consider the issue of registration and use in bad faith. 

The Panel would like to make a final observation, however, as Complainant has correctly pointed out that there are a number of decisions in its favor.  We note, however, that with one exception noted in Note 1, supra, in each of the cases cited, the respondent failed to make any defense of its domain name.  E.g., Texas Lottery Comm’n v. TXB Marketing Group, FA 103052 (Nat. Arb. Forum Feb. 1, 2002) (“In the absence of a Response . . . from Respondent, the Panel finds it appropriate to accept Complainant’s assertion as true.”); Texas Lottery Comm’n v. Lang, FA 137707 (Feb. 14, 2002) (“Respondent has failed to submit a Response in this proceeding.”); Texas Lottery Comm’n v. Pearson, FA 244526 (Nat. Arb. Forum Apr. 29, 2004) (“Respondent has failed to contest the allegations of the Complaint . . . .”).

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED without prejudice.

Bruce Meyerson, Panelist
Dated: August 5, 2004

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