Mississippi Lottery Corp. v. Jonathan Carr
Claim Number: FA1905001842601
Complainant is Mississippi Lottery Corporation (“Complainant”), represented by Robby Anderson of Balch & Bingham LLP, Alabama, USA. Respondent is Jonathan Carr (“Respondent”), Mississippi, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mississippilottery.us> and <mslottery.us> registered with GoDaddy.com, LLC.
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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on May 10, 2019; the Forum received payment on May 10, 2019.
On May 13, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <mississippilottery.us> and <mslottery.us> domain names (the Domain Names) are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On May 17, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of July 1, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@mississippilottery.us, postmaster@mslottery.us. Also on May 17, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on June 28, 2019.
Complainant filed an Additional Submission on July 3, 2019. It was found to be timely and in conformity with the Forum Supplemental Rule 7.
Respondent filed an Additional Submission on July 8, 2019. It was found to be timely and in conformity with the Forum Supplemental Rule 7.
On July 8, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister as Panelist.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name-holder.” The WHOIS reports submitted as Complaint Annexes A and B list “Jonathan Carr” as the registrant and gives the same registrant address and contact information for both of them. Respondent admits that he is the registrant of the Domain Names. On this evidence, the Panel finds that both Domain Names involved in this proceeding are registered to the same person or entity and will proceed as to all of them.
A. Complainant
Complainant is the newly-formed corporation organized by the State of Mississippi to operate the Mississippi Lottery (the Lottery) pursuant to state legislation approved and signed into law on August 31, 2018. Complainant has common law rights in the MISSISSIPPI LOTTERY mark based upon its corporate name and also based upon the thirty-year legislative history of the enabling act, which has consistently referred to the Lottery as the “Mississippi Lottery” since discussions about a state lottery began in Mississippi in 1990. Complainant has trademark rights in the mark also through its registration of that mark with the Mississippi Secretary of State (MS Reg. No. 16590 registered on March 19, 2019). Respondent’s Domain Names are identical or confusingly similar to Complainant’s mark because they incorporate the mark in its entirety, each merely adding only the country-code top-level domain (ccTLD) “.us.”
Respondent lacks rights and legitimate interests in the Domain Names because Respondent is not commonly known by the Domain Names, and Respondent is not using the Domain Names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The sites resolving from them are blank pages with no substantive content.
Respondent registered and uses the Domain Names in bad faith because he is holding them passively without offering any goods or services. Also, bad faith is demonstrated by Respondent’s registration of domain names that contain a well-known trademark. Respondent’s registration of the Domain Names when the discussions of opening a state lottery were taking place in the legislature shows opportunistic bad faith. Respondent registered the Domain Names with the intent to sell them to Complainant. He says he has registered over 100 domain names containing the words “Mississippi Lottery.”
B. Respondent
Complainant has failed to prove any common law rights in its alleged MISSISSIPPI LOTTERY mark. It lacks standing to bring this proceeding.
Respondent is opposed to gambling and has made demonstrable preparations to use the sites resolving from the Domain Names to provide political commentary, social critique and personal counselling to individuals considering whether to play the Lottery. He is thus preparing to make a legitimate noncommercial or fair use of the Domain Names. His sites are not and will not be commercial in nature. He has not “gone live” on any of the resolving web sites because there is much uncertainty about whether the Lottery will ever become operational and he does not want to invest the time and expense in activating his web sites until the Lottery actually does come about.
Respondent did not register and has not used the Domain Names in bad faith. He registered the Domain Names well before the state legislature approved Complainant’s enabling legislation and before Complainant was even organized. He is not guilty of a pattern of preclusive registrations, as Complainant had no trademark rights at the times the registrations were made. Further, the Policy does not insulate trademark holders from contrary or critical views when such views are expressed without an intention for commercial gain. Finally, there is no evidence that Respondent has sought to sell or rent the Domain Names for profit.
C. Complainant Additional Submission
Respondent admits having knowledge of the possible passing of the Mississippi Lottery legislation since 1990.
His statement of having not sought to sell or rent the Domain Names is false. In April 2019, he told one of Complainant’s attorneys that about one and a half years earlier he foresaw the need for a lottery web site and as an investment registered over 100 variations of Mississippi Lottery-related domain names. He actively pursued efforts to meet with Complainant’s counsel to discuss sales. Selling the Domain Names was Respondent’s primary goal—he would not need over 100 domain names to pursue his stated intent of offering political and social commentary.
