The Texas Department of Transportation won recently a domain name dispute for the domain name DontMessWithTexas.com. As readers may know, the Department uses the slogan Don’t Mess with Texas in its anti-litter campaign. Respondent, Privacy Protect.org / Domain Admin, did not submit a response.
Under Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Resolution Policy (the “Policy”) the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
- The domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights. The panel found that the Respondent’s domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s mark, omitting only an apostrophe and the spaces between words, and adding the generic top-level domain (“gTLD”) “.com”.
- Respondent has no rights or legitimate interests in respect of the domain name. The Panel concluded that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services under the Policy or a legitimate noncommercial or fair use under Policy.
- The domain name has been registered and is being used in bad faith. The panel reasoned that “Respondent’s operation of a confusingly similar domain name will likely lead some Internet users to visit Respondent’s website, when they intended to visit Complainant’s. Inevitably, a portion of these misdirected users will access the competing links displayed on Respondent’s site. ” The Panel found that this type misdirection constitutes use in bad faith under Policy.
The panel found that the three elements of the Policy were satisfied and ordered that the <dontmesswithtexas.com> domain name be transferred to the Complainant.