WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The State of Florida Department of the Lottery v. Jason Page

Case No. D2013-1815

1. The Parties

The Complainant is The State of Florida Department of the Lottery of Tallahassee, Florida, United States of America (“U.S.”), represented by Gray Robinson. P. A. of Fort Lauderdale, Florida, U.S.

The Respondent is Jason Page of Albany, New York, U.S.

2. The Domain Name and Registrar

The disputed domain name <floridalotteryx.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 23, 2013. On October 23, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 23, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the corresponding 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 October 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for the Response was November 13, 2013. The Respondent did not submit any response. The Center notified the Parties of the Respondent’s default on November 14, 2013.

The Center appointed Marylee Jenkins as the sole panelist in this matter on November 19, 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

Based on a review of the uncontested evidence submitted with the Complaint, the Complainant is the owner of U.S. Trademark registrations for the mark FLORIDA LOTTERY and design, Registration No. 1542860, filed on December 31, 1987 and registered on June 6, 1989 and the word mark FLORIDA LOTTERY, Registration No. 4153202, filed on August 25, 2011 and registered on June 5, 2012. The Complainant is also the owner of U.S. Trademark registrations for the following marks: FANTASY 5, Registration No. 2683303, registered on February 4, 2003; MEGA M$NEY and design, Registration No. 2376476, registered on August 15, 2000; and, CA$H 3, Registration No. 2726755, registered on June 17, 2003.

The Domain Name was registered on December 24, 2012 and is set to expire on December 24, 2014. The Respondent, Jason Page, is listed as the registrant of the Domain Name in the corresponding WhoIs record. The web page accessible at the Domain Name uses the FLORIDA LOTTERY trademark prominently and provides information and appears to promote Florida Lottery games. The web page also makes use of the Complainant’s registered trademarks FANTASY 5, MEGA M$NEY, and CA$H 3.

5. Parties’ Contentions

A. Complainant

The Complainant bases its Complaint on its ownership of the FLORIDA LOTTERY mark. The Complainant claims it has used this mark since at least as early as 1987 in connection with lottery services.

The Complainant alleges that the Domain Name is identical or confusingly similar to the Complainant’s registered mark FLORIDA LOTTERY. The Complainant contends that the Domain Name is identical to the Complainant’s FLORIDA LOTTERY mark but for the inclusion of the suffix “x.com”, which the Complainant contends is functional.

The Complainant also alleges that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant alleges that one portion of the Respondent’s website reports the results of the Complainant’s lottery drawings for each of a number of different games, while the majority of the site is devoted to the provision of services that are not offered by the Complainant. The Complainant, citing UDRP decisions, alleges that the Respondent does not have a legitimate interest in the Domain Name because the Respondent has not disclosed on its website its true relationship with the Complainant as the owner of the trademark to which the Domain Name is identical or confusingly similar. The Complainant alleges that while the disclaimer on the Respondent’s website indicates that the Respondent is not associated with the Florida State Lottery, the remainder and vast majority of the disclaimer is related to the accuracy of the information on the Respondent’s website. The Complainant alleges that this disclaimer “fails to prominently disclose the Respondent’s relationship with the Complainant.”

The Complainant alleges that the Respondent registered and is using the Domain Name in bad faith. The Complainant alleges that the Respondent’s bad faith in registering and using the Domain Name is evidenced by the appearance on the Respondent’s website of banner ads and links to other sites in which the goods and services of others are promoted. The Complainant further alleges that the Respondent is deriving commercial gain from the Domain Name which is identical to the Complainant’s trademarks except for the “x.com” suffix.

The Complainant also alleges that the Respondent had a bad faith intent in adopting the “floridalottery” designation in the Domain Name to create an immediate association in the minds of consumers with the Complainant’s FLORIDA LOTTERY mark in order to drive traffic to the Respondent’s website.

B. Respondent

The Respondent did not file a Response with respect to this proceeding.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party (complainant) asserts to an ICANN-approved dispute resolution service provider that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the domain name holder has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Under the Rules, paragraph 14(b), the Panel shall draw such inferences from the Respondent’s default as it considers appropriate. Nevertheless, the Panel can only rule in the Complainant’s favor only after the Complainant has proven that the above-listed elements are present.

A. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, the Complainant is required to establish that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel finds that the Complainant has provided sufficient evidence to establish that it is the owner of and has rights in and to the mark FLORIDA LOTTERY and design and the word mark FLORIDA LOTTERY (“FLORIDA LOTTERY marks”). The Panel further finds that the registration dates for the FLORIDA LOTTERY marks pre-date the registration of the Domain Name.

