WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
La Française des Jeux v Tavenost Voyeurism Inc
Case No. D2002-0439
1. The Parties
The Complainant is La Française des Jeux of 5-7 rue Beffroy, 92523 Neuilly sur Seine cedex, France.
The Respondent is Tavernost Voyeurism Inc of 1 Aloha Tower Drive, Box #110, Honolulu, Hawai 96813, United States of America.
2. The Domain Name and Registrar
The domain names on which the Complaint are based are <fdjeu.com> and <fdjeu.net>.
The registrar with which the domain names are registered is Innerwise, Inc, D/B/A ItsYourDomain.com.
3. Procedural History
3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 ("the Policy") in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 ("the Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
3.2 The Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") on May 6, 2002, by email and on May 7, 2002, in hardcopy.
3.3 On May 10, 2002, the Center requested verification of the registration from the Registrar and this verification was received on May 21, 2002.
3.4 On May 2, 2002, the Center completed its "Formal Requirements Compliance Checklist" and notified the Respondent of the Complaint, together with a copy of the Complaint and attachments by post-courier and by email (without enclosures).
3.5 Having received no response from the Respondent within the specified time in the Notification of Complaint, the Center issued a Notification of Respondent Default on June 20, 2001.
3.6 On June 28, 2002, having received the necessary acceptance and declaration of impartiality, the Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date. The notification informed the parties that the Administrative Panel would be composed of Staniforth Ricketson, with a projected decision deadline of July 12, 2002. Due to the unexpected illness of the Panel member, the date of the decision has been delayed until the present date.
3.7 The Panel finds that, throughout the above administrative stages, there has been compliance with the requirements of the Policy, Rules and Supplemental Rules and that the language of the proceeding is English (paragraph 11(a), Policy).
4. Factual Background
4.1 The following facts taken from the Complaint can be taken as established, in the absence of a Response.
4.2 The Complainant is a semi-public French company which is 72% owned by the French government. Its principal activity is organizing and operating the national French lottery.
4.3 On September 22, 2000, the Complainant registered the domain name <fdjeux.com> as "a platform for its Internet based gaming services" and on October 23, 2000, it registered the domain name <fdjeux.net> (Annexes A5 and A6). The Complainant launched its principal online gaming site at <www.fdjeux.com> on June 5, 2002 (Annex A7). After subscribing to the Complainantís online gaming services, users then access these services by going to <www.fdjeux.com> and clicking on the various gaming links which are configured to point to its second website, www.fdjeux.net, which supports these services and which is based on a more secure server.
4.4 The Complainant has filed several Community trade mark applications for both "fdjeux" and "fdjeux.com" in respect of classes 9,16, 18, 25, 34, 38 and 41 (Annexes A8 and A). These were filed on February 9, 2001, and the first was to be published on May 6, 2002, while the second was published on April 2, 2002. It can be taken that neither application has been granted at the time of the making of the Complaint.
4.5 The Complainant also provides evidence of the use of the above trade marks on its online gaming websites, noting, for example, that for January 2002, there were 378,000 visitors to the site <fdjeux.com> and 100,900 to <fdjeux.net> (Annex A12), and that for the period April 27, 2001, to March 4, 2002, there were 19,145 subscribers to its website (Annex A13).
4.6 In addition, the Complainant is the registrant of 83 domain names that incorporate or are similar to the trade marks "FDJEUX" and "FDJEUX.COM" or which are used in the Complainantís online gaming services (Annex A14). These marks have also been used on the Complainantís letter head (Annex A15), in promotional material (Annex A17), on television (Annex A19) and in promotions on third party websites (Annex 20).
4.7 The disputed domain names were registered on June 8, 2001, (<fdjeu.com>) and June 13, 2001, (fdjeu.net>) (Annexes A2 and A3, WHOIS searches).
4.8 The Complainant became aware of the "misuse of its trade marks" when it discovered that these domain names were pointing to the URL: www.windowscasino.com, which offers online gaming services of the same kind as the complainant (Annex A22 for printout made in March 2002 of Windows Casino webpage). The domain names have now been reconfigured to point to point to the URL www.casinotropez.com, which offers similar services (Annexes A23 and A24 for printouts of these webpages, taken in April, 2002). The effect of these configurations and reconfigurations is that users who type the disputed domains into their web browser will be automatically forwarded to these sites.
