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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PlasmaNet, Inc. v. Ribec Enterprises and Rebecca and Richard Folsom
Case No. D2001-0356
1. The Parties
The Complainant is PlasmaNet, Inc., a Delaware corporation with a principal place of business at 420 Lexington Avenue, New York, New York 10170, USA.
The Respondents are Ribec Enterprises and Rebecca and Richard Folsom located at 1861 Brown Boulevard, Suite 685, Arlington, Texas 76006, USA.
2. The Domain Names and Registrars
This dispute concerns the following domain names:
a) <jumbofreelotto.com> and <freelottocash.com>
The registrar with which these Domain Names are registered is Register.com, located at 575 Eighth Avenue, New York, New York 100018, USA; and
The registrar with which this Domain Name is registered is Go Daddy Software, Inc., located at Domain Transfers, c/o Go Daddy, 5320 E. Dynamite Boulevard, Cave Creek, Arizona 85331, USA.
3. Procedural History
On March 12, 2001, and March 14, 2001, respectively, the World Intellectual Property Organization Arbitration and Mediation Center (the WIPO Center) received a Complaint electronically and by hard copy for a decision in accordance with the Uniform Domain Name Dispute Resolution Policy (the Policy), 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).
On March 16, 2001, the WIPO Center acknowledged receipt of the said Complaint.
On March 16, 2001, the WIPO Center sent a first Request for Registrar Verification to the Registrar. On March 22, 2001, the Registrar, Register.com, confirmed to the WIPO Center that it was the Registrar of two of the said Disputed Domain Names and also that the current registrants of the said Domain Names were the Respondents.
On March 23, 2001, the WIPO Center sent to Complainant a Deficiency Notification, which was remedied by an Amended Complaint Submission on March 26 and 28, 2001. On March 27, 2001, the WIPO Center sent a Request for Registrar Verification to Go Daddy Software regarding <megafreelotto.com> and received such verification on April 4, 2001, whereupon the WIPO Center completed its Formal Requirements Checklist on that same date.
On April 18, 2001, having found that the Complaint had satisfied the formal requirements of the Policy, the Rules, and the Supplemental Rules, the WIPO Center sent the Notification of Complaint and Commencement of Administrative Proceeding (the Notification) by post/courier, facsimile, and e-mail to the Respondents and transmitted electronically copies of said documents to the Complainant, ICANN, and the Registrars. The said Notification particularized the formal date of the commencement of this administrative proceeding as April 18, 2001, and required the Respondents to submit a Response to the Complaint within 20 calendar days from the date of receipt of the Notification, failing which the Respondents would be considered to be in default.
The Respondents failed to file the Response with the WIPO Center by the last date, i.e. May 7, 2001. On May 25, 2001, the WIPO Center sent the Notification of Respondent Default to the Respondents by e-mail and copied the Complainant via e-mail. The Complainant elected to have the dispute decided by a single-member panel (the Panel). On June 15, 2001, the WIPO Center appointed Mr. Terrell C. Birch to be the panelist after receiving a Statement of Acceptance and Declaration of Impartiality and Independence from him and sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Complainant and the Respondents and copied it to the Panel by e-mail. On the same day, the WIPO Center sent a Transmission of Case File to the Panel.
The Panel finds that the WIPO Center has discharged its obligations and responsibility under the Rules. The Panel will hereby issue its Decision based on the Complaint, the Policy, the Rules, and the Supplemental Rules, without the benefit of any Response from the Respondents.
4. Factual Background
A. PlasmaNet, its Trade/Service Marks
This Complaint is based on the following grounds:
PlasmaNet is the owner of the marks FREELOTTO, FREELOTTO.COM and FREE LOTTO & Design in connection with on-line computer games, sweepstakes, and promotions (collectively, the FREELOTTO Marks), and also owns the domain name <freelotto.com>. PlasmaNet has used the FREELOTTO Marks in commerce since at least as early as June 1, 1999, which is when its web site, located at "www.freelotto.com," was officially launched. PlasmaNet’s products and services sold under the FREELOTTO Marks have been extensively promoted and advertised and have achieved significant commercial success.
PlasmaNet also owns several California state registrations for the FREELOTTO Marks. Specifically, PlasmaNet owns:
(1) California State Service Mark Reg. No. 0503069 for the mark FREELOTTO covering promoting the goods of others, which issued on March 21, 2000.
(2) California State Service Mark Reg. No. 052918 for the mark FREELOTTO covering entertainment services, namely on-line computer games, conducting sweepstakes, which issued on February 17, 2000.
(3) California State Service Mark Reg. No. 052917 for the mark FREELOTTO.COM; and
(4) California State Service Mark Reg. No. 052919 for the mark FREE LOTTO & Design covering entertainment services, namely on-line computer games which issued on February 17, 2000 covering entertainment services, namely on-line computer games, conducting sweepstakes, which issued on February 17, 2000.
