WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The State of Florida, Department of the Lottery v. Valhalla Properties SA / Kattia Rodriguez Chacon
Case No. D2012-0316
1. The Parties
The Complainant is The State of Florida, Department of the Lottery of Tallahassee, Florida, United States of America, represented by GrayRobinson, P.A., United States of America.
The Respondent is Valhalla Properties SA / Kattia Rodriguez Chacon of San Jose, Costa Rica, internally represented.
2. The Domain Name and Registrar
The disputed domain name <lotteryflorida.com> is registered with Ascio Technologies Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2012. On February 16, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 1, 2012, the Registrar transmitted by email to the Center its verification response stating that it was not in receipt of the Complaint and could therefore not confirm that the Respondent is the current registrant of the disputed domain name. However, the Registrar stated that the WhoIs database is correct and up to date. The WhoIs database lists the registrant of the disputed domain name as “Contact Privacy Inc.” of Toronto, Canada. On October 17, 2011, the Complainant sent a letter to Contact Privacy Inc. objecting to the disputed domain name. On October 26, 2011, the Complainant received a response via email authored by a representative of “Valhalla Properties SA”, named as “Kattia Rodriguez”. This response asserted ownership of the disputed domain name. These circumstances lead the Panel to conclude that the registrant of the disputed domain according to the publicly-available WhoIs data is most likely acting as a privacy shield or proxy service for Valhalla Properties SA / Kattia Rodriguez Chacon, and therefore that Valhalla Properties SA / Kattia Rodriguez Chacon is the appropriate Respondent in this proceeding.
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 March 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 22, 2012. The Response was filed with the Center on March 9, 2012.
The Center appointed Andrew F. Christie as the sole panelist in this matter on March 20, 2012. 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 has been engaged in the business of providing lottery services since at least 1987. Through over 13,000 lottery retailers, the Complainant provides its customers with a wide variety of state-wide games and the multi-state game known as “Powerball”. Proceeds from ticket sales have exceeded USD 60,000,000,000 since the Complainant began its operations. The Complainant estimates it has spent over USD 2,000,000,000 on advertising its services provided under its trademarks.
The Complainant is the owner of the United States of America trademark registration for FLORIDA LOTTERY and design covering “lottery services”, registered on June 6, 1989. The Complainant operates a website at <floridalottery.com> on which its services are illustrated and described.
The disputed domain name was registered on March 28, 2000. The Respondent asserts that it acquired the disputed domain name in August 2011. The disputed domain name currently resolves to a website at which the results of lottery draws made in Florida are reported, and on which there are links to another site (“www.thelotter.com”) at which tickets to the Complainant’s various lotteries may be available for purchase.
On October 17, 2011, the Complainant sent a cease and desist letter to the Respondent in which it stated that the website to which the disputed domain name resolves displays the names and marks of several lottery games run by the Complainant, all without the consent or authorization of the Complainant. On October 26, 2011, the Complainant received a response from the Respondent (dated October 21, 2011), stating that it has been offering lottery results around the world using a variety of websites since 1986, but that it never claims to be, or have any form of affiliation with, the operator of the lottery games. In addition, the Respondent offered to add a disclaimer to each and every page of the website such as “Lotteryflorida.com is not affiliated with, approved or endorsed by the State of Florida Department of Lottery”.
On November 1, 2011, the Complainant responded to the Respondent’s letter reiterating its objections to the unauthorized use of its trademarks on the website to which the disputed domain name resolves and the selling of lottery tickets through the website at <thelotter.com>. Furthermore, the Complainant explained that it has been using the designation of “Florida Lottery” in block letters without any design element since 1988. The Complainant did not respond to the Respondent’s offer of putting a disclaimer on the pages of the website to which the disputed domain name resolves, and, according to the present record, no such disclaimer currently appears on the pages of that website.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to both its registered trademark and common law trademark FLORIDA LOTTERY, because the disputed domain name merely reverses the order of the words “lottery” and “florida”. Except for the functional “.com” suffix of the disputed domain name, it and the Complainant’s trademarks have identical spellings and sound, and convey an identical overall commercial impression. The long-term use, high volume of sales and extensive advertising of lottery services by the Complainant has resulted in widespread recognition of its marks well beyond the State of Florida.
The Complainant contends that even though the Respondent admits it does not provide lottery services in Florida or elsewhere, and has no affiliation with the Complainant, it has adopted a domain name containing the identical words found in the registered and common law trademarks of the Complainant. The Respondent should have chosen a domain name such as <lotteryresults.com> or other generic identifier of lottery reporting services rather than adopting the designation “lotteryflorida” in which it has no rights or legitimate interests.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith because: (i) the sole purpose in adopting it was to create an immediate association in the minds of customers with the Florida Lottery services offered by the Complainant; (ii) virtually all the web pages on the site to which the disputed domain name resolve contain a link that connects to a site at “www.thelotter.com” at which tickets for the Complainant’s various lottery games may be purchased; (iii) the Respondent must be obtaining financial gain from providing links to <thelotter.com> as it identifies that site as an “advertiser” on the website to which the disputed domain name resolves, and is therefore deriving commercial gain from the disputed domain name.
