WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lottomatica Spa v. Alexis Leon
Case No. D2001-0549
1. The Parties
The Complainant is Lottomatica Spa a company incorporated in Italy with business office in Rome, Via di Porta Latina 8, 00179, Italy (hereinafter, the Complainant). The Respondent is Alexis Leon with registered address in Caracas, DF 0100, Avenida Principal 45, Venezuela (hereinafter, the Respondent).
2. The Domain Names and Registrar
The domain names at issue are <lottomatica.com>, <lottomatica.org> and <lottomatica.net>. The Registrar is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, Virginia Ė 20170-5139, USA.
3. Procedural History
The WIPO Arbitration and Mediation Center (hereinafter, the Center) received the Complaint by e-mail on April 17, 2001 and in hardcopy on April 19, 2001. On April 18, 2001 the Center sent the acknowledgement of Receipt to the authorised representative of the Complainant.
On April 18, 2001, the Center sent the request to the Registrar for the verification of the particulars of the domain names at issue. On April 20, 2001, the Registrar confirmed (i) that the domain names at issue had been registered through the Registrar; (ii) that the current Registrant of the domain names is the Respondent; (iii) the administrative, billing and technical contact details; and finally (iv) that the domain names are in "Active" status.
After verifying that the Complaint meets with the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (hereinafter, "the Policy"), the Rules and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter, "the Rules" and "the Supplemental Rules" respectively), the Center sent the Respondent a notification under Paragraph 2 (a) of the Rules together with copies of the Complaint on April 23, 2001. The same notification was sent to the administrative contact, technical contact, zone contact and billing contact, as required by Paragraph 2(a) of the Rules. The notification was communicated by post/courier (Complainant with enclosures), and e-mail (Complainant without attachments). Both the Complainant and the Registrar were also notified of the initiation of the proceedings in accordance with the Policy and the Rules.
The Respondent did not respond to the Complaint. Accordingly the Center sent the parties the Notification of the Respondentís Default on May 15, 2001.
On May 23, 2001, after receiving his completed and signed Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed Jose Carlos Erdozain as the single member of the Administrative Panel (hereinafter, the Panelist) in accordance with Paragraph 6(f) of the Rules. At the same date, the Center notified both the Complainant and the Respondent of the appointment of the Panelist.
The date scheduled for the issuance of the Panelís decision is June 5, 2001.
The language of the proceeding is English.
4. Factual Background
The Complainant, Lottomatica Spa undertakes the exclusive management of the lotto game in Italy. The organisation of this game has been granted by the Italian Finance Ministry.
The Complainant has used the trade name "lottomatica" since it was first granted on December 6, 1990. Nowadays, Lottomatica is a group of companies trading as "Lottomatica Spa" since 1998, "Lottomatica Italia Servizi Spa" since 1997, "Lottomatica Sistemi Spa" since 1999, and "Lottomatica International Spa" since 1997.
Lottomatica has created a fully automated net for playing the lotto game in real time since 1993. The extension of the net is around 20,000 computers and offices which can be linked.
The advertising budget of the Complainant in 1998 was of Ä 23,800 millions, whilst in 1999 was of Ä 25,700 millions. The budget is increasing every year and in 2000 it amounted to Ä 7.35 billions.
The above is proved through Annexes 4 to 6.
The Complaint is based on the ownership of the following Italian trademarks:
- "lottomatica" (word mark) that was registered on February 13, 1986 (all goods and services in Classes 9, 26 and 41, and games and toys in class 28) under registration number 779.891. This trademark is valid and in force until January 13, 2007.
- "lottomatica" (stylised) that was registered on February 27, 1995 (Classes 41 and 42 to distinguish automated and computerised system for management of the lotto game, under registration number 712.989.
- "lottomatica" as part of trademark applications nos. RM99c001432 / 33 for "LISnet Ė Gruppo Lottomatica applying for Classes 9, 35, 36, 37, 38, 39, 41 and 42.
The Complainant has attached certificates of the foregoing trademarks registrations as Annex 3 to the Complainant.
5. Partiesí Contentions
5.1 Complainant contends that:
(a) The domain names <lottomatica.com>, <lottomatica.org> and <lottomatica.net> are identical and therefore confusingly similar to the various trademark registrations "lottomatica" that are registered in favor of the Complainant as previously stated.
