Lotto Logic Limited v. Carlos Tolentino
Claim Number: FA2011001921749
Complainant is Lotto Logic Limited (“Complainant”), represented by Gerben Perrott, District of Columbia, USA. Respondent is Carlos Tolentino (“Respondent”), Dominican Republic.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lotteryusa.us>, registered with 1&1 IONOS SE.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 23, 2020; the Forum received payment on November 23, 2020.
On November 24, 2020, 1&1 IONOS SE confirmed by e-mail to the Forum that the <lotteryusa.us> domain name is registered with 1&1 IONOS SE and that Respondent is the current registrant of the name. 1&1 IONOS SE has verified that Respondent is bound by the 1&1 IONOS SE 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 November 30, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 21, 2020 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@lotteryusa.us. Also on November 30, 2020, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 26, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco, 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant offers information pertaining to lotteries throughout the world.
Complainant has rights in the LOTTERY USA mark through its registrations with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <lotteryusa.us> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds the “.us” country-code top-level domain (“ccTLD”).
Respondent lacks rights and legitimate interests in the <lotteryusa.us> domain name. Respondent is not commonly known by the at-issue domain name. Respondent does not use the domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead attempts to divert internet users to the domain name’s website, where Respondent offers competing services.
Respondent registered and/or uses the <lotteryusa.us> domain name in bad faith. Respondent disrupts Complainant’s business for commercial gain by passing off as Complainant and offering competing services on the disputed domain name’s resolving website. Respondent registered the at-issue domain name with knowledge of Complainant’s rights in the LOTTERY USA mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the LOTTERY USA mark.
Complainant’s rights in the LOTTERY USA mark existed prior to Respondent’s registration of the at-issue domain name.
Respondent is not authorized to use Complainant’s trademark.
Respondent uses the <lotteryusa.us> domain name pass itself off as Complainant and address a website that trades on Complainant’s LOTTERY USA trademark by offering pay-per-click links.
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 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 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. Therefore the cases cited herein were predominantly decided under the UDRP which does not include usTLD Policy ¶ 4(c)(i). The usTLD Policy ¶¶ 4(c)(ii), (iii) and (iv) are identical to UDRP Policy ¶¶ 4(c)(i)(ii) and (iii).
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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for the LOTTERY USA mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4 (a)(I). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
The at-issue domain name consists of Complainant’s LOTTERY USA trademark less its domain name impremissable space, followed by the top level domain name “.us.” The differences between the at-issue <lotteryusa.us> domain name and Complainant’s LOTTERY USA trademark are insufficient to distinguish the domain name from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel finds that pursuant to Policy ¶ 4(a)(i) Respondent’s <lotteryusa.us> domain name is confusingly similar or identical to Complainant’s LOTTERY USA trademark. See Basic Trademark S.A. v. Antares S.p.A, FA 1130680 (Forum Mar. 4, 2008) (“The <robedikappa.us> domain name is identical to the ROBE DI KAPPA mark. The only difference is the omission of the space between the words and the addition of the ccTLD “.us,” which does not significantly distinguish the domain name from the mark.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the <lotteryusa.us> domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
The WHOIS information for the at-issue domain name ultimately identifies the domain name’s registrant as “Carlos Tolentino.” The record before the Panel contains no evidence that otherwise tends to show that Respondent is commonly known by the <lotteryusa.us> domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Furthermore, Respondent uses the at-issue domain name to trade on Complainant’s LOTTERY USA mark by exploiting the traffic from internet users that mistakenly believe <lotteryusa.us> will direct them to LOTTERY USA related services when in fact land the domain name delivers them to a website controlled by Respondent. There, Respondent offers links to lottery related services that compete with services offered under Complainant’s LOTTERY USA trademark. Respondent’s use of the trademark identical <lotteryusa.us> domain name in this manner constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a non-commercial or fair use under Policy ¶ 4(c)(iii). See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <lotteryusa.us> domain name was registered and used in bad faith. As discussed below without limitation, Policy ¶ 4(b) specific bad faith circumstances, as well as other circumstance, are present which permit the Panel to conclude that Respondent acted in bad faith regarding the at-issue domain name pursuant to paragraph 4(a)(iii) of the Policy.
First and as mentioned above regarding rights and legitimate interests, Respondent’s at-issue domain name addresses a website that offers services in competition with services offered by Complainant. Thereby, Respondent disrupts Complainant’s business for commercial gain in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business).
Additionally, Respondent had actual knowledge of Complainant’s rights in the LOTTERY USA mark when it registered <lotteryusa.us> as a domain name. Respondent’s actual knowledge is evident from Respondent’s offering of services competing with those offered by Complainant via Respondent’s <lotteryusa.us> website as discussed above, as well as from the overt inclusion of Complainant’s trademark in the at-issue domain name. Respondent’s registration and use of its confusingly similar domain name with prior knowledge of Complainant’s rights in such domain name further shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”); see also, Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lotteryusa.us> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 28, 2020
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