The State of Florida Department of Lottery v. John Zuccarini

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

State of Florida Department of the Lottery v. John Zuccarini

Case No. D2002-0307

1. The Parties

The Complainant is the State of Florida Department of the Lottery, 250 Marriott Drive, Tallahassee, Florida, United States of America.

The Respondent is John Zuccarini of Atlanta, Georgia, United States of America.

2. The Domain Name and Registrar

The domain name at issue is <flalotery.com>.

The Registrar of the disputed domain name is Computer Services Langenbach GmbH d.b.a. Joker.com, of Dusseldorf, Germany.

3. Procedural History

The original Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by e-mail on March 30, 2002, and in hard copy on April 3, 2002. On April 10, 2002, Complainant sent to the Center a communication clarifying that the relief sought by its Complaint is a transfer of the disputed domain name to the Complainant. The Complaint met the requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The fee payment required of the Complainant appears to have been properly made.

The Center requested and Joker.com provided verification that it had received a copy of the Complaint, that it is the Registrar of the disputed domain name <flalotery.com>, that Respondent is the registrant, that the Uniform Domain Name Dispute Resolution Policy applies to the disputed domain name, and that English is used in connection with the registration. The Registrar also confirmed the allegations of the Complaint as to Respondent's contact details and provided an additional address for the owner. It is "John Zuccarini, Cupcake Patrol, Saffrey Square, P.O. Box N-4149 Nassau NP, B.S."

After an appropriate check for compliance with the formal requirements of the Rules and Supplemental Rules, the Center notified the Complaint to the Respondent on April 11, 2002, along with a copy of the Complaint. This action was carried out as required by section 2(a) of the Rules. The Notification stated that the "last day for sending your Response to the Complainant and to us is May 1, 2002".

No response from the Respondent has been received by the Center.

On May 2, 2002, the Center sent to Respondent a Notification of Respondent Default.

The Center invited William L. Mathis to serve as the sole panelist for this case. He accepted and provided the Center with his Declaration of Impartiality and Independence.

On May 14, 2002, the Center notified the parties of the appointment in this case of an Administrative Panel consisting of a single member, William L. Mathis.

4. Factual Background

The Complainant is an agency of the State of Florida in the United States. It is known as The Florida Lottery and is the only entity authorized under Florida law to use the designation "Florida Lottery." Since its establishment in 1987, it has sold and advertised its lottery tickets and other games of chance continuously under the designation "Florida Lottery." It conducts promotional campaigns in print and on the Internet. It spent approximately $30 million for advertising last year targeted to Florida residents and the millions of tourists who visit Florida from all over the world.

Complainant caused the domain name <flalottery.com> to be registered on its behalf in 1996. Paragraph 12 of the Complaint states: "The Florida Lottery registered this domain name because it is no different than 'Florida Lottery' in that 'Fla' is the widely known and used abbreviation and designation of 'Florida.'" The web site has been used continuously in connection with Complainant's promotion and advertising efforts.

"Florida Lottery" is the only word matter in a composite mark owned by Complainant. This composite forms the subject matter of Service Mark Registration 1,542,860, registered on the Principal Register by the United States Patent and Trademark Office on June 6, 1989. According to paragraph 15 of the Complaint, the words "Florida Lottery" were disclaimed "outside the scope of the registered marks." This mark has been used continuously and extensively in commerce since July 1987 in advertising and promotion and on Complainant's game pieces. Some of the pages from Complainant's <flalottery.com> web site prominently display this composite mark. In such displays there is no disclaimer of "Florida Lottery."

There never has been any relationship between Complainant and Respondent. Complainant has not authorized Respondent to register or use any mark or name.

5. Parties’ Contentions

A. Complainant

Complainant contends that "Fla Lottery" and "Florida Lottery" are trademarks and/or service marks in which it has rights. In particular, Complainant contends that it has built a strong reputation and secondary meaning in these marks through its widespread and exclusive use of them in the promotion of its goods and services.

Complainant contends further that the disputed domain name is virtually identical to and is confusingly similar to its mark and points to instances of actual confusion.

It is also contended by Complainant that the Respondent has no rights or legitimate interests in the domain name in issue. Complainant says that Respondent has no connection with the State of Florida and that Respondent does not offer a lottery.

Finally, Complainant contends that the disputed domain name was registered and is being used in bad faith.

