WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Missouri Lottery Commission v. Common law, SED Domain Services

Case No. D2013-0476

1. The Parties

The Complainant is Missouri Lottery Commission of Jefferson City, Missouri, United States of America, represented by Senniger Powers LLP, United States of America (“US”).

The Respondent is Common law, SED Domain Services of Douglas, Isle of Man, United Kingdom of Great Britain and Northern Ireland (“UK”).

2. The Domain Name and Registrar

The disputed domain name <missourilotteryonline.com> (“Disputed Domain Name”) is registered with Register.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2013. On March 7, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 7, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On March 11, 2013, the Complainant filed an amended Complaint.

The Center verified that the Complaint together with the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2013.

The Center appointed Gabriela Kennedy as the sole panelist in this matter on April 12, 2013. 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.

4. Factual Background

The Complainant is a state agency of the State of Missouri, US and has been operating lottery services under the MISSOURI LOTTERY and MOLOTTERY mark since 1986 and 1997 respectively. The Complainant registered for a Missouri State Service Mark Registration for MISSOURI LOTTERY on December 6, 1996 and a U.S. Service Mark Registration for MOLOTTERY on September 13, 2011. Through <molottery.com>, which was registered on May 18, 1998, the Complainant sells lottery tickets and offers information in relation to its Missouri Lottery services.

The Respondent is based in the UK and the Disputed Domain Name was registered on June 6, 2006.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarised as follows:

(a) The Disputed Domain Name is identical or confusingly similar to the Complainant’s MISSOURI LOTTERY service mark, in which the Complainant has rights:

(i) the Complainant has been using the MISSOURI LOTTERY mark since 1986 and has been the holder of the MISSOURI LOTTERY service mark since 1996; and

(ii) save that the Disputed Domain Name contains the generic word “online”, it is identical to the Complainant’s MISSOURI LOTTERY service mark and incorporates the MISSOURI LOTTERY service mark in its entirety.

(b) The Respondent does not have rights or legitimate interests in the Disputed Domain Name:

(i) the Respondent does not own any service or trade marks for MISSOURI LOTTERY, is not commonly known by the name MISSOURI LOTTERY, and has not done business under that name;

(ii) the Complainant has not authorised the Respondent to own or use any domain name incorporating the MISSOURI LOTTERY trade mark; and

(iii) the Disputed Domain Name is not being used in connection with a bona fide offering of goods or services or for legitimate fair use purposes. The Respondent draws unsuspecting consumers to its Website through use of the Complainant’s MISSOURI LOTTERY mark in the Disputed Domain Name. The website at the Disputed Domain Name (the “Website”) appears to be an online lottery website offering users the opportunity to play various other international lotteries, in competition with the Complainant.

(i) the Respondent has engaged in a pattern of registering domain names corresponding to various US state lotteries. All of these domain names point to the Respondent’s Website, which sells international lottery tickets in competition with the Complainant; and

(ii) by drawing unsuspecting users to the Website through the fame of the Complainant’s MISSOURI LOTTERY mark and offering competing lottery services on the Website, the Respondent is intentionally attempting to trade upon the Complainant’s goodwill.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

The fact that the Respondent has not submitted a Response does not automatically result in a decision in favor of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain name has been registered and is being used by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in respect of the MISSOURI LOTTERY service mark on the basis of its use dating back to 1986 and its registration dating back to 1996.

The only difference between the Disputed Domain Name and the Complainant’s MISSOURI LOTTERY mark is the inclusion of the generic word “online”. It is well-established that in cases where the distinctive and prominent element of a domain name is the complainant’s mark and the only addition is a generic term that adds no distinctive element; such an addition does not negate the confusing similarity between the domain name and the mark and should be disregarded. As a result, the Disputed Domain Name is confusingly similar to the Complainant’s service mark.

The Panel accordingly finds that the Disputed Domain Name is confusingly similar to the MISSOURI LOTTERY service mark in which the Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

The Panel accepts that the Respondent is not a licensee nor associated with the Complainant in any way that could give rise to any licence, permission or other right by which the Respondent could own or legitimately use the Complainant’s MISSOURI LOTTERY service mark. The Panel further accepts that the Respondent has not provided any evidence to demonstrate a registration of a MISSOURI LOTTERY service or trade mark anywhere in the world nor any evidence that it has become commonly known by the Disputed Domain Name (paragraph 4(c)(ii) of the Policy). The Complainant’s MISSOURI LOTTERY service mark is well-known in the US and has been used extensively since 1986, which is well before the registration of the Disputed Domain Name on June 26, 2006. Accordingly, the Panel is of the view that a prima facie case is established and it is for the Respondent to prove it has rights or legitimate interests to the Disputed Domain Name. As the Respondent did not submit a Response to the Complainant’s contentions, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.

Since the Panel has established that the Respondent does not appear to have any trade mark or service mark rights in respect of or is commonly-known by the Disputed Domain Name, the only way for the Respondent to acquire rights or legitimate interests in the Disputed Domain Name for the purposes of 4(a)(ii) of the Policy would be through use of the Disputed Domain Name in connection with a bona fide offering of goods or services, or for legitimate noncommercial purposes.

From the evidence presented by the Complainant, the Respondent has been exploiting user confusion and intentionally attracting unsuspecting users to the Disputed Domain Name for commercial gain. The Website sells lottery tickets for multiple international lotteries, in direct competition with the Complainant. The Respondent’s use of the Complainant’s trade mark value to provide services competitive with those of the Complainant cannot amount to a “bona fide offering of goods or services” or a “legitimate noncommercial or fair use” of the Disputed Domain Name. Furthermore, any use by the Respondent of MISSOURI LOTTERY would be an infringing use of the Complainant’s mark, and does not constitute a bona fide offering of goods or services (Madonna Ciccon, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847).

Consequently, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Using a domain name to intentionally attract, for commercial gain, Internet users to a website in an effort to trade on the Complainant’s goodwill is evidence of bad faith registration and use under the Policy (Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-00057). The offer of international lottery tickets on the Website creates a likelihood of confusion as to source, sponsorship, affiliation or endorsement of the Disputed Domain Name, as established by the fact that the Disputed Domain Name is identical to the Complainant’s MISSOURI LOTTERY service mark. Given that the Website offers competing products to the Complainant aggravates the likelihood of confusion.

Furthermore, any doubt in the minds of the Panel as to the motives of the Respondent in registering the Disputed Domain Name is dispelled by the fact that the Complainant puts forward evidence of the Respondent’s pattern of registering domain names that correspond to various US state lotteries such as <californialotteryonline.com>, <newyorklotteryonline.com> and <floridalotteryonline.com>. All of these domain names point to the Respondent’s Website, which offers competing services to their respective rights holder.

Given the above, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy in respect of the Disputed Domain Name.

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 <missourilotteryonline.com> be transferred to the Complainant.

Gabriela Kennedy
Sole Panelist
Date: April 26, 2013