New Hampshire Sweepstakes Commission v.
We Web Well, Inc.
Claim
Number: FA0309000197499
Complainant is New Hampshire Sweepstakes Commission,
Concord, NH (“Complainant”) represented by Mark
A. Wright, of McLane, Graf, Raulerson & Middleton,
P.A., 900 Elm St., PO Box 326,
Manchester, NH 03105. Respondent is We Web Well, Inc., 113 Ferry Street, Newark, NJ 07105
(“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <nhlottery.com>, registered with Names4ever.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on September 19, 2003; the Forum received a hard copy of the
Complaint on the same day.
On
September 22, 2003, Names4ever confirmed by e-mail to the Forum that the domain
name <nhlottery.com> is registered with Names4ever and that
Respondent is the current registrant of the name. Names4ever has verified that
Respondent is bound by the Names4ever registration agreement and has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
September 24, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of October 14, 2003 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@nhlottery.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
October 23, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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 for Uniform Domain Name Dispute Resolution Policy (the
"Rules") "to employ reasonably available means calculated to
achieve actual notice to Respondent."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN 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 makes the following assertions:
1. Respondent’s <nhlottery.com>
domain name is confusingly similar to Complainant’s NEW HAMPSHIRE LOTTERY mark.
2. Respondent does not have any rights or
legitimate interests in the <nhlottery.com> domain name.
3. Respondent registered and used the <nhlottery.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant has
used the mark, NEW HAMPSHIRE LOTTERY, in commerce in connection with the
promotion, marketing, advertising and selling of lottery tickets since 1964.
Complainant operates a website located at the <newhampshirelottery.com>
domain name (registered January 4, 2000).
Complainant filed its trademark application for the NEW HAMPSHIRE
LOTTERY mark with the United States Patent and Trademark Office on December 26,
2001 and registered its mark on January 21, 2003.
Respondent
registered the <nhlottery.com> domain name on April 16, 2001. Respondent is not currently using the
disputed domain name. It had also
registered the domain names <illottery.com>, <aklottery.com>, and
<arlottery.com>.
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."
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(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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 and
is being used in bad faith.
The domain name
in dispute is confusingly similar to Complainant’s established and registered
mark. The use of the abbreviation NH is commonly used for the state of New
Hampshire. Therefore, Respondent’s
domain name, <nhlottery.com>, is confusingly similar to Complainant’s
mark, NEW HAMPSHIRE LOTTERY. See Minn.
State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding
that the <mnlottery.com> domain name is confusingly similar to
Complainant’s MINNESOTA STATE LOTTERY registered mark); see also, 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).
Complainant has
satisfied the requirements under Policy ¶ 4(a)(i).
Respondent has
not demonstrated any use of the disputed domain name and has not come forward
to explain what legitimate use it might have for the name. Thus, the Panel may presume that Respondent
lacks rights and legitimate interests in the domain name at issue. See Desotec N.V. v. Jacobi Carbons, AB, D2000-1398
(WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that
Complainant’s allegations are true unless clearly contradicted by the
evidence); see also Pavillion Agency, Inc. v. Greenhouse Agency, Ltd.,
D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond
can be construed as an admission that they have no legitimate interest in the
domain names); see also, eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18,
2001) (stating that the "use of complainant’s entire mark in infringing
domain names makes it difficult to infer a legitimate use").
There is no
evidence in the record to suggest that Respondent is commonly known by the
disputed domain name pursuant to Policy ¶ 4(c)(ii), and given the direct
relationship between the name and the business of Complainant, such a claim
would be highly implausible. See Nike, Inc. v. B. B. de Boer, D2000-1397
(WIPO Dec. 21, 2000) (finding that no person besides Complainant could claim a
right or a legitimate interest with respect to the domain name
<nike-shoes.com>); see also CBS
Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding
that Respondent failed to demonstrate any rights or legitimate interests in the
<twilight-zone.net> domain name since Complainant had been using the
TWILIGHT ZONE mark since 1959).
By passively
holding the domain name without use, Respondent has not demonstrated a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See
Ziegenfelder Co. v. VMH Enterprises, Inc. D2000-0039 (WIPO Mar. 14,
2000) (finding that failure to provide a product or service or develop the site
demonstrates that Respondent has not established any rights or legitimate
interests in a domain name); see also Ritz-Carlton Hotel v. Club Car
Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding no legitimate rights
or interests when Respondent has not used the domain names in connection with
any type of bona fide offering of goods and services).
Complainant has
satisfied the requirements under Policy ¶ 4(a)(ii).
Complainant has shown that Respondent has demonstrated bad
faith by not developing a web site utilizing the domain name. Passive holding
of a domain name permits an inference of registration and use in bad faith. See
DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000)
(concluding that the Respondent’s passive holding of the domain name satisfies
the requirement of paragraph 4(a)(iii) of the Policy); see also Caravan Club
v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the
Respondent had made no use of the domain name or web site that connects with
the domain name, and passive holding of a domain name permits an inference of
registration and use in bad faith).
When a party
obtains a domain name of a well-known trademark, with no connection to the
entity holding the mark, it is evidence of bad faith. The name <nhlottery.com>, as stated above, strongly
implies affiliation with the Complainant. Respondent has not shown that he is
authorized by the New Hampshire legislature to conduct a lottery in New
Hampshire. Respondent is not engaged in operation of any state lottery and it
is likely it would be illegal for him to do so without legislative approval.
Accordingly, registering the name <nhlottery.com> was in bad
faith. See Singapore Airlines Ltd v. P & P Servicios de Communicacion
S.L., D2000-0643 (WIPO Aug. 29, 2000) ("[t]he domain name
<singaporeairlines.com> is so obviously connected with a well-known
airline that its very registration and use by someone with no connection to the
airline suggests opportunistic bad faith…").
Complainant
provided WHOIS evidence that Respondent has registered at least three other
domain names utilizing state abbreviations with the word
lottery—<illottery.com>, <aklottery.com>, and
<arlottery.com>. Respondent has
exhibited bad faith by engaging in a pattern of registering domain names to
prevent the true owners of the trademarks from reflecting their mark in domain
names. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June
20, 2000) (finding that Respondent violated ¶ 4(b)(ii), as revealed by the
number of other domain name registrations incorporating others’ trademarks and
the fact that the domain names in question do not link to any on-line presence
or website); see also Harcourt,
Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one
instance of registration of several infringing domain names satisfies the
burden imposed by the Policy ¶ 4(b)(ii)).
Complainant has
satisfied the requirements under Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <nhlottery.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
November 3, 2003
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