The remedy requested by Complainant is transfer of the disputed domain name registration to Complainant.

B. Respondent

No contentions have been advanced by or on behalf of the Respondent.

6. Discussions and Findings

In order to prevail under the Policy, Complainant must show that <flalotery.com>

is identical or confusingly similar to a trademark or service mark in which

Complainant has rights, that Respondent has no rights or legitimate interests

in respect of <flalotery.com>, and that <flalotery.com> has

been registered and is being used in bad faith.

Complainant's Rights in Marks

Although the Complaint mentions Complainant's ownership of U.S. Service

Mark Registration 1,542,860, the Complaint does not rest Complainant's claim

of ownership of rights in "Florida Lottery" on the registration itself.

While "Florida Lottery" is a part of the composite mark forming the subject

matter of the registration, one cannot view the registration as being evidence

of ownership of service mark rights in "Florida Lottery" divorced from

the design matter shown in the registration because of the registration's

disclaimer of the words apart from the mark as a whole. On the other hand,

the disclaimer which Complainant filed in connection with the application

for registration applies only to the then existing registration rights.

It does not bar Complainant's acquisition of rights in "Florida Lottery"

at a later time. 15 U.S.C.A. 1056(b) provides:

No disclaimer . . . shall prejudice or affect the . . . registrant's

rights then existing or thereafter arising in the disclaimed matter, or

his right of registration on another application if the disclaimed matter

. . . shall have become distinctive of his . . . goods or services.

According to a declaration of Complainant's General Counsel, Florida

law makes it "illegal to use the designation "Florida Lottery". . . in

connection with . . . any . . . product or service unless so authorized

in writing" by Complainant. See Fla. Stat. ch. 24.118(5)(b)(2001):

Any person who without being authorized by the department in writing

uses the term 'Florida Lottery' . . . or any similar term in the . . .

name of any . . . commercial enterprise, product, or service is guilty

of a misdemeanor. . . .

Thus, the Complainant's power to refuse permission gives Complainant substantial

control over use of "Florida Lottery" by others. The sovereign State of

Florida has therefore indicated that Florida public policy is not fostered

by free and unfettered use of this designation or similar terms.

"Florida Lottery" may be viewed as descriptive of a lottery conducted in

the State of Florida. However, even a descriptive term may become a valid

common law trademark when, as a result of its use, prospective purchasers

come to perceive it as a designation that identifies goods or services as

produced or sponsored by a particular person. Restatement of the Law Third,

Unfair Competition, §§9, 13 and 14. Such a mark is said to have acquired

secondary meaning.

The Complaint equates "Fla Lottery" with "Florida Lottery," recognizing

that "Fla" is a widely known and used abbreviation of "Florida." It follows,

therefore, that the existence of trademark rights in "Fla Lottery" also

depends upon whether it has acquired secondary meaning.

The Complaint alleges, and Respondent has not denied, that both "Fla Lottery"

and "Florida Lottery" have, in fact, acquired secondary meaning by reason

of their extensive use in connection with Complainant's game pieces and

lottery services. There is no evidence of descriptive usage of these terms

by others. Further, the existence of the above-mentioned statute prohibiting

unauthorized use should be viewed as an indication that use of the terms

by others is unlikely. Accordingly, the Panel finds that Complainant has

established the existence of secondary meaning for both "Fla Lottery" and

"Florida Lottery."

With respect to the question of whether "Fla Lottery" is a mark in which

Complainant has rights, the Panel has considered also whether this term

might be merely the distinguishing feature of a domain name and not a service

mark or trademark. It is clear that "flalottery.com" is Complainant's domain

name, but this alone does not establish that "Fla Lottery" is a trademark

or service mark within the meaning of Section 4.a.(i) of the Policy.

Based on the present record, the Panel finds that "Fla Lottery" (or "FLA

LOTTERY") is also a mark in which Complainant has rights. Paragraph 15 of

the Complaint says that "Fla Lottery" is "widely advertised, has achieved

widespread recognition and earned . . . consumer trust built directly on

the . . . 'Florida Lottery' mark." Paragraph 16 says that "Fla Lottery"

serves "as a well-recognized symbol of source of services provided by" Complainant.

Confusing Similarity

The domain name in issue is readily recognizable as a misspelling of Complainant's

mark "Florida Lottery." The omission of one "t" from "lottery" is not sufficient

to avoid confusing similarity.