UDRP Panels have uniformly ordered the transfer of infringing domain names to state lottery authorities.
D. Respondent Additional Submission
Respondent is a novice in the matter of online presence. He registered a large number of domain names on the advice of GoDaddy in order to enhance and protect his online presence. There is nothing inherently unlawful or abusive with registering a large number of domains.
The conversation with Mr. Bill Smith did not occur as related in his affidavit. Mr. Smith, not Respondent, initiated the discussion about selling the domain names. He pressured respondent to sell his Domain Names for a nominal amount, and threatened Respondent with action to take them if Respondent would not sell. At no time did Respondent ever seek to market or sell the Domain Names.
Respondent’s registrations of the Domain Names could not have been in bad faith because they occurred before Complainant acquired rights in the MISSISSIPPI LOTTERY mark and Respondent could not possibly have known about them when the registrations were made.
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."
Paragraph 4(a) of the Policy provides that in order to obtain an order cancelling or transferring a domain name, Complainant must prove each of the following three elements:
(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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision, except where differences in the two policies require a different analysis.
The Panel finds as follows with respect to the matters at issue in this proceeding:
The MISSISSIPPI LOTTERY mark was registered to Complainant by the Mississippi Secretary of State (MS Reg. No. 16590) on March 19, 2019. Complaint Annex H. Registration of a mark with a state agency has been held to be sufficient to establish a complainant’s rights in that mark for the purposes of Policy ¶ 4(a)(i). Ridgegate Investments, Inc. v. Cody McCarthy / Keller Williams Real Estate LLC, FA 1727947 (Forum May 26, 2017) (“The Panel also finds that the registration of a mark with a State authority is sufficient to establish rights in the mark.”). Respondent argues that the state registration is automatic and unexamined and for this reason should not be accorded the same deference as a United State Patent and Trademark Office (USPTO) registration. That may be, but the threshold for finding rights in a mark for the purposes of Policy ¶ 4(a)(i) is very low. It is essentially a standing test (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0) at ¶ 1.7: “It is well accepted that the first element functions primarily as a standing requirement.”), and it is for this reason that state registrations have been found to be adequate.
Further, registration of a trademark is not required to satisfy Policy ¶ 4(a)(i). Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (“A complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out”.), Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). While Complainant was organized late in 2018 and is thus not in a position to demonstrate the kinds of factors that are typically required to show common law rights, e.g., exclusive use of the mark in commerce for a period of time, evidence of advertising and sales, recognition of the mark by customers, unsolicited media attention, or other evidence showing that the relevant consuming public has come to associate the mark with goods or services provided by a single vendor, it is the state-chartered corporation organized specifically to operate the Mississippi Lottery (Complaint Annex H). Complainant’s corporate name includes that term, and Complainant is conducting its chartered operations under that name. The MISSISSIPPI LOTTERY mark is uniquely identified and associated with Complainant. No other person or entity has the right to call itself by that name. As the owner of the name MISSISSIPPI LOTERY, Complainant has the legal standing to bring and maintain this proceeding.
The <mississippilottery.us> Domain Name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety, merely adding the “.us” ccTLD. The addition of a ccTLD is not sufficient to distinguish these Domain Names from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015) (holding, “The inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶ 4(a)(i).”).
The <mslottery.us> Domain Name is also confusingly similar to Complainant’s mark. It incorporates the LOTTERY element of Complainant’s mark in its entirety, merely changing the MISSISSIPPI element to its recognized abbreviation “ms,” and adding a ccTLD. These changes are not sufficient to distinguish this Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015) (holding, “The inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶ 4(a)(i).”). Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated).
Finally, the WIPO Overview 3.0 at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the abbreviation of “Mississippi” in one of the Domain Names and the addition of ccTLDs in all of them, Complainant’s mark is clearly recognizable within the Domain Names, and this establishes their confusing similarity to Complainant’s mark.
For the reasons set forth above, the Panel finds that the Domain Names are identical or confusingly similar to the MISSISSIPPI LOTTERY mark, in which Complainant has substantial and demonstrated rights.