A review of the second-level domain “floridalotteryx” of the Domain Name shows that it fully incorporates the Complainant’s FLORIDA LOTTERY marks and adds the letter “x” to the end of the mark. Such addition does not in any way distinguish the Domain Name from the Complainant’s FLORIDA LOTTERY marks. When viewed in connection with the Complainant’s longstanding rights in the FLORIDA LOTTERY marks, the Panel finds that this Domain Name is confusingly similar to the Complainant’s FLORIDA LOTTERY marks and that the addition of the letter “x” does not somehow lessen such confusion. The Panel therefore determines that paragraph 4(a)(i) has been satisfied based upon the Domain Name being confusingly similar to the Complainant’s FLORIDA LOTTERY marks.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panel to be proven based on its evaluation of all of the evidence presented, can demonstrate the holder’s rights to or legitimate interests in the Domain Name. These circumstances include:

(i) before any notice to the holder of the dispute, the holder’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or

(iii) the domain name holder is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

No evidence has been presented that the Complainant’s FLORIDA LOTTERY marks were ever assigned, granted, licensed, sold, or transferred to the Respondent or that the Respondent was ever in any way authorized to register or use the FLORIDA LOTTERY marks in any manner or form. Nor has any evidence been presented that might give rise to any right to or legitimate interest of the Respondent in the Domain Name. Based upon the uncontested evidence provided by the Complainant, the Complainant clearly had and has well established rights in and to the FLORIDA LOTTERY marks, including trademark registrations in the U.S., at the time of the Respondent’s registration of the Domain Name.

The Complainant also presented evidence of the corresponding web site for the Domain Name showing that the Respondent not only had knowledge of the Complainant’s lottery business but also its FLORIDA LOTTERY marks. No evidence has been presented that the Respondent was making any legitimate noncommercial or fair use of the Domain Name without intent for commercial gain. On the contrary, the Respondent directed the Domain Name to a website that made use of the Complainant’s FLORIDA LOTTERY marks as well the Complainant’s marks FANTASY 5, MEGA M$NEY, and CA$H 3 so as to provide information about the Complainant’s lottery games while deriving apparent commercial gain from the placement of banner advertisements and links to third party websites. The Respondent now redirects the Domain Name to a new web site accessible at another domain name which continues such use of the Complainant’s marks and information about the Complainant’s lottery business.

While the Panel notes that the Respondent displayed and continues to display a disclaimer on the corresponding web site accessible at the Domain Name, the disclaimer appears at the very bottom of the site in a small and light colored typeface. Such a disclaimer does not somehow change the Respondent’s activities into being bona fide or legitimate with regard to its use of this Domain Name. Accordingly, based upon the uncontested evidence, the Respondent's use cannot constitute a bona fide offering of services.

The Panel therefore finds that the Respondent registered the Domain Name with knowledge of the Complainant's FLORIDA LOTTERY marks and business and for the purpose of trying to capitalize on the confusion that this Domain Name would create with regard to the Complainant's FLORIDA LOTTERY marks and the Complainant's use thereof. The Panel therefore concludes that the Respondent has no rights or legitimate interests in the Domain Name and that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the holder includes, but is not limited to:

(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location of a product or service on the holder’s website or location.

The Panel finds that the Respondent had full knowledge of the Complainant’s FLORIDA LOTTERY marks at the time of the registration of the Domain Name. The Respondent’s use of the Domain Name to direct to a website republishing the results of the Complainant’s lottery games and its use of the Complainant’s FLORIDA LOTTERY marks in the Domain Name and on the site are evidence of the Respondent’s actual knowledge of the Complainant’s FLORIDA LOTTERY marks. In view of this and the above finding that the Respondent has no rights or legitimate interests in the Domain Name, the Panel finds that the Respondent registered the Domain Name in bad faith.

The uncontested evidence further shows that the Respondent has and continues to display banner advertisements and links to third party websites on the web site accessible at the Domain Name. The presence of such advertisements and links confirms that the Respondent has intentionally attempted to attract Internet users to its corresponding site for commercial gain. Based upon the confusing similarity of the Domain Name to the Complainant’s FLORIDA LOTTERY marks, the Panel therefore finds that the Respondent has and continues to intentionally attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s FLORIDA LOTTERY marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or services.

The Panel concludes that the Respondent registered and is using the Domain Name in bad faith and that paragraph 4(a)(iii) of the Policy has been satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <floridalotteryx.com> be transferred to the Complainant.

Marylee Jenkins
Sole Panelist
Date: December 1, 2013