WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Maryland State Lottery and Gaming Control Agency v. Whois Privacidad SA de CV / Iris Milady Soto Puerto

Case No. D2015-2325

1. The Parties

Complainant is Maryland State Lottery and Gaming Control Agency of Baltimore, Maryland, United States of America (“USA”), internally represented.

Respondent is Whois Privacidad SA de CV / Iris Milady Soto Puerto of San Pedro Sula, Honduras.

2. The Domain Name and Registrar

The disputed domain name <marylandlottery.com> is registered with Tecnologia, Desarrollo Y Mercado S. de R.L. de C.V. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2015. On December 22, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 24, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 28, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 4, 2016 and an amendment to the Complaint on January 5, 2016. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed a second amendment to the Complaint on January 7, 2016.

The Center verified that the Complaint together with the amendments to the Complaint/amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 28, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 29, 2016.

The Center appointed Roberto Bianchi as the sole panelist in this matter on February 8, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The Panel has decided that the language of the proceeding shall be English. See section 6A below.

4. Factual Background

The Maryland Lottery was created in 1972. Complainant, an agency of the State of Maryland, USA, sells lottery tickets on behalf of this state.

Complainant owns the following marks registered with the United States Patent and Trademark Office (“USPTO”):

- MARYLAND LOTTERY, Registration No. 2,674,720, Registration date January 14, 2003, filed on March 4, 2002, covering paper products and printed materials, etc., in international class 16; games and amusements and lottery tickets, etc., in international class 28; and lottery services, etc., in international class 41. First use/ first use in commerce: February 1, 1990.

- MDLOTTERY.COM, Registration No. 2,659,301, Registration date December 10, 2002, filed on March 1, 2002, covering lottery services, a website providing information in the lottery field, promoting lotteries for the State of Maryland, etc., in international class 41. First use / first use in commerce: October 1, 1998.

According to the corresponding WhoIs information record, the disputed domain name was created on August 12, 2003.

As of February 15, 2016, the website at the disputed domain name, “ww2.marylandlotery.com”, showed an initial page entitled “Online Official Lotteries from Around the World”. This link redirects to “www.lotterymaster.com”, a website which in turn redirects to lottery games unrelated to the Maryland Lottery, such as “Euro Jackpot”, “Euro Millions”, “Power Ball”, “Mega Lotto”, etc. Each of these links contains a button or link reading, “Play Now”. The initial page also contains the following “Related Topics”: “Online Casinos”, “Poker Online”, “Blackjack”, “Craps”, “Roulette”, “Sports Betting”, “Horse Racing”, “Las Vegas”, “Baccarat” and “Keno”, games apparently unrelated to the Maryland Lottery.

5. Parties’ Contentions

A. Complainant

Complainant contends as follows:

The disputed domain name is identical or confusingly similar to Complainant’s mark MARYLAND LOTTERY, and is also confusingly similar to Complainant’s mark MDLOTTERY.COM because “MD” is the postal abbreviation for “Maryland”.

Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant is an agency of the State of Maryland. The Maryland Lottery was created in 1972. Complainant sells lottery tickets on behalf of the State of Maryland. No other entity is authorized to operate as a lottery in the State of Maryland. Both the Maryland Constitution and Maryland statutory law prohibit any lottery in Maryland other than the lottery run by the State, which is that one operated by Complainant. There can only be one Maryland Lottery, and that is Complainant. No other entity can legally be a lottery in Maryland. It is illegal for any other entity to claim that role or name. Therefore, no other entity is authorized to use the name, “Maryland Lottery” or to use the term “marylandlottery.com”.

Complainant did not grant permission to any registrant to use or to register the disputed domain name, and Complainant and Respondent do not have and have not had a commercial or other relationship. Respondent is not affiliated with Complainant or its products in any way, nor is Respondent authorized in any way to use the Maryland Lottery’s name or marks.

There is no evidence that the Respondent is or has been known as “Maryland Lottery” or has acquired any trademark or service mark rights in the “Maryland Lottery” name or mark. The disputed domain name is not being used in connection with a bona fide offering of goods or services. Even the links that purport to relate to lottery do not relate to or link to the Maryland Lottery. The links do not all link to what the “www.marylandlottery.com” website purports they will link to.

Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. In fact, the disputed domain name is advertised as being for sale.

The disputed domain name was registered and is being used in bad faith. When people go to the website at the disputed domain name it is reasonable to presume they intend to go to a site run by or for Complainant, Maryland Lottery. As a result of Respondent’s unauthorized actions, however, the corresponding website does not provide a site for Complainant. Instead, any link from this website also goes to sites other than Complainant’s.

On the website at the disputed domain name there are links that sound like they relate to the Maryland Lottery and links to commercial sites from which Respondent presumably gains a profit or other commercial gain. These uses do not constitute bona fide offerings of goods or services under Policy paragraph 4(c)(i) or legitimate noncommercial or fair uses under Policy paragraph 4(c)(iii).

Other “Sponsored Listings” do not sound like lottery links, such as “Home Treadmill Coupon”, “Request a Trial of Nexis®”, and “$0 Down Installation”. Links that purport to relate to the Maryland Lottery, but instead require payment for unrelated goods or services or for more information, or are indirect methods that may or may not provide sources of accurate winning lottery numbers, tarnish the Maryland Lottery’s reputation and its trademarks and service marks. Links that do not purport to relate to the Maryland Lottery or lotteries in general tarnish and dilute the Complainant’s trademarks and service marks.

The website at the disputed domain name does not link directly to Complainant’s website or to any other real lotteries. Instead, the rare link from the website at the disputed domain name to Complainant or any of Complainant’s games (for example, Mega Millions) is not intentional, but instead is arrived at only by use of computer spelling corrections.

In addition, several of the links on the website at the disputed domain name go to malicious spyware and adware. Complainant’s Cisco and McAfee software block access to the website because of adware and spyware on several pages within the website.

Respondent’s use of the disputed domain name creates a likelihood of confusion with Complainant’s registered marks, and a likelihood of confusion about the source of the disputed domain name and its website.

Many of the links on the website at the disputed domain name offer items for sale. Respondent presumably is charging fees to advertisers on Respondent’s fraudulent website. Respondent’s use of the disputed domain name as described above also suggests that the disputed domain name was registered to take advantage of Complainant’s goodwill and reputation in the MARYLAND LOTTERY and MDLOTTERY.COM marks, which is evidence of Respondent’s bad faith.

In order to register a domain name, registrants must represent that to the best of their knowledge and belief, “neither the registration of the Registered Name nor the manner in which it is directly or indirectly used infringes the legal rights of any third party.” At a minimum, Respondent must have known or suspected that the Complainant had legal rights in the name “Maryland Lottery” and therefore in the disputed domain name.

In addition, the website at the disputed domain name infringes on Complainant’s registered marks. Each page of Respondent’s website is headed with Complainant’s mark MARYLAND LOTTERY. Respondent does not indicate, by use of ® or any other language, that this is a registered mark owned by Complainant. At least one page on the website at the disputed domain name shows, “Mdlottery Results”. MDLOTTERY.COM is also a registered trademark of Complainant.

The disputed domain name is currently offered for sale. The only entity with a legitimate purpose and right that could buy the disputed domain name is Complainant.

Complainant sent notice of its valid trademark rights in the disputed domain name and website to a previous registrant of the disputed domain name, however it continued to use it and sold it to Respondent after receiving that notice letter.

Respondent has a history of registering domain names it has no right to and that infringe third parties’ trademark rights. See, for example Target Brands, Inc. v. 2Imagen Whois Privacidad / Iris Milady Soto Puerto, WIPO Case No. D2013-0075.

Complainant’s marks are registered with the USPTO and they have substantial fame in the United States. As a result, it seems likely that Respondent had actual or at least constructive knowledge of Complainant’s marks. This is further evidence of Respondent’s bad faith.

