DECISION

Delaware State Lottery v. km

Claim Number:  FA0305000158424

PARTIES

Complainant is Delaware State Lottery, Dover, DE (“Complainant”) represented by Michael F. McTaggart, of Delaware Department of Justice. Respondent is km, Bronx, NY (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <delawarelottery.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com.

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 21, 2003; the Forum received a hard copy of the Complaint on May 22, 2003.

On May 22, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.Com confirmed by e-mail to the Forum that the domain name <delawarelottery.com> is registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.Com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.Com 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 May 23, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 12, 2003 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@ delawarelottery.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 Forum transmitted to the parties a Notification of Respondent Default.

On June 19, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 <delawarelottery.com> domain name is confusingly similar to Complainant’s DELAWARE LOTTERY mark.

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

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

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

FINDINGS

            Complainant has been continually using the DELAWARE LOTTERY mark in commerce since October 30, 1975.  Complainant uses the DELAWARE LOTTERY mark on Delaware lottery tickets, video lottery machines, instant ticket game cards, game cards, stationary, posters, advertising in newspapers, radio and television, promotional materials and throughout its website at <delottery.com> and <lottery.state.de.us>.  On December 10, 2002 Complainant obtained a registration from the U.S. Patent and Trademark Office for the DELAWARE LOTTERY mark (Reg. No. 2,658,545).  Complainant filed a trademark application for the DELAWARE LOTTERY mark on July 5, 2001. Complainant’s DELAWARE LOTTERY mark is registered on the Principal Register.     

            The Delaware Lottery was created by legislation, 59 Del. Laws, Chapter 348.  Under Delaware law, the terms “Lottery”, “state lottery” or “system” are defined to “mean the public gaming systems or games established and operated pursuant to [29 Delaware Code Chapter 48] and including all types of lotteries.  29 Del. C. § 2803(b).  Delaware law prohibits anyone, other than a licensed agent of the Delaware Lottery, from selling lottery tickets or shares.  29 Del. C. § 4809(a).

            According to Delaware law, Complainant must protect its players from any confusion from games that are not affiliated with the DELAWARE LOTTERY.  Complainant uses the DELAWARE LOTTERY mark to identify the source or origin of the games it offers.  As a result of Complainant’s widespread, long-term, continuous and prominent usage of the DELAWARE LOTTERY mark, the mark has acquired significant goodwill, fame and public recognition in and outside of Delaware.

            The WHOIS administrative information for the disputed domain name shows that Tech Domains registered the domain name on March 8, 2002.  In March 2003, Tech Domains used the <delawarelottery.com> domain name to direct Internet users to a commercial web site selling medical products, which had no connection to the Delaware Lottery.  When an Internet user would access the <delawarelottery.com> domain name, it would be directed to <e-scripts-md.com>. 

            In April 2003, Complainant learned that the <delawarelottery.com> domain name was being used to direct Internet traffic to the <abortionismurder.org> webpage.  The <abortionismurder.org> domain name webpage contains graphic pictures of aborted fetuses along with other pro-life information.  The Delaware Lottery has received complaints from players who accessed the <delawarelottery.com> domain name and were directed to the <abortionismurder.org> domain name. 

A search of WHOIS on April 2, 2003 indicated that the registrant of the <delawarelottery.com> domain name had changed to High Traffic Domains Inc. Cheap Domains Buy this domain for $1000 or less, yet it had the same address and phone number used by the previous registrant and current Respondent.  Prior to filing its Complaint, Complainant conducted an updated WHOIS search, which listed the new registrant of the <delawarelottery.com> domain name as, “km” at the same address and phone number used by the prior owners of the <delawarelottery.com> domain name. 

            The Panel notes that the disputed domain name registrant’s name has changed three times since the domain name was initially registered.  However, the registrant’s address and telephone number have remained the same.  Thus, the Panel will treat the three registrant’s names as the current Respondent.

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 common law rights in the DELAWARE LOTTERY mark based on its continuous use of the mark in commerce since 1975.  See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law). 

Complainant may protect its common law trademark rights in a mark that exists as a result of the Delaware legislation creating the Delaware Lottery.  See United States Postal Service v. Consumer Info. Org., FA 95757 (Nat. Arb. Forum Nov. 27, 2000) (Congress granted Complainant “the exclusive right to use the name POST OFFICE.”  In addition, “Complainant has gained widespread public recognition of both its POST OFFICE and PRIORITY MAIL marks and the services offered under those marks. These marks have become a distinctive designation of the source of its products and services and have become uniquely associated with the Postal Service.”  Complainant has provided evidence of its common law mark rights for the "Post Office domain name.”).

Furthermore, Complainant has established rights in the DELAWARE LOTTERY mark through registration of the mark with the U.S. Patent and Trademark Office because Complainant filed its trademark application before Respondent registered the disputed domain name.  See FDNY Fire Safety Educ. Fund, Inc. v. Roger Miller, FA 145235 (Nat. Arb. Forum March 26, 2003) (finding that Complainant’s rights in the FDNY mark relate back to the date that its successful trademark registration was filed with the U.S. Patent and Trademark Office); see also J. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the Principal Register is prima facie proof of continual use of the mark, dating back to the filing date of the application for registration).