4.9 There is no mention in the Complaint of whether there have been attempts to communicate with the Respondent to request transfer of the disputed domain names to the Complainant, but such attempts are not a prerequisite to the bringing of an administrative proceeding under the Policy.
5. Partiesí Contentions
The Complainant seeks transfer of the disputed domain names to it, and in support of this contention addresses each of the elements described in paragraph 4(a) of the Policy as follows.
- With respect to the element described in paragraph 4(a)(i), the Complainant submits that it has the necessary "trade mark" rights for the purposes of this sub-paragraph, pointing here to its pending trade mark applications for registration of the marks "FDJEUX" and "FDJEUX.COM" as well as to the evidence of use and reputation in relation to these as unregistered marks. As to the question of whether the disputed domain names are identical or confusingly similar to these marks, the Complainant argues that it is permissible to disregard prefixes such as www. and suffixes such as ".com" and ".net". It submits further that the minor omissions of the single letter "x" in each of the domain names are insufficient to destroy the similarity between them and the marks. In this regard, it makes three points: (i) that the visual similarity is not changed by the mere omission of the final letter "x"; (ii) the absence of this does not change the phonetically similar nature of these terms; and (iii) "jeux" is the plural form of "jeu" which means "game" in French. Accordingly, the likelihood of Internet users typing in "fdjeu" rather than "fdjeux" will be very high. The Complainant then cites a number of prior Panel decisions in which confusing similarity has been held to arise where there have been similar small discrepancies between marks and disputed domain names.
- With respect to the element described in paragraph 4(a)(ii), the Complainant submits that there is no evidence of any right or legitimate interest by the Respondent in the domain names. It states that it has not licensed, authorized or otherwise permitted the Respondent to use its name or any of its trade marks or similar name or mark, and that it has not licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating any of those marks. It notes that its own trade mark applications precede the registration of the disputed domains and that its own domain names were registered at an even earlier date. While the disputed domain names point to the Respondentís websites, which offer online gaming services, the Complainant submits that the Respondent was and is not using these domain names in a legitimate way where this usage consists of the "misappropriation of a competitorís trade marks and brand". In this regard, it argues that "bona fideí has the dictionary meaning of "genuine" and "real", and this cannot be said to be happening here where the Respondent has registered domain names based on the Complainantís trade marks by altering them so as to divert users to its own gaming sites.
- With respect to the element described in paragraph 4(a)(iii) of the Policy, the Complainant submits that the domain names were registered and used in bad faith. So far as registration is concerned, it points to the following:
- the Respondentís registration of the domain names (June 8 and 13, 2001) took place only days after the complainant began operating its online gaming website (June 5, 2001);
- the word "fdjeux" is not at all generic, but is unique to the Complainant, the "fd" being the abbreviation of the words "Francaises Des" (the first part of the Complainantís corporate name) and "fdjeux" being an abbreviation of the whole of that name;
- the act of registering a slightly misspelt version of the Complainantís trade marks indicates a deliberate strategy to take advantage of the Complainantís reputation and goodwill for it own benefit.
- This is "typosquatting" which has previously been accepted as bad faith registration and use for the purposes of paragraph 4(a)(iii): see, for example, Netscape Communications Corp v Stonybrook Investments Ltd, WIPO Case No D2001-0328, (May 1, 2001).
So far as use in bad faith is concerned, the Complainant points to the following:
- The fact that the Respondent is being remunerated for pointing the disputed domain names to the Casino Tropez and Windows Casino websites, both of which have affiliate programs whereby website operators are remunerated for promoting these online casinos (Annex A26). By using confusingly domain names to direct users to these websites, the Complainant argues that the Respondentís conduct falls within the circumstances described in paragraph 4(b)(iv);
- That this conduct also falls within the circumstances outlined in paragraph 4(a)(ii), on the basis that the "pattern" of conduct required here is satisfied by the two successive registrations as well as the two successive websites to which these names have pointed (relying here on Oxford English Dictionary definitions of "pattern"). In addition, it adduces some evidence of similar conduct by the Complainant in respect of its registration of the domain name www.loftstory.com (Annex 28), which is the same as a famous French television show, Loftstory. In support of the allegation of bad faith behaviour here, the Complainant points to the Respondentís corporate name, which is a play on the name of the President of French Channel M6, which broadcasts the TV show (Annex A29). The Complainant asserts that this is another instance of "typosquatting" Ė <loftstory.com> and "Loft Story" (the name of the TV show) - and reinforces its contention that the Respondent has engaged in a "pattern" of such conduct.