Indeed, the Complaint charges, and Respondent has not denied, that Respondent

is in the business of registering as domain names slight misspellings of

famous designations and using such domain names to lead confused Internet

users to unintended web sites. The present record contains evidence of actual

confusion stemming from such a misspelling.

Accordingly, the Panel finds that the disputed domain name is confusingly

similar to Complainant's common law marks. In particular, <flalotery.com>

engenders an overall impression of a website sponsored by the owner of the

famous marks of Complainant and having something to do with Complainant's

services.

The Respondent’s Lack of Rights

Respondent has had an opportunity to come forward in this proceeding with

evidence pertinent to whether Respondent has any rights or legitimate interests

in the disputed domain name, but Respondent has remained silent. From this,

the Panel draws an inference that Respondent has no rights or legitimate

interests.

Further, since Respondent has no connection with either Florida or a lottery,

it is unlikely that he could have rights or legitimate interests in a domain

name that obviously is a composite of the two. Hence, the Panel finds that

Respondent does not have rights or legitimate interests in the disputed

domain name.

Respondent’s Bad Faith Registration and Use

The Complaint explains that Respondent has linked the disputed domain name

to a web site displaying pornographic images and offering information by

which Internet users can obtain free access to commercial pornographic web

sites. This is confirmed in a supporting declaration by Complainant's General

Counsel and by printouts from the web site accessed through use of the disputed

domain name.

In view of the similarity between the disputed domain name and Complainant's

marks, it was foreseeable that Internet users seeking access to Complainant's

web site would mistakenly enter the disputed domain name. The Complaint

documents several occurrences of this nature by copies of email communications

addressed to Complainant by Internet users. One wrote:

For your information, I don't think you may be aware of it, but almost

everytime I visit your site to pick up the lotto numbers there are "SEX"

sites that have tagged themselves to your location. When I leave your

site, these sites pop up in the history of my computer search for the

day visited. I am pretty upset about this as it is NOT something I am

interested in receiving. Maybe you can clear this matter up on your end.

Section 4.b. of the Policy describes different circumstances which, if

shown to exist, will demonstrate that a disputed domain name has been registered

and is being used in bad faith. Subsection 4.b.(iv) describes one such circumstance

as follows:

(iv) by using the domain name, you have intentionally attempted to attract,

for commercial gain, Internet users to your 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 your

web site or location or of a product or service on your web site or location.

The Panel finds that such circumstance exists in this case. It is undeniable

that Respondent's use of the disputed domain name has drawn to Respondent's

on-line location Internet users who had sought a site sponsored or affiliated

with Complainant. Since it was readily foreseeable that this would happen,

Respondent is charged with intending the consequences of his actions. Moreover,

in the absence of evidence to the contrary, the Panel believes it reasonable

to conclude that Respondent's attempt to attract users to his on-line sex

location must have been motivated by a prospect for commercial gain.

The Complaint additionally provides evidence that Respondent has engaged in

a similar pattern of conduct with respect to other domain names. For example,

it cites Electronics Boutique Holdings Corp. v. John Zuccarini, 2000

U.S. Dist. LEXIS 15719, 56 USPQ2d 1705 (D.C. E.D. Pa. 2000), and Shields

v. John Zuccarini et al, 254 F.3d 476, 59 USPQ2d 1207 (3d Cir. 2001). A

declaration accompanying the Complaint also refers to over fifty matters involving

Mr. Zuccarini which were brought under the UDRP before WIPO and National Arbitration

Forum panels. See, for example, WIPO

Case Nos. D2000-0777, D2000-1004,

and D2000-1415. Such earlier conduct by

Respondent confirms the bad faith character of Respondent's registration and

use of the domain name in issue here.

Accordingly, the Panel finds that the disputed domain name has been registered

and is being used in bad faith.

7. Decision

Having proved that the domain name in issue is confusingly similar to a

trademark or service mark in which Complainant has rights, and that Respondent

has no rights or legitimate interests in respect of the domain name, and

that the domain name has been registered and is being used in bad faith,

Complainant is entitled to prevail in this proceeding.

Therefore, it is ordered that registration of the domain name <flalotery.com>

be transferred to the State of Florida Department of the Lottery.

William L. Mathis

Sole Panelist

Dated: May 25, 2002