Lastly, PlasmaNet has applied to register its FREELOTTO Marks with the United States Patent and Trademark Office. PlasmaNet is the owner of the following United States trademark applications for the FREELOTTO Marks:
(1) Serial No. 75,669,014 for the mark FREE LOTTO & Design covering entertainment services, namely providing on-line computer games;
(2) Serial No. 75,907,666 for the mark FREELOTTO covering promoting the goods others by arranging for sponsors to affiliate their goods and services with applicant’s online game, entertainment services, namely, providing on-line computer games; conducting sweepstakes;
(3) Serial No. 75,668,444 for the mark FREELOTTO.COM covering promoting the goods of others, entertainment services, namely providing on-line computer games, conducting sweepstakes;
(4) Serial No. 75,829,713 for the mark FREELOTTO BESTBESTS covering newsletters in the field of promotions and sweepstakes and promoting the goods and services of others by offering sweepstakes and sales promotions via a global computer network;
(5) Serial No. 75,847,757 for the mark FREELOTTO LUCKY CLICKS covering newsletters in the field of promotions and sweepstakes and promoting the goods and services of others by offering sweepstakes and sales promotions via a global computer network
PlasmaNet’s FREELOTTO Trademarks have been extensively promoted and advertised and have achieved widespread consumer recognition. The number of people visiting the <freelotto.com> web site and playing the FREELOTTO Game since PlasmaNet launched its web site in June 1999 is large. For example, according to PC Data Online, an independent web usage tracking service, the <freelotto.com> web site had more than 4 million unique visitors a week in December 1999, and more than 4.3 million unique visitors for the week of February 10, 2001. To date, over 16 million participants have registered to play the FREELOTTO Game and the <freelotto.com> site was recently the 41st most popular web site. PlasmaNet’s advertising campaign has included more than one billion banner ads on other web sites, and PlasmaNet has spent over five million in connection with its advertising campaign. More than 100 companies have advertised on <freelotto.com> to date, including AT&T, Barnes & Noble, CBS Sportsline, iVillage, NextCard and 1-800-FLOWERS. Such advertisements have generated over nine million dollars in revenue. Lastly, PlasmaNet’s services offered under the FREELOTTO Marks have received extensive unsolicited media attention. For example, one article about the FREELOTTO game and web site appeared on the front page of the Washington Post on January 21, 2000, and another article about the FREELOTTO game and web site appeared in the New York Daily News on January 31, 2000. A January 12, 2000 article from the PR Newswire reports that a successful promotion by PlasmaNet in connection with its FREELOTTO.COM web site "pushed the Internet’s leading cash sweepstakes site past the 2.5 million mark in registered players."
PlasmaNet's trademark rights based on its trademark filings and on its common law rights acquired through the use of the FREELOTTO and FREELOTTO.COM marks, trade names, and domain names, predate the registration of the Disputed Domain Names by Respondents.
C. Respondents’ Infringing Activities
The Disputed Domain Names were registered by Respondents in March and April 2000.
On or about November 1, 2000, Complainant learned of Respondents' registration of the Disputed Domain Names and notified Respondents by letters of November 1 and 3, 2000 demanding Respondents refrain from using Complainant's FREELOTTO mark and assign the Disputed Domain Names to Complainant.
Despite these warnings and demands to which Respondents failed to respond, Complainant learned that the corresponding web site for <megafreelotto.com> had become active. On January 9, 2001, Complainant demanded deactivation of that web site and assignment of all Disputed Domain Name registrations to Complainant. Again, no answer from Respondents was forthcoming.
5. Parties’ Contentions
Essentially, the contentions of the Complainant are as follows:
The Disputed Domain Names wholly incorporate the Complainant’s FREELOTTO and FREELOTTO.COM marks, trade names, and domain names, and are confusingly similar to the marks, trade names, and domain names of the Complainant;
The Respondents have no rights or legitimate interests in the Disputed Domain Names; and
The Respondents have registered and are using the Disputed Domain Names in bad faith.
In view of the fact that the Respondents have not filed a Response, the Panel is in no position to make out their contentions.
6. Discussion and Findings
6.1 Effect of Respondents' Default
By paragraph 5(b)(i) of the Rules, it is expected of a Respondent to:
"[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…"
In the event of a default, under paragraph (14)(b) of the Rules:
"…the Panel shall draw such inferences therefrom as it considers appropriate."
As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques WIPO Case No. D2000-0004 (February 16, 2000):
"Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent."
In the instant administrative proceeding, the Respondents' default entitles the Panel to conclude that Respondents have no evidence to rebut the assertions of the Complainant. It enables the Panel to proceed to make a finding in favor of the Complainant.