(b) The Respondent does not have any right or legitimate interest in the domain names at issue due to the following:
(i) The Respondent has no relationship with the Complainant and no authorisation or agreement has been granted to use the trademark "lottomatica".
(ii) The Respondent has not been known under the domain names, or under any other related name to such domain names.
(iii) The Respondent does not own any right to the trademark "lottomatica".
(c) The domain names <lottomatica.com>, <lottomatica.org> and <lottomatica.net> were registered and are being used in bad faith, due to:
(i) The Respondent has registered the domain names to re-direct them to the site <sisal.it> which appears to be a direct competitor of the Complainant (as proved through Annex 7).
(ii) When accessing on October 17, 2000, to the site <lottomatica.com>, the disputed domain names were being offered to sale or rental (see Annex 8).
(iii) The Site www.lottomatica.com offers the following message: "Visa and Mastercard anonymous credit cards issued by the Central Bank of Costa Rica" which is written in Italian language (Annex 9). This is considered as an intentionally attempt to attract for financial gain Internet users to the Sites of the Complainant and to mislead consumers, creating a likelihood of confusion with the Complainantís trademarks.
(iv) The sites <lottomatica.org> and <lottomatica.net> are not now in use (Annex 10).
(v) The registration of the domain names <lottomatica.com>, <lottomatica.org> and <lottomatica.net> cannot be due to chance.
(vi) The Respondent is also owner of domain names similar to renown Italian press agencies.
5.2. Respondent did not respond to the Complaint
Duly notified of the Complaint, the Respondent did not respond.
6. Discussion and Findings
The Policy sets forth in Paragraph 4 (a) the cumulative elements that the Complainant must prove in order to succeed in an administrative proceeding for abusive domain name registration and use. I shall examine each one of these elements in the following items:
"4(a)(i) Identity or Confusing Similarity"
The generic TLD ".com" cannot be taken into consideration as part of the comparison, since they do not give any particularity or difference to the domain names chosen by the registrant.
The particles used for the TLDs are of no relevance with respect to the question of the identity or confusing similarity. On the contrary, the point is to check whether there is a substantial identity between the words of the Complainantís trademarks and the Respondentís domain names. This substantiality can be deduced from different criteria. The case law on trademarks can be helpful in this respect. From an objective point of view the comparison must take into account the phonetic and graphical analysis, as well as the number of coincidences in the words to be compared. From a subjective point of view, the Panelist must focus the analysis in the part of the words to be compared, which is rather confusing by having used the same relevant distinctive sign.
Likewise, it can be considered as a notorious fact that there is a significant coincidence between the domain names at issue and the words that the Complainant used to form the trademarks, which are one of the legal bases of the actual proceeding, as well as the Complainantís corporate name.
As a result, it is beyond question that the trademarks "lottomatica", duly registered by the Complainant, are identical to the domain names <lottomatica.com>, <lottomatica.org> and <lottomatica.net>.
In conclusion, the requirement of Paragraph 4.a.(i) is met.
"4(a)(ii) Absence of Respondent Rights or Legitimate Interest in the Domain Names <lottomatica.com>, <lottomatica.org> and <lottomatica.net>
The domain name at issue does not coincide with the whole or either part of the Respondentís name, trademark, trade name or corporate name.
In addition, although the Respondent did have the chance to, the Respondent has not answered the Complaint. Accordingly, the Respondent has not submitted any evidence of legitimate interest or right in the domain names <lottomatica.com>, <lottomatica.org> and <lottomatica.net>.
If the Respondent have had any legitimate interest or right in the words forming the domain names <lottomatica.com>, <lottomatica.org> and <lottomatica.net>, he should have had an active disposition in order to defend such interests or rights. Since this is not the case and, on the contrary, the Complainant has proved sufficiently that it has registered the trademark "lottomatica" and has invested huge amounts of money in advertising, the Panelist must conclude that the Respondent has not any legitimate interest in the domain names <lottomatica.com>, <lottomatica.org> and <lottomatica.net>.