Rights or Legitimate Interests
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to the respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following four nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) Respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name;
(ii) Before any notice to respondent of the dispute, respondent’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;
(iii) Respondent (as an individual, business or other organization) have been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iv) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names because (i) Respondent is not the owner or beneficiary of a trade or service mark that is identical to the Domain Names, (ii) Respondent is not commonly known by the Domain Names, and (iii) Respondent is not using the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or other fair use in that they resolve to an inactive web sites. These allegations are addressed as follows:
It is difficult without conducting a world-wide trademark search to determine whether a third party is or is not the owner or beneficiary of a trademark that is identical to a domain name. Complainant alleges that to the best of its knowledge Respondent is not an owner or beneficiary of a trademark or service mark that is identical to the Domain Names, and Respondent has offered no evidence that he is. On this basis the Panel finds that Respondent is not the owner or beneficiary of a trademark or service mark that is identical to the Domain Names.
The WHOIS reports submitted as Complaint Annexes A and B list the registrant of the Domain Names as “Jonathan Carr.” This name bears no resemblance to any of the Domain Names. In the absence of evidence to the contrary, this is reliable evidence that Respondent is not known by either of the Domain Names. Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Both Domain Names resolve to parked pages which have no substantive content. Passive holding has often been held to evidence a lack of rights or legitimate interests in a domain name. George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶¶ 4(c)(i) or (iii) where it failed to make any active use of the domain name).
For the reasons discussed above, the Panel finds that Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the Domain Names. It now looks to the evidence offered by Respondent in support of its claim of rights or legitimate interests.
Respondent asserts that he has rights and legitimate interests in the Domain Names. He is an assistant pastor at a Baptist church in Gulfport MS (Response Annex A). He and his family are vocal opponents of gambling and the Lottery. They have fought against the Lottery’s implementation and run a program to inform and assist people with addictive behaviors, including gambling and drugs. Respondent states that he plans to use the Domain Names for the legitimate noncommercial and fair purpose of providing political commentary, social critique and personal counselling. He has deferred full development of the web sites resolving from the Domain Names to avoid unnecessarily incurring additional time, labor and expense until the Lottery becomes fully operational, especially since a serious legal question has arisen which may prevent that from ever happening. He states that neither Domain Name will be used for commercial purposes, and that he has never taken any action to gain monetary value from them or to sell them. In support he submitted Response Annexes B and C, which describe the outreach organization mentioned above and provide an example of the content the organization apparently uses on the Internet.
Respondent cites numerous federal appellate and UDRP panel decisions for the proposition that the use of a trademark in a domain name for bona fide noncommercial criticism is a protected use. He argues that his intended use of the Domain Names qualifies under these authorities and is protected as a legitimate noncommercial or fair use of them, pursuant to Policy ¶ 4(c)(iii).
Respondent is correct on the law, but the problem with his argument is that he is not using the Domain Names for his stated purposes. While Policy ¶ 4(c)(i) permits a respondent to demonstrate rights or legitimate interests by proving actual use “or demonstrable preparations to use” a domain name in connection with a bona fide offering of goods or services, Policy ¶ 4(c)(iii) requires the respondent actually to be making a legitimate noncommercial or fair use of it. Clearly, no active use is being made of either Domain Name. Neither is being used for noncommercial political commentary or social critique of the Lottery. As discussed above, using a domain name for an inactive web site does not qualify as a legitimate noncommercial or fair use.
Respondent states that he did not want unnecessarily to invest effort and expense to develop web sites that might be needed if the Lottery did not become operational.[i] That is understandable but he could easily have posted content that was at least minimally consistent with his stated purposes of advocating against the Lottery. Indeed, even before the adoption and approval of Complainant’s enabling legislation, Respondent could have posted some content, however minimal, urging the defeat of that legislation. He did not do so. Respondent is not using either of the Domain Names for political or social critique. He is not making a legitimate noncommercial or fair use of them for the purposes of Policy ¶4(c)(iii).
On the evidence presented, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names.
Before taking up specific indicia of bad faith, the Panel addresses Respondent’s argument that since he registered the Domain Names before the Lottery’s enabling legislation was passed, and well before Complainant’s corporate existence even came into being, he cannot be found to have registered them in bad faith. This is a powerful argument and Respondent is generally correct in that UDRP panels have almost universally held that a complainant cannot prove bad faith registration of a domain name when that name was registered before the complainant acquired rights in its mark. Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Forum May 16, 2007) (a respondent cannot be found to have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark). The rationale for the general rule is, of course, that it would not be possible for a respondent to target or seek to trade on the notoriety and goodwill of a complainant’s mark if that mark was not in existence at the time of the registration. Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”).