Respondent’s motive in registering and using the disputed domain name and website seems to be some or all of the following: to disrupt Complainant’s relationship with its customers or potential customers by tarnishing its trademark, to attempt to attract Internet users by causing confusion regarding the website’s source for potential gain, and to persuade Complainant to buy the disputed domain name from it for an amount in excess of the amount that it would normally have cost to buy the disputed domain name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Preliminary Issue: Language of the Proceeding

Complainant submitted the Complaint, the amendments to the Complaint and the amended Complaint in English, and requested that the language of the proceeding be English. Complainant based this request on the fact that the content of the website at the disputed domain name is in English, and that the current Registrar informed the Center that the registration agreement was published both in English and in Spanish, and that the registrant (i.e., Respondent), had agreed to receive notice in any of these languages. The Panel notes that the current contents of the website at the disputed domain name are exclusively in English, which allows to infer that Respondent is cognizant in English. See section 4 above, in fine. The Panel also considers that according to the Registrar’s verification response to the Center the registration agreement is in both English and Spanish, and that according to the Registrar, Respondent agreed to receive notices in either language. The Panel notes further that Respondent failed to make any submission in this proceeding. Accordingly, the Panel, pursuant to Rules paragraph 11(a), decides that the language of the proceeding be English.

B. Preliminary Issue: Respondent’s identity

The Panel wishes to remark that although Complainant in its Complaint and amended Complaint refers to various entities as “Respondents”, reflecting the fact that the disputed domain name was successively registered by various entities and persons that even changed registrars, the Rules establish that “Respondent means the holder of a domain-name registration against which a complaint is initiated” and, thus, the Panel has considered Complainant’s contentions and evidence to the extent that they refer to the Registrar-confirmed Respondent “Iris Milady Soto Puerto”.

C. Identical or Confusingly Similarity

By submitting copies of the corresponding certificates - see section 4 above -, Complainant has shown to the satisfaction of the Panel that it owns the USA federal trademark registrations for MARYLAND LOTTERY and MDLOTTERY.COM, and thus, that it has rights in such marks.

The Panel notes that the disputed domain name consists of the MARYLAND LOTTERY mark (without the space between the terms “Maryland” and “lottery”) plus the Top-Level Domain “.com”. The Panel finds that the disputed domain name is identical to the mark MARYLAND LOTTERY, and that it is confusingly similar to Complainant’s MDLOTTERY.COM mark, since “MD” is the USA postal abbreviation for the State of Maryland.

Accordingly, the first element of the Policy is met.

D. Rights or Legitimate Interests

Complainant contends that it is the only entity authorized to operate as a lottery in the State of Maryland, and that no other entity is authorized to use the name “Maryland Lottery”. Complainant further contends that it did not grant permission to any registrant to use or to register the disputed domain name, and that it does not have a commercial or other relationship with Respondent.

Complainant also says that there is no evidence that Respondent is or has been known as “Maryland Lottery” or has acquired any trademark or service mark rights in the “Maryland Lottery” name or mark.

Further, Complainant states that the disputed domain name is not being used in connection with a bona fide offering of goods or services because the links that purport to relate to lottery do not relate to or link to the “Maryland Lottery”. Lastly, Complainant contends that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain because the disputed domain name is advertised as being for sale.

Taken together with the available evidence, Complainant’s contentions are apt to constitute a prima facie case that Respondent lacks rights and legitimate interests.

The Panel agrees with Complainant that Respondent does not appear to be known – commonly or otherwise – by the disputed domain name, which excludes the application of Policy paragraph 4(c)(ii).

The Panel further notes that as reflected in the evidence submitted with the Complaint the contents of the website at the disputed domain name, and in particular its links, do not relate to the “Maryland Lottery” but to other providers of lottery games, which mostly compete with Complainant. The Panel has confirmed this during its visit of February 15, 2016 to the website at the disputed domain name, “ww2.marylandlotery.com”, where the Panel’s browser returned an initial page entitled “Online Official Lotteries from Around the World”. When the Panel clicked on this link, it redirected to “www.lotterymaster.com”, a website which displayed the names of lottery games totally unrelated to the “Maryland Lottery”, such as “Euro Jackpot”, “Euro Millions”, “Power Ball”, “Mega Lotto”, etc. Each of the corresponding links showed a button or link reading, “Play Now”, which if clicked on presumably would allow the Internet user to place bets. The initial page also contained the following “Related Topics”: “Online Casinos”, “Poker Online”, “Blackjack”, “Craps”, “Roulette”, “Sports Betting”, “Horse Racing”, “Las Vegas”, “Baccarat” and “Keno”. The Panel notes that these games or places clearly are unrelated to, and compete with, Complainant.