Respondent’s  <delawarelottery.com> domain name is identical to Complainant’s DELAWARE LOTTERY mark.  The only difference is that the domain name does not capitalize the letter “d” in Delaware or the letter “l” in Lottery, and there is no space between the words “Delaware” and “Lottery.”  Such differences are insufficient to create a domain name that is distinct from Complainant’s DELAWARE LOTTERY mark.  Therefore, Complainant has established that the <delawarelottery.com> domain name is identical to the DELAWARE LOTTERY mark.  See Minn. Mining & Mfg. Co. v. Taylor, 21 F.Supp.2d 1003, 1005 (D.Minn. 1998) (finding <post-it.com> and "Post-It" the same); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established. 

Rights or Legitimate Interests

Respondent, km, is not “commonly known by” the disputed domain name.  Respondent is not licensed or authorized to use the <delawarelottery.com> domain name.  Furthermore, there is no evidence before the Panel to the contrary.  Thus, it is reasonable for the Panel to infer that Policy ¶ 4(c)(ii) does not apply to Respondent.  See Tercent Inc. v. Lee 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 Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

Respondent has no rights or legitimate interests in the <delawarelottery.com> domain name because Respondent’s current use is neither an example of a bona fide offering of goods or services nor a legitimate non-commercial or fair use of the domain name.  Respondent is using the <delawarelottery.com> domain name to tarnish the image of the Delaware Lottery by linking unsuspecting Internet users to a website that pushes a polarizing issue and features photographs of aborted fetuses.  The Complainant is not connected to the <abortionismurder.org> domain name in any way.  Respondent is also using the <delawarelottery.com> domain name to redirect traffic to a commercial web site for medical products that has no legitimate connection with the Delaware Lottery.  Neither of these types of cases establishes rights or legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and (iii).  See The Am. Nat’l.  Red Cross v. Domains a/k/a Best Domains a/k/a John Barry, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (Respondent used a disputed domain name to divert internet users to websites not associated with or authorized by Complainant, such as an online pharmacy and an anti-abortion website.  “Appropriating Complainant’s mark for these purposes cannot equate to a bona fide offering of goods and services, and does not evidence legitimate noncommercial or fair use of the domain name”); see also Rittenhouse Dev. Co. v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum Apr. 8, 2002) (finding that, by linking the confusingly similar domain name to an “Abortion is Murder” website Respondent has not demonstrated a right or legitimate interest in the disputed domain name).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent has registered and used the <delawarelottery.com> domain name in bad faith.  Respondent is using the domain name to divert Internet users to the <abortionismurder.org> domain name.  Respondent is not connected with the Delaware Lottery and could not legally operate or sell Delaware Lottery tickets or products under Delaware law.  Respondent has registered a domain name infringing on a well-known and statutorily protected mark for the purpose of diverting users to politically charged content completely unrelated to the domain name.  The Delaware Lottery has received complaints from Internet users who accessed the <delawarelottery.com> domain name  and ended up at the <abortionismurder.org> domain name.  Respondent’s registration of a domain name that is identicial to Complainant’s mark for these purposes, is evidence that it has registered and used the <delawarelottery.com> domain name in bad faith.  See Rittenhouse Dev. Co. v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum Apr. 8, 2002) (finding that “when a party registers and uses a domain name that incorporates a well-known mark and connects the domain name with a website that depicts offensive images,” the party has registered and used the disputed domain name in bad faith); see also McClatchy Management Services, Inc. v. Please DON'T Kill Your Baby a/k/a William and Mark Purdy II, Willaim S. Purdy, FA 153541 (Nat. Arb. Forum May 28, 2003) (finding “[b]y intentionally taking advantage of the goodwill surrounding Complainant’s mark to further its own political agenda, Respondent registered the disputed domain names in bad faith”).

Furthermore, Respondent intentionally attempted to attract, for commercial gain, Internet users to the <delawarelottery.com> domain name, by creating a likelihood of confusion with Complainant’s mark as to the sponsorship or affiliation of Respondent’s web site.  It is presumed that Respondent commercially benefited by redirecting Internet users to the <e-scripts-md.com> domain name.  Respondent’s use of the <delawarelottery.com> domain name for such misdirection harms the goodwill surrounding Complainant’s DELAWARE LOTTERY mark.  Thus, Respondent registered and used the <delawarelottery.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked <drmath.com>, which contains Complainant’s Dr. Math mark, to a website run by the Respondent, creating confusion for Internet users regarding the endorsement, sponsorship, of affiliation of the website); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where the Respondent attracted users to a website sponsored by the Respondent and created confusion with the Complainant’s mark as to the source, sponsorship, or affiliation of that website).

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

DECISION

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

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

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  July 3, 2003

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