The WIPO Overview 3.0 states at ¶ 1.1.2 that ”Where a domain name has been registered before a complainant has acquired trademark rights, only in exceptional cases would a complainant be able to prove a respondent’s bad faith.”
WIPO Overview 3.0 ¶ 3.8.1 reads as follows:
Subject to scenarios described in 3.8.2, where a respondent registers a domain name before the complainant's trademark rights accrue, panels will not normally find bad faith on the part of the respondent.
WIPO Overview ¶ 3.8.2, however, addresses cases in which the general rule does not apply. It reads as follows:
As an exception to the general proposition described above in 3.8.1, in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find the that respondent has acted in bad faith.
Such scenarios include registration of a domain name: . . . . (iii) further to significant media attention (e.g., in connection with a product launch or prominent event, . . . .
The exceptions to the general rule are relevant to the facts in this case. The parties agree that debate about a Mississippi state lottery began in 1990 or so. According to the undisputed allegations in the Complaint, the issue was vigorously debated publicly, in the media and in the legislature over the following years, with attempts to pass a lottery being introduced in the legislature each year and being defeated until recently. A bill establishing the Mississippi Lottery was passed by the state legislature and approved by the governor on or about August 31, 2018. Complainant was organized to run the Lottery, and five persons were appointed to its board of directors on or about October 19, 2018.
The Domain Names were registered on August 7, 2018 (WHOIS report submitted as Complaint Annexes A and B. They were thus all registered just before the enabling legislation for the Mississippi Lottery was passed and approved and before Complainant was organized, but well after the public debate about the Mississippi Lottery began.
Complainant did not submit copies of news reports published during the period between 1990 and 2018 or any other evidence showing how the subject of the Mississippi Lottery was addressed in the media, public debate or in the state legislature, but it appears from the pleadings filed by both parties that “Mississippi Lottery” was the name generally given to and widely used to denote the subject of the debate.
Respondent freely admits that, being an ardent opponent of the Lottery he was keenly interested in the debate and, as he told Bill Smith on April 3, 2019, he knew that if the Lottery was approved it would need domain names incorporating the name “Mississippi Lottery” in some fashion (Affidavit of Bill Smith, Complainant Additional Submission Annex B). It is generally accepted that state-chartered lotteries are named as the “[name of state] Lottery.” Tennessee Education Lottery Corporation v. Mark Dalton, WIPO Case No. D2002-0726 (November 3, 2003) (“The public undoubtedly associated the mark TENNESSEE LOTTERY with the state government of Tennessee and the services to be offered only by the state of Tennessee, because state lotteries are typically known by [the name of the state] Lottery.”). From this it is evident that Respondent knew when he registered the Domain Names that “Mississippi Lottery” would most probably be used to name the Mississippi Lottery and any state-sponsored entity organized to operate it. This fits him clearly within the ¶ 3.8.2 exception, and the Panel has no trouble in finding that Respondent is not able to avoid a finding of bad faith simply because he registered the Domain Names before Complainant acquired actual rights in the MISISSIPPI LOTTERY mark.
The Panel turns now to specific indicia of bad faith. Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name;
(ii) respondent 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;
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of respondent’s web site or location or of a product or service on respondent’s web site or location.
Complainant asserts that Respondent registered and is using the Domain Names primarily for the purpose of selling them to Complainant for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to them, as contemplated by Policy ¶ 4(b)(i). Respondent emphatically denies this. The relevant evidence is as follows:
According to the Affidavit of Lucien Smith, submitted as Complainant Additional Submission Annex A, the Respondent reached out by text message to Lucien Smith, a member of Complainant’s counsel’s firm, on his own initiative on March 4 and again on March 28, 2019, requesting that Mr. Smith call him. Copies of these texts were attached to Mr. Smith’s affidavit. Neither message mentions a purpose for the proposed call. According to the Affidavit of Bill Smith, another member of Complainant’s attorney’s firm (Complainant Additional Submission Annex B), at Lucien Smith’s request Bill Smith telephoned Respondent on April 3, 2019. Again, the reasons for Lucien Smith’s request and Bill Smith’s call are not stated. At some point during this call, Respondent told Mr. Smith that about one and a half years earlier he foresaw the need of a lottery web site for the state and as an investment he registered over 100 variations of Mississippi Lottery-related domain names. He told Mr. Smith that he believed the domains he possessed had great value and repeatedly asked Mr. Smith to have a meeting in Jackson to discuss selling the domain names to Complainant. Mr. Smith said there would be no sense in meeting without knowing what kind of price Respondent was asking for the domain names. Respondent did not name a price. Mr. Smith said Complainant would be willing to pay a reasonable amount, such as Respondent’s costs to date. At that point Respondent stated that he wanted to confer with his attorney and the conversation ended. On April 9, 2019, Mr. Smith received a call from an attorney who said he represented Respondent, and who told him that if Complainant wanted the domain names it would have to pay for them. No specific price was mentioned, nor does Mr. Smith’s affidavit say whether the possible sale was for all of the domain names owned by Respondent or just the two at issue in this proceeding.