The Respondent contends that the disputed domain name is not identical or confusingly similar to a trademark in which the Complainant has rights because: (i) the disputed domain name describes a game of chance in the State of Florida and it is therefore questionable as to whether the Complainant has a “protectable” mark in the term “Lottery Florida”; (ii) the protection of the mark depends heavily on the design elements of the flamingo image which is far more striking than the small font words “Florida Lottery” that appear below it, and that this image is not reproduced on the website to which the disputed domain name resolves; and (iii) in the English language “LotteryFlorida” is different from “Florida Lottery”.
The Respondent contends that the Complainant does not have an exclusive right to the disputed domain name because the Department of the Lottery does not have exclusive use to the term “Lottery Florida”. Furthermore, if the Complainant thought it had such exclusive rights it could have registered the disputed domain name previously. In addition, the Respondent contends that the Complainant would be aware that one does not always have to be a trademark holder or have the holder’s permission in order to own a domain name related to a mark.
The Respondent contends that the disputed domain name was not registered and is not being used in bad faith because: (i) it has been offering lottery results to players around the world using a variety of websites since 1986, and does not purport to be the operator or have any form of affiliation with the operator, in this instance the State of Florida Department of the Lottery; (ii) it has never attempted to sell the disputed domain name for a profit, or offered it for sale at any price; (iii) it does not own or run a lottery, it purely runs websites providing information to Internet users around the world, providing a very valuable service to the general public; (iv) it has accepted advertising it believes is most appropriate for its customers, but it does not have any interest or shareholding in “TheLotter”; (v) it offered to add a disclaimer to the website to which the disputed domain name resolves, distancing itself from the Department of the Lottery but the Complainant did not respond to this offer; and (vi) the Complainant has had many years to either register the disputed domain name for itself or secure it from previous owners.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant’s long and substantial use of the mark FLORIDA LOTTERY is sufficient to satisfy this Panel that the Complainant has common law trademark rights to FLORIDA LOTTERY. The disputed domain name incorporates wholly the Complainant’s common law trademark FLORIDA LOTTERY, albeit in reverse order, with the addition of the gTLD identifier “.com”. Reversing the order of the two words “florida” and “lottery” does not, in the view of this Panel, sufficiently alter the perceived meaning of the combination that results by placing the two words together. That is to say, “florida lottery” and “lottery florida” both suggest lottery goods and services in the State of Florida. Accordingly, this Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent’s claim to a right or legitimate interest in the disputed domain name is based on the fact that it republishes the results of the Complainant’s lotteries. The Respondent’s relationship to the Complainant is similar to that of an unauthorised reseller. Accordingly, this Panel considers it appropriate, in determining whether or not the Respondent has a right or legitimate interest in the disputed domain name, to use the principle applied to resellers in past cases under the Policy.
It is well established under the Policy that a respondent who is a reseller of goods or services to which the disputed domain name relates can be making a bona fide offering of those goods or services for the purposes of paragraph 4(c)(i), and thus can have a legitimate right or interest in the disputed domain name for the purposes of paragraph 4(a)(ii), if certain requirements are satisfied. These requirements include: (1) the respondent must actually be offering goods or services related to the trademark in respect of which the disputed domain name is confusingly similar; (2) the respondent must offer only those goods or services in connection with the disputed domain name; (3) the respondent must have disclosed its true relationship with the owner of the trademark to which the disputed domain name is identical or confusingly similar; and (4) the respondent must not have attempted to “corner the market” in domain names that reflect that trademark – see, e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (hereinafter “Oki Data”). This principle has been extended to apply to resellers who do not have a contractual relationship with the trademark owner (i.e., unauthorized resellers) – see, e.g., DaimlerChrysler A.G. v. Donald Drummonds, WIPO Case No. D2001-0160; Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481.
The first and second of these requirements appear to be satisfied in this case. The website to which the disputed domain name resolves does provide the results of the Complainant’s lotteries. Furthermore, there is nothing in the record to indicate that the Respondent’s website provides the results of lotteries by entities other than the Complainant – that is to say, there is no evidence that the Respondent is using the disputed domain name to engage in a “bait and switch” activity.
The fourth of these requirements also appears to be satisfied in this case. There is nothing in the record to indicate that the Respondent has sought to “corner the market” in domain names reflecting the Complainant’s trademark. In support of this conclusion it is noted that the Complainant is the registrant of the domain name that most closely reflects its trademark, <floridalottery.com>.
The situation is different with respect to the third of these requirements. According to the present record, the website to which the disputed domain name resolves does not “accurately and prominently” (to use the words of paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)) disclose the Respondent’s relationship with the Complainant. Indeed, far from making clear that the Respondent is not associated with the Complainant, the website to which the disputed domain name resolves strongly alludes to being a website of the Complainant. As stated in Oki Data: “The site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site.” The Respondent’s website fails this test. Accordingly, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The present record in this case shows that the Respondent is using the disputed domain name to resolve to a website that contains paid advertisements linking to another website at which the Complainant’s lottery products are offered for sale. In this Panel’s view, this use of the disputed domain name constitutes an attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s trademark. Pursuant to paragraph 4(b)(iv) of the Policy, this is evidence of the registration and use of the disputed domain name in bad faith. Accordingly, this Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
For all 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, <lotteryflorida.com>, be transferred to the Complainant.
Andrew F. Christie
Dated: April 3, 2012