national arbitration forum

DECISION

Texas Lottery Commission v. RN, WebReg

Claim Number:  FA0410000348158

PARTIES

Complainant is Texas Lottery Commission (“Complainant”), represented by Dwayne K. Goetzel, 700 Lavaca, Suite 800, Austin, TX 78701.  Respondent is RN, WebReg  (“Respondent”), 4200Wisconsin Ave. NW, Washington, D.C. 20016-2143.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <thetexaslottery.com>, registered with Domain Discover.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 21, 2004; the National Arbitration Forum received a hard copy of the Complaint on October 25, 2004.

On October 27, 2004, Domain Discover confirmed by e-mail to the National Arbitration Forum that the domain name <thetexaslottery.com> is registered with Domain Discover and that Respondent is the current registrant of the name. Domain Discover has verified that Respondent is bound by the Domain Discover 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 October 28, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 17, 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@thetexaslottery.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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On November 29, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <thetexaslottery.com> domain name is confusingly similar to Complainant’s TEXAS LOTTERY mark.

2. Respondent does not have any rights or legitimate interests in the <thetexaslottery.com> domain name.

3. Respondent registered and used the <thetexaslottery.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant uses the TEXAS LOTTERY mark in connection with games of chance and lottery services provided by Complainant. Complainant has exclusive authority to supervise and control lottery games conducted in the state of Texas, pursuant to Texas Government Code §§ 466.014-5. The United States Patent and Trademark Office (the “USPTO”) granted Complainant a registration for the TEXAS LOTTERY word mark, U.S. Reg. No. 2,712,848, on May 6, 2003. Complainant commenced use of the trademark TEXAS LOTTERY at least as early as May 18, 1992, and spent over $200 million from 1992 to 1999 promoting and advertising the mark and its related goods and services. Complainant’s is one of the largest operators of lottery games in the United States and world by revenue.

Respondent registered the <thetexaslottery.com> domain name on March 4, 2004, but is not licensed or authorized to use Complainant’s TEXAS LOTTERY mark for any purpose. Complainant mailed Respondent a letter dated April 2, 2004, which stated that its registration of the domain name at issue infringed Complainant’s rights in the mark TEXAS LOTTERY. On June 11, 2004, the domain name resolved to a website offering the domain name registration for sale.

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 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 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 rights in the TEXAS LOTTERY mark through registration with the USPTO and subsequent continuous use. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (holding that registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption.).

Respondent’s <thetexaslottery.com> domain name is confusingly similar to Complainant’s TEXAS LOTTERY trademark because the domain name fully incorporates the mark and merely removes a space between the words in the mark, prepends the generic word “the” to the mark, and adds the top-level domain “.com” to the mark. Panel decisions have held that removal of spaces from a mark does not stop a domain name from being confusingly similar to the mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names”). Furthermore, it is well established that minor changes such as adding the word “the” to a mark is inconsequential to a finding that the domain names are identical or confusingly similar. See Teleplace, Inc. v. Eilee De Oliveira, FA 95835 (Nat. Arb. Forum Dec. 4, 2000) (finding that the domain name <theteleplace.com> is identical to the Complainant’s TELEPLACE mark); see also America Online, Inc. v. Nebojsa Prijic, FA 112639 (Nat. Arb. Forum Jun. 27, 2002) (finding that the domain name <theamericaonline.com> is identical to the Complainant’s AMERICA ONLINE mark). Finally, the top-level domain “.com” does not distinguish the domain name from the mark.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Therefore, Respondent’s <thetexaslottery.com> domain name contains no elements that distinguish the domain name from Complainant’s TEXAS LOTTERY trademark for the purpose of determining whether it is identical or confusingly similar.

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

Rights or Legitimate Interests

Respondent has failed to contest the allegations of the Complaint; therefore, the Panel presumes that Respondent lacks rights and legitimate interests in the <thetexaslottery.com> domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also 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).

The record contains no evidence that Respondent is commonly known by the <thetexaslottery.com> domain name. Respondent is not licensed or authorized to register or use domain names that incorporate Complainant’s mark. Therefore, the Panel concludes that Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Respondent’s <thetexaslottery.com> domain name resolves to a website that purports to offer the domain name registration for sale. The record contains no evidence that Respondent has used the website located at the domain name for any other purpose than for reselling the domain name registration for profit. Respondent’s attempt to resell a domain name confusingly similar to Complainant’s mark does not constitute 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 J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where Respondent registered the domain name with the intention of selling its rights).

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

Registration and Use in Bad Faith

The Panel infers that Respondent had actual or constructive knowledge of Complainant’s mark because Complainant is one of the largest lotteries by revenue worldwide. Registration of a domain name confusingly similar to a mark, despite knowledge of a mark holder’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); 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 worldwide prominence of the mark and thus Respondent registered the domain name in bad faith).

Respondent currently redirects website visitors to a page that states that the <thetexaslottery.com> domain name registration is for sale. The price Respondent is asking undoubtedly exceeds its out-of-pocket expenses for registering the domain name. In light of the Panel’s reasonable inference that Respondent registered the disputed domain name with full knowledge of Complainant’s rights in the TEXAS LOTTERY mark, the Panel concludes that Respondent deliberately registered the <thetexaslottery.com> domain name so that it could ultimately resell the domain name to Complainant. These facts support a finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(i). See Nat’l Press Club v. High Traffic Domains inc, FA 154113 (Nat. Arb. Forum Jun. 2, 2003) (finding bad faith where respondent redirected Internet users to a website purporting to sell the disputed domain name); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).

The Panel thus finds that Respondent registered and used the <thetexaslottery.com> domain name in bad faith and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

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

Accordingly, it is Ordered that the <thetexaslottery.com> domain name be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  December 13, 2004

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