Furthermore, the Respondent has adopted a passive attitude regarding some of the domain names (specifically, <lottomatica.org> and <lottomatica.net>), whereas there is no serious purpose to undertake any trade or commercial activity related with the disputed domain names. In principle, the absence of this purpose should not be taken as an evidence that the Respondent has no legitimate interests or rights on the domain names. But together with other circumstances, such as the identity with Complainantís trademarks, and Complainantís reputation in the market, the conclusion can only be that the Respondent cannot defend any right or legitimate interest on the use or ownership of the domain names.
Moreover, the Complainant clearly states that the Respondent is not duly authorized, on the grounds of a license agreement or any other sort of right or entitlement, to use the name "lottomatica". The Respondent has no relationship at all with the legitimate owner of the rights related to the trademarks of the Complainant.
Therefore, the requirement of Paragraph 4(a)(ii) is met.
"4(a)(iii) Respondentís Registration and Use of the Domain Names in Bad Faith"
As to the bad faith requirement, it should be stressed that the Complainant is trademark holder of several trademark rights (see Annexes 3 and 4 of the Complaint).
The concept of bad faith has to be focused not only from a subjective, but also from an objective approach. It is not only the knowledge of the Respondent when purchasing domain names similar to relevant trademarks, it must also be decisive the sole fact of the continuous use of those domain names under conditions revealing that the Respondentís activity, both registration and actual use, cannot be allowed without at the same time causing a damage to a legitimate interest or to a potiur ius of a third party.
Due to the fact of the above-mentioned trademark registrations, the well-known name of the Complainantís trademarks and corporate name, it cannot be accepted that the Respondent did not know the name or trademark "lottomatica", either in the moment of purchasing the domain names at issue, or afterwards when using them. As a matter of fact, the site <lottomatica.com> appeared in Italian language, which can be interpreted as being directed to the Italian territorial scope. There must be a iuris tantum presumption that the Respondent is using the domain names in bad faith when the foregoing conditions, inter alia, are met. Otherwise it would be very difficult, almost impossible, for the Complainant to demonstrate the internal animus of the Respondent when registering the domain names, or when using them, and thus to demonstrate that an illegal activity has taken place. Another solution would mean for the Complainant a so-to-speak diabolical prove. Consequently, the burden of the proof must be for the Respondent to prove that he has purchased or is using the disputed domain names in good faith.
As a result, the Panelist comes to the conclusion that the Respondent was aware of Complainantís trademarks and corporate name when registering and using the disputed domain names <lottomatica.com>, <lottomatica.org> and <lottomatica.net>.
In the Complainantís opinion, the lack of use by the Respondent of the disputed domain name is an evidence of his bad faith. Annex 10 of the Complaint clearly shows that the Respondent does not use the Web Site of the domain names <lottomatica.org> and <lottomatica.net>. This kind of offer is something usual in the conflicts between domain names and trademarks.
According to previous decisions of the Center (see Decisions D2000-0018 Banco Español de Crédito, S.A. v. Miguel Duarte Perry Vidal Taveira; D2000-0020 Compagnie de Saint Gobain v. Com-Union Corp; D2000-0239 J. García Carrión, S.A. v. M™ José Catalán Frías and D2000-0277 Deutsche Bank AG v. Diego-Arturo Bruckner, inter alia), the use in bad faith of the Domain Name may be declared even if it has not been used at all, nor there are serious purposes thereto.
The Panel agrees with the argument that the Registrant is also using the domain names in bad faith by just using them in a passive way, that is, by not including any contents whatsoever within the Web Sites corresponding to the domain names at issue, since this sort of use eventually prevents the Complainant from making a legitimate use of them. Nevertheless, in my opinion this conclusion is valid as long as the rest of requirements, previously analysed, are met. The mere lack of use should not per se be considered as decisive to confirm Respondentís bad faith.
Therefore, the domain names <lottomatica.com>, <lottomatica.org> and <lottomatica.net> were registered and are being used in bad faith.
The Complainant has proved that the domain names are identical to its trademarks, that the Respondent has no rights or legitimate interest in the domain names at issue, and that the Respondent did register and use the domain names in bad faith. Therefore, according to Paragraphs 4 (i) of the Policy and 15 of the Rules, the Panel requires the registration of the domain names <lottomatica.com>, <lottomatica.org> and <lottomatica.net> to be transferred to the Complainant.
Jose Carlos Erdozain
Dated: June 5, 2001