6.2 Elements to be proven
However, paragraph 4(a) of the Policy envisages that for the Complaint to succeed, the Complainant must establish that:
i) the Respondents' Domain Name(s) is(are) identical or confusingly similar to a trademark in which the Complainant has rights; and
ii) the Respondents have no rights or legitimate interests in respect of the Domain Name(s); and
ii) the Respondents' Domain Name(s) has(have) been registered and is(are) being used in bad faith.
The panel in Cortefiel, S.A. v. Miguel Garcia Quintas WIPO Case No. D2000-0140 (April 24, 2000) notes that under the Policy, even if the respondent is in default,
"…the complainant must prove that each of these three elements are present."
6.3 Identical or Confusingly Similar
The Complainant claims and has established first use and ownership of the FREELOTTO marks. It has also shown substantial use. Ownership of these marks is clearly in the Complainant. Under the Policy, all that is required of the Complainant is to establish its rights in the marks, and the extent of the geographical area in which the rights accrue does not matter. The Panel has compared the Disputed Domain Names with the Complainant’s FREELOTTO marks and finds that the second level domains thereof are dominated by the Complainant’s marks. The Panel finds that there is such similarity in sound, appearance, and connotation between the FREELOTTO marks and the said Disputed Domain Names as to render said Disputed Domain Names confusingly similar to Complainant’s FREELOTTO marks.
6.4 Respondents' Rights or Legitimate Interests in the Disputed Domain Names
Under paragraph 4(c) of the Policy, the Respondents may demonstrate their rights and interests in the said Disputed Domain Names by showing:
i) its use of, or demonstrable preparations to use, the said Disputed Domain Names or a name corresponding to the said Disputed Domain Names in connection with a bona fide offering of goods or services before any notice to him of the dispute; or
ii) they (as individuals, a business, or other organization) have been commonly known by the said Disputed Domain Names, even if they have acquired no trademark or service mark rights; or
iii) they are making a legitimate noncommercial or fair use of the said Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence presented by Respondents in demonstrating any of the foregoing factors because Respondents are in default and have failed to respond in this action. Accordingly, the evidence available contains nothing that may justify a legitimate noncommercial or fair use of the said Disputed Domain Names by Respondents. Neither is there any evidence for any of the other two foregoing requirements.
Furthermore, in the absence of any license or permission from Complainant to use its FREELOTTO names and marks or to apply for or use any domain name incorporating those marks, it is clear that no actual or contemplated bona fide or legitimate use of the contested domain names could be claimed by Respondents. Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055 (March 21, 2000).
6.5 Registration and Use in Bad Faith
As stated by the panel in World Wrestling Federation Entertainment, Inc. v. Michael Bosman WIPO Case No. D99-0001 (January 14, 2000) in order for the Complainant to succeed:
"... the name must not only be registered in bad faith, but it must also be used in bad faith."
The Complainant must prove that the Respondent registered and also used the said Domain Name in bad faith in order to establish ‘bad faith’ on the part of the Respondent.
Respondents' bad faith in registering and using the domain names <megafreelotto.com>, <jumbofreelotto.com>, and <freelottocash.com> is evident in a number of ways. First, as discussed above, Respondents own no trademark registrations that include the mark FREELOTTO, nor did they do business under a name that incorporates the FREELOTTO Mark prior to Complainant's establishment of rights in the mark.
Second, Ribec Enterprise’s <megafreelotto.com> web site, like PlasmaNet’s web site, enables users to participate in an online game without charge to win money and other prizes. Accordingly, Ribec Enterprise’s web site accessed through its <megafreelotto.com> domain name is competitive with PlasmaNet’s web site accessed through its <freelotto.com> domain name, which is further evidence that Respondents intended to divert PlasmaNet’s customers with their FREELOTTO-formative domain names. Indeed, since the only difference between this domain name and PlasmaNet’s <freelotto.com> domain name is the laudatory term MEGA, users wishing to play PlasmaNet’s FREELOTTO game are likely to believe that Respondents' game is the same game as PlasmaNet’s FREELOTTO game (e.g., that it comes from the same source as PlasmaNet’s FREELOTTO game), except that the later version is somehow enhanced, since it is a MEGA version.
Lastly, Respondents did not respond to notice letters, sent by PlasmaNet’s counsel, nor a follow-up letter.
Based on the alleged facts, which have not been disputed, the Panel finds that the Respondents have engaged in the practices defined in Paragraph 4(b)(iv) of the Policy as evidencing the registration and use of the said Disputed Domain Names in bad faith.
For all the foregoing reasons and pursuant to the ICANN Rules, paragraph (15), the Panel finds that the Complainant has proved each of the three elements of paragraph 4(a) of the Policy. The Panel requires that the said Disputed Domain Names, namely, <megafreelotto.com>, <jumbofreelotto.com>, and <freelottocash.com>, be transferred to the Complainant pursuant to paragraph 4(i) of the Policy.
Terrell C. Birch
Dated: July 5, 2001