Respondent recalls the April 3 telephone call differently. According to his Affidavit, submitted as Response Additional Submission Annex A, Mr. Smith initiated the discussion about a sale of domain names. Again, neither affidavit says whether the possible sale was for all of the domain names owned by Respondent or just the two at issue in this proceeding. Mr. Smith made Respondent very uncomfortable by pressuring him to sell the domain names. Respondent did not initiate the discussion about selling the domains, he only responded when Mr. Smith threatened him. At that point he knew he needed legal advice. Mr. Smith told Respondent they would “take” the domain names if he did not accept their minimal offer, but Respondent refused. At no time did Respondent ever seek to market or sell the domain names he owns.
The Panel not having the opportunity to observe the two witnesses and assess their credibility as it would in an in-person hearing, it is very difficult to evaluate their conflicting versions of this telephone call. On balance, however, the Panel considers Mr. Smith’s evidence to be more persuasive than Respondent’s. Mr. Smith’s affidavit describes the words used and specific subjects discussed during this conversation, while Respondent’s affidavit describes it in general terms, referring to feelings of being pressured and threatened, etc. He does not deny saying that he had registered about 100 domain names incorporating the term “Mississippi Lottery” and speaking about their monetary value. He admits that he did, on the advice of his advisors, register a number of domain names incorporating that term to “enhance and protect his online position.” Respondent admits that he initiated the contact with Complainant’s counsel by texting Lucien Smith in March, but he does not explain his reasons for doing so. It is also noteworthy that the attorney who called Bill Smith on behalf of Respondent on April 9, 2019 made no mention of any unwillingness on Respondent’s part to sell the domain names. On the contrary, his message was that if Complainant wanted the names it would have to pay for them. While no specific price was discussed, the clear implication of the attorney’s comment was that the Complainant would have to pay a substantial amount, in excess of Respondent’s documented out-of-pocket costs directly related to the domain names. Finally, nowhere in any of the documents he filed in this matter does Respondent actually say that he does not want to sell the Domain Names or that he would not sell them.
Given Respondent’s opposition to the Lottery, it is clear that his intent when he registered the Domain Names was hostile and adverse to the interests of any Mississippi Lottery that might come into existence at some future time. It is logical to conclude that given that hostility he intended either to use the Domain Names to leverage profitable purchase prices from the Lottery or to hang on to them to prevent the Lottery from reflecting its mark in a corresponding domain name, as contemplated by Policy ¶ 4(b)(ii).
Respondent’s affidavit states very sincerely that he intended to use the Domain Names for noncommercial criticism of the Lottery, but the Panel must look to his actions as well. In the first place, as of May 10, 2019 when the Complaint was filed, some nine months after the Domain Names were registered, there was still no content of any kind on the web sites resolving from them—they are still parked. He says that he did not want to invest time and effort to develop his web sites because they would not be necessary if the Lottery did not actually become operational, but as discussed above in the rights and legitimate interests analysis, it would have taken very little effort or expense to post some minimal content that was consistent with his stated message.
Further, with its Additional Submission Complainant submitted screenshots of two web sites resolving from the domain names <mslottery.com> and <mississippilottery.com> (Complaint Additional Submission Annex C). Complainant states that these domain names were registered by Respondent as well. Respondent does not deny that, and the Affidavit he submitted in this proceeding addresses Complainant’s allegations with respect to these other two domain names. They are not involved in this proceeding but Respondent’s use of them is relevant to a determination of his intent with respect to the Domain Names involved here. The web sites resolving from the two other domain names have substantive content but it is hardly noncommercial in nature. In numerous places they display a silhouette of the State of Mississippi with the name MS LOTTERY printed across it. One page invites the visitor to “JOIN THE MS LOTTERY E-CLUB” by furnishing the visitor’s name, email address and county of residence, and to “CLICK TO THE MS LOTTERY FULL SITE.” Other pages display a picture of a happy, exuberant man surrounded by dollar bills floating in the air and the words “JOIN THE WINNER CIRCLE” written across his chest. Off to one side is the MS LOTTERY graphic with the words ”COMING SOON” printed above it. Other pages show photos or drawings of scratch tickets. Footers at the bottom of some of the pages contain copyright notices reading “©2018 Mississippi Lottery Corporation” and “©2019 Mississippi Lottery.” These sites convey the clear impression that they are sponsored or at a minimum endorsed by Complainant. The content is utterly inconsistent with Respondent’s stated purposes.
