The Complainant is Missouri Lottery Commission of Jefferson City, Missouri, United States of America, represented by Senniger Powers LLP, United States of America.
The Respondent is SED Domain Services / Common Law of Douglas, Isle of Man, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with R (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2014. On January 27, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 27, 2014, 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.
The Center verified that the 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 January 29, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 18, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 20, 2014.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on February 26, 2014. 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
1. The Disputed Domain Name was registered on March 27, 2012.
2. The Complainant was created by the State of Missouri, United States of America, in June 1985. It commenced to use the trademark MISSOURI LOTTERY in connection with lottery tickets and lottery services in January 1986. Since that date it has had cumulative sales of lottery tickets sold under the MISSOURI LOTTERY trademark to the value of more than 15 billion US dollars. Over the same period it has incurred advertising expenditure in support of that trademark in excess of 125 million US dollars. Its current annual sales exceed 1 billion US dollars and its current annual advertising expenditure exceeds 12 million US dollars.
3. The website at the Disputed Domain Name offers for sale tickets in a number of lotteries namely Euro Millions Lottery, Powerball Lottery, Mega Millions Lottery, New York Lottery, Irish Lottery and U.K. National Lottery. It does not offer tickets in Missouri Lottery and the Complainant asserts that the Respondent does not have any relationship or other connection with the Complainant and has not been authorized by the Complainant to use the Disputed Domain Name.
4. The Complainant is the owner of Missouri State Service Mark Registration No. 13805 for MISSOURI LOTTERY, US Service Mark Registration No. 4,025,201 dated September 13, 2011 for MO LOTTERY and Design and is the applicant in pending US trademark application No. 85158275 for MISSOURI LOTTERY claiming first use in commerce on January 20, 1986.
5. The Disputed Domain Name is, apart from the gTLD denominator, identical with the domain name which was the subject of a successful complaint by the Complainant against the Respondent in Missouri Lottery Commission v. Common Law, SED Domain Services,WIPO Case No. D2013-0476. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Disputed Domain Name is substantially identical to its MISSOURI LOTTERY trademark differing from it only by the addition of the descriptive word "online". It claims to have rights in that trademark by virtue of its Missouri State trademark registration, US registration for MO LOTTERY and Device, its pending US trademark application, and common law rights and reputation generated by extensive use and promotion of its trademark for over 27 years.
The Complainant contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name; it has not authorized the Respondent to use its MISSOURI LOTTERY trademark; the Respondent is not commonly known by reference to that trademark and the use which the Respondent has made of the Disputed Domain Name is a commercial use which is not bona fide.
The Complainant further submits that the Disputed Domain Name was registered in the full knowledge of the Complainant's rights with the intention to trade on Complainant's reputation and goodwill so as to divert potential customers of the Complainant to the Respondent's website at which it promotes the services of other lotteries operating in competition with the Complainant. The Complainant cites, inter alia,WIPO Case No. D2013-0476 between the same parties and alleges that the Respondent is the same person as the Respondent inWIPO Case No. DCC2011-0001, The Lotter Enterprises Limited v. SunSeven NV, F.M. Brendan John, No Organisation: Common Law Jurisdiction, Per BN where similar conduct was involved. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant claims rights in the trademark MISSOURI LOTTERY. It bases that claim on a Missouri State registration, a pending US Federal application and a US Federal registration for a composite mark which includes the words MO LOTTERY. Panels have been generally reluctant to accord as much weight to State registrations as to Federal Registrations. The Complainant's US application for MISSOURI LOTTERY has not yet been granted. Nevertheless, the Complainant has demonstrated longstanding and very substantial use and promotion of the MISSOURI LOTTERY trademark to the extent that the Panel is satisfied that it has established a reputation such as to confer common law rights in that trademark for purposes of the Policy.
The Disputed Domain Name differs from the Complainant's trademark only by the addition of the descriptive word "online". The trademark component of the Disputed Domain Name is the dominant particular by which the Disputed Domain Name would be recognized and which would generate the primary response when entered into a search engine. The Panel therefore concurs with the finding of the learned Panelist inWIPO Case No. D2013-0476 cited above and finds that the Disputed Domain Name is identical or confusingly similar to a service mark in which the Complainant has rights. B. Rights or Legitimate Interests
Whilst the onus is on the complainant to demonstrate all of the elements of paragraph 4(a) of the Policy it is well recognized that where the complainant is able to make a prima facie showing under paragraph 4(a)(ii) the burden shifts to the respondent to displace that prima facie showing. Here, the Complainant has shown that it has a longstanding reputation in the trademark MISSOURI LOTTERY, raising a presumption that the Respondent, an operator in the lottery industry, would have known of the Complainant's trademark at the time of registering the Disputed Domain Name in 2012. The Complainant has also made a prima facie showing that the Respondent's use of the Disputed Domain Name is a commercial use which is not a bona fide use in the offering of the Respondent's services. The Complainant asserts that it has never authorized the Respondent to use its trademark and there is no reason to believe that the Respondent was ever commonly known by the Disputed Domain Name. The Respondent has had an opportunity to rebut the claims and allegations of the Complainant. It has failed to do so.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
The Respondent's use of the Disputed Domain Name has been such as to attract traffic to the website at the Disputed Domain Name by causing confusion among Internet users familiar with the Complainant's trademark. The Respondent does not offer the Complainant's services at its website, only those of the Complainant's competitors. Even if the Respondent were to offer the Complainant's services at is website, that would not be sufficient to constitute a bona fide offering of services and would clearly fall far short of the criteria set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, and Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774. The Respondent's conduct falls within the circumstance set out in paragraph 4(b)(iv) of the Policy.
The Panel therefore finds that the Disputed Domain Name has been registered and is being used in bad faith. 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 be transferred to the Complainant.
Desmond J. Ryan AM
Sole Panelist
Date: March 7, 2014
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