- That the Respondentís conduct also comes within the circumstances described in paragraph 4(b)(iii), namely that the purpose of its registration and use of the domain names has been primarily for the purpose of disrupting the business of a competitor. In this regard, it draws attention to the fact that both the Complainant and Respondent are competitors in the provision of online gaming services, and it repeats its allegations about the confusion to users when they visit the Respondentís websites, thinking that they are in fact visiting those of the Complainant, with the subsequent damage that this may do to the Complainantís goodwill and reputation.
As noted above, the Respondent has not filed a Response to the Complaint. Under para 5(e) of the Rules, it is provided that if a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the Complaint. As no exceptional circumstances have been brought to the Panelís attention, it proceeds to make the findings below on the basis of the material contained in the Complaint. Furthermore, under paragraph 14(b) of the Rules, when a party defaults in complying with any of the requirements of the Rules, in the absence of exceptional circumstances, the Panel is entitled to "draw such inferences therefrom as it considers appropriate".
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant has the burden of demonstrating three elements.
6.1 That the complainant has rights in a trade or service mark with which the respondentís domain name is identical or confusingly similar
As noted in paragraph 4.4 above, the Complainant has provided evidence of its Community trade mark applications and has argued that these provide a basis for showing that it has "rights" in a trade or service mark for the purposes of this sub-paragraph. In support of this contention, it refers to two earlier online decisions: Worldblackbet Inc v Nationwide Communications, Case No AF-0881, e-Resolution August 2, 2001, and Naturalwood Home Furnishings Inc v The Sofa Factory Inc Case No AF-021, e-Resolution, August 13, 2001. In both these cases, however, there was also some evidence of user of the marks in question, and the same is true in the present case. The Panel is therefore not prepared to accept the bold proposition that the making of a trade mark application on its own is sufficient to satisfy the requirements of paragraph 4(a)(i), but finds that there is sufficient evidence of the Complainantís use of its marks to satisfy it that the Complainant has "rights" in an unregistered trade or service mark.
The next question is whether the disputed domain name is confusingly similar to the Complainantís marks. In this regard, there is a small difference in the spelling or misspelling of the domain names, with the absence of the letter "x", and the addition of the appendages ".com" and ".net" in the domain names. Accordingly, the appearance and sound of the marks "FDJEUX" and FDEJEUX.COM, on the one hand, and "FDJEU.COM" and "FDJEU.NET", on the other hand, are very close: see here the Complainantís submissions outlined above in paragraph 5A. There are a number of earlier decisions in which Panels have found confusing similarity where there have been similar small differences between domain names and trade or service marks and where the addition of the suffix .com has been found to make no difference to the creation of such confusing similarity: World Wrestling Federation Entertainment Inc v Michael Bosman, WIPO Case No D1999-0001 (January 14, 2000) (<worldwrestlingfederation.com> and <world wrestling federation>) and InfoSpace.com, Inc v Registrar Administrator Lew Blank, WIPO Case No D2000-0069 (April 3, 2000) (<infospaces.com> and infospace). Other illustrative decisions are: Encyclopedia Britannica, Inc. v. John Zuccarini WIPO Case No D2000-0330 (concerning <encyclopediabrittanica.com>, <brtanica.com>,<bitannica.com>, and <britannca.com>), Nicole Kidman v. John Zuccarni, d/b/a Cupcake Party WIPO Case No D2000-1415 (concerning <nicholekidman.com> and <nicolekidmannude.com>), Hewlett-Packard Co. v. Cupcake City File No FA000200093562 (concerning <hewlittpackard.com>); Telstra Corporation Ltd v David Whittle, WIPO Case No D2001-0434, May 11, 2001; Google Inc v Namerental.com and Leonard Bensonoff, WIPO Case No D2001-0060, February 27, 2001. Each case, of course, turns upon its own facts, but in the present proceeding the Panel has no difficulty in accepting the Complainantís submissions that the disputed domain names <fdjeu.com> and <fdjeu.net> are confusingly similar to the "FDJEUX" and "FDJEUX.COM" marks, and that the requirements of paragraph 4(a)(i) have been satisfied.