Respondent attempts to distance himself from this content by saying that he was inexperienced in the matter of online presence, that he disagreed with the initial content prepared by unnamed persons who were advising him at the time, and that they did not follow his directions (Affidavit of Respondent submitted as Respondent Additional Submission Annex A). Still, it would have been just as easy and no more expensive for Respondent to post his claimed message on those sites than it was to post what he did. If anything, that content seems designed to persuade Complainant to pay a substantial amount of money for the Domain Names, providing as it does examples of the kind of publicity and public outreach that could be achieved by Complainant if it owned those Domain Names. While Respondent may have been inexperienced about online presence, it takes no particular expertise to call one’s advisors and direct them to get unwanted content off of his web sites forthwith. He did not do this. As the registrant of those two Domain Names, Respondent is responsible for that content, and it is chargeable to him. Park ‘N Fly Service Corporation v Kevin Lanzillo, FA 1554365 (Forum May 13, 2014) (holding that ultimately “the Registrant [is] responsible for the content of the material appearing on the webpage associated with the domain name in [a] dispute”).
Not only does the content of the <mslottery.com> and <mississippilottery.com> sites suggest sponsorship or endorsement by the Lottery, the Domain Names themselves do. They are virtually identical to Complainant’s MISSISSIPPI LOTTERY mark. It is difficult to imagine any person or entity other than the Lottery that could be associated with or known by any of them. None of them conveys the least suggestion of criticism or concerns about the Lottery—they suggest instead that they are the Lottery. It is obvious that Respondent selected these Domain Names for that very reason: He wanted to attract to his web sites Internet users who believed they were contacting the Lottery.
Respondent’s actions clearly contradict his statements. This is a difficult case, but the Panel concludes that given all of the circumstances surrounding this issue, the evidence compels a finding that Respondent did in fact register the Domain Names at a minimum to preempt any Mississippi Lottery from registering them, whether for the purposes of sale or simply to prevent the Lottery from having them. Either of these motives is evidence of bad faith registration and use as contemplated by Policy ¶¶4(b)(i) and (ii).
Further to the fact that the web site resolving from the Domain Names are parked pages and inactive, Policy ¶ 4(b) recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and failure to actively use a confusingly similar domain name is evidence of bad faith for the purposes of Policy ¶ 4(a)(iii). CommScope, Inc. of North Carolina v. Zhuang Yan / WANGYONG, FA 1764026 (Forum Feb. 14, 2018) (“Respondent’s domain names do not have resolving websites. Using a domain name to resolve to an inactive website (or no website at all) indicates bad faith registration and use.”). UDRP panels have held that mere passive holding may not be evidence of bad faith registration and use when there is a possibility of some future legitimate, good faith use. Collegetown Relocation, L.L.C. v. Concept Software & Techs. Inc., FA 96555 (Forum Mar. 14, 2001) (finding no bad faith use if it is conceivable that the respondent could make a legitimate, non-competitive use even if it had not yet done so). In this case, Respondent says that he intends to use all of the Domain Names for noncommercial criticism of the Lottery, but his actions as described above contradict those assertions, and they carry more weight than his words. His passive holding of these Domain Names is just as consistent with an intent to sell them to Complainant or prevent Complainant from owning them as with his stated intent. And again, the virtual identity of these Domain Names to Complainant’s mark, and the likelihood of its attracting Internet users seeking the Lottery to any web site resolving from it is compelling. The Panel finds that Respondent’s inactive holding of the Domain Names is in bad faith.
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Names in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mississippilottery.us> and <mslottery.com> Domain Names be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
July 15, 2019
[i] Undisputed allegations in the Complainant’s Additional Submission state that the perceived legal impediments to the Lottery becoming operational were removed on or about June 3, 2019 based upon a federal district court opinion and a subsequent U.S. DOJ determination.
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