The Panel concludes, in agreement with Complainant, that offering information under the title “Maryland Lottery”, and providing in fact access to competing lotteries and games, presumably to receive monies from click-through, is neither a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i). See Deutsche Post AG v. MailMij LLC, WIPO Case No. D2003-0128 (related to <deutschepost.net>) (“[A]s the Complainant contends, there would be a very real likelihood that Internet users would assume the Respondent’s service under the Domain Name to be in some way associated with the Complainant and that he would derive a substantial commercial advantage from that misapprehension. With that background, the Respondent’s service under and in relation to the Domain Name cannot conceivably constitute a bona fide offering of a service within the meaning of paragraph 4(c)(i) of the Policy.”).

In the Panel’s opinion, because Respondent presumably is extracting a profit via a click-through scheme based on confusion with Complainant’s marks, the use of disputed domain name cannot be a legitimate noncommercial use or a fair use, pursuant to Policy paragraph 4(c)(iii). The fact that the website at the disputed domain name lacks any information on the Maryland lottery further supports this finding. See Rolex Watch U.S.A., Inc. v. Spider Webs, Ltd., WIPO Case No. D2001-0398, related to <relojesrolex.com> and <erolexwatches.com> (“The diversion of Internet users to the website by the use of the Domain Names does not constitute fair use if the Respondent is not using the website to which the Domain Names resolve to provide commentary on Rolex watches. Cf. Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413 (September 18, 2000) (use of famous trademark in order to attract the public to the Respondent’s web site is not fair use). Accepting the Respondent’s claim that its website is legitimate use would mean that cybersquatters could rightfully acquire domain names that incorporate famous trademarks by simply arranging for the domain names to resolve to generic and largely empty websites with no information or opportunities for commentary on the products known by the trademarks. As a policy matter, the Panel declines to accept such a practice.”)

Since Respondent failed to make any submission in this proceeding, the Panel concludes that Complainant has made out its case that Respondent lacks any rights or legitimate interests in the disputed domain name.

The second requirement of the Policy is thus met.

E. Registered and Used in Bad Faith

Complainant has shown that its USA mark MARYLAND LOTTERY, Registration No. 2,674,720 was registered on January 14, 2003, and that its U.S. mark MDLOTTERY.COM, Registration No. 2,659,301, was registered on December 10, 2002. See section 4 above. The Panel notes that both trademark registrations predate the registration of the disputed domain name.

Complainant has also shown that the initial page of the website at the disputed domain name is entitled “Maryland Lottery”, and that its contents and links mostly refer to lottery games which compete with Complainant in providing lottery games. In the opinion of the Panel these facts shows that Respondent knew of Complainant, its marks and products, and had them in mind, at the time of registering the disputed domain name. In the circumstances of this case this means that the registration of the disputed domain name was in bad faith.

The Panel further notes that according to the available evidence the content of the website at the disputed domain name, although it profusely uses the title “Maryland Lottery”, does not relate at all to this lottery. Instead, the site contains links to websites of providers of competing lottery games, which Respondent is using to presumably extract a profit via a click-through scheme. See section 6D above. The Panel agrees with Complainant that by using the disputed domain name as described, Respondent has intentionally attempted to attract, for commercial gain, Internet users presumably looking for Complainant’s “Maryland Lottery” to its website and other on-line locations, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location, which is a circumstance of registration and use in bad faith pursuant to Policy paragraph 4(b)(iv).

The third element of the Policy is also met.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <marylandlottery.com>, be transferred to Complainant.

Roberto Bianchi
Sole Panelist
Date: February 16, 2016