6.2 That the Respondents must be shown to have no rights or legitimate interests in the Domain Name
Paragraph 4(c) of the Policy sets out certain matters to which a Respondent can point as demonstrating rights or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii). These include:
"(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
In the present proceeding, the Panel accepts the Complainantís submissions that there is no evidence of circumstances that would constitute rights or legitimate interests on the Respondentís part in the disputed domain names. There is no evidence that the Complainant has ever consented to or authorized the registration or use of the domain names or that the Respondent has ever been known by such a name (as specified in sub-paragraph 4(c)(ii)).
The Panel also accepts the Complainantís submissions that the Respondentís use of the domain name in relation to online gaming services has not been a bona fide use in relation to these services (sub-paragraph 4(c)(i)). Such use only came after the Complainant launched its online gaming website; moreover, the use of the domain names to point to or resolve to other websites offering online gaming services under other names can hardly be regarded as a genuine or real use of the domain names: see further America Online Inc v Tencent Communications Corporations, Case No NAF-FA0093668, March 21, 2000.
Finally, there is no evidence before the Panel that indicates whether any of the factors referred to in subparagraph 4(c)(iii) are applicable.
The matters referred to in paragraph 4(c) are not an exhaustive statement of what may constitute rights or legitimate interests in a domain name, and it is therefore open to a Respondent to point to other evidence that may show this. In the present proceeding, there has been no Response or evidence presented by the Respondent, and the Panel, under Paragraph 14(b) of the Rules, is entitled to draw from such default such inferences as it considers appropriate. The Panel therefore concludes that the Complainant has established this element of Paragraph 4(a) of the Policy, namely that the Respondent has no rights or legitimate interests in the disputed domain name.
6.3 That the Respondent registered and is using the Domain Name in bad faith
Paragraph 4(b) of the Policy lists certain factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This is not an exclusive list, and includes:
"(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(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 complainantís 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."
It will be noted that, under paragraph 4(a)(iii) of the Policy, both registration and use of the domain name in bad faith are required. Of the factors listed in paragraph 4(b) above, (i)-(iii) relate specifically to registration (and acquisition) of the name, while (iv) relates to use following registration. However, in view of the fact that these factors are stated to be inclusive, it follows that there can be other factors that can be relied upon to point to bad faith, both in registration and in use. In this regard, it is worth noting an early decision of an Administrative Panel to the effect that registration in bad faith followed by a passive holding of a domain name can amount to use in bad faith when it appears that there is no way in which such a name could ever be used legitimately in relation to a business or offering of goods or services and the identity of the Respondent remains unknown: Telstra Corporation Ltd v Nuclear Marshmallows WIPO Case D2000-0003. In addition, it would be both mistaken and artificial to confine paragraphs (i)-(iii) solely to the time of registration: presumably, it would also be a use of a disputed domain name in bad faith to do so, after registration, with one of the purposes outlined in those paragraphs. Support for this view is to be found in several early Panel decisions: see, for example, Estee Lauder Inc v estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No 2000-0869 and E & J Gallo Winery v Hanna Law Firm, WIPO Case D2000-0615.
In the light of the above, the Complainant contends that the circumstances set out in each of subparagraphs (ii)-(iv) are present. As the evidence supporting these different grounds tends to merge, the Panel makes the following findings:
(i) The timing of the Respondentís registrations of its domain names, coupled with the minor spelling changes, make it possible to infer that these were done with the intentions variously referred to in sub-paragraphs 4(b)(ii)-(iv).
(ii) Although two such registrations is obviously the most minimal evidence that can be adduced of a "pattern of conduct" for the purposes of sub-paragraph 4(b)(ii), the third instance of "Loftstory" provided by the Complainant is sufficient to confirm that the Respondent has indeed engaged in such a pattern of conduct.
(iii) The Respondentís use of the disputed domain names to point to other gaming websites is sufficient evidence of the circumstances referred to in both sub-paragraphs 4(b)(iii) and (iv). Given that the Respondent has not filed a Response in the proceeding, the Panel is fully justified in drawing an adverse inference to the Respondent on these matters.
(iv) Accordingly, the Panel finds that the Complainant has satisfied this element of paragraph 4(a), namely that the Respondent has registered and used the disputed domain names in bad faith.
The Panel finds that the Complainant has established its case with respect to each of the elements stated in paragraph 4(a) of the Policy.
The Administrative Panel accordingly directs that the registration of the domain names <fdjeu.com> and <fdjeu.net> should be transferred to the Complainant.
Dated: July 14, 200