WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

La Franšaise des Jeux v. EINFO Pty Limited

Case No. D2007-1101

 

1. The Parties

The Complainant is La Franšaise des Jeux, of France, represented by Inlex Conseil, of France.

The Respondent is EINFO Pty Limited, of Australia.

 

2. The Domain Names and Registrar

The disputed domain names, <instantloto.com>, <lotoaffiliate.com>, <loto-online.com>, <loto-result.com>, <lotoresult.info>, <lotoresult.net>, <lotoresults.info>, <loto-results.net>, <lotoresults.org>, <lotosyndicate.com>, <lotosyndicates.com>, <lototicket.info>, <lototicket.net>, <lototickets.info>, <lototickets.net>, <resultloto.info>, <resultloto.net>, <resultsloto.info>, <resultsloto.net>, <ticketloto.com>, and <videoloto.com>, are registered with Melbourne IT trading as Internet Names Worldwide.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2007. On August 1, 2007, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain names at issue. On August 14, 2007, Melbourne IT trading as Internet Names Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 23, 2007 showing that there is only one entity behind the two names for the Respondent. In response to a second notification by the Center that the Complaint was still administratively deficient, the Complainant filed a further amendment to the Complaint on December 17, 2007. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of 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”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 18, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Parties of Respondent’s default on January 9, 2008.

The Center appointed Dennis A. Foster as the sole panelist in this matter on March 17, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

Pursuant to the Complainant’s request, the Center notified the Complainant and the Respondent on August 24, 2007 that the administrative proceedings would be suspended. Subsequently, two additional suspensions were granted by the Center. After inquiry by the Center on November 20, 2007 as to the status of settlement negotiations between the Parties, the administrative proceedings were re-instituted on December 3, 2007. From December 17 to December 21, 2007, the Parties and the Center corresponded with respect to many issues surrounding the proceedings. On January 15, 2008 the Respondent sent to the Center notice of the Respondent’s consent to transfer four domain names requested by the Complainant; and on January 21, 2008 the Center sent to the Parties notification of another suspension in the proceedings. After receiving the Complainant’s request to withdraw four domain names <result-loto.com>, <affiliatesloto.com>, <affiliateloto.com> and <lotostatistics.com> from these administrative proceedings, the Center sent to the Parties on March 10, 2008 a notification of re-institution of these proceedings as to the twenty-one remaining domain names in question.

 

4. Factual Background

The Complainant is a French company that operates gambling services in France and its territories. Among other valid French Trademark Office (the “FTO”) trademarks, the Complainant owns an FTO registration for the trademark LOTO (Registration No. 1435425; April 23, 1983).

The Respondent registered the disputed domain names on either May 10 or May 11, 2006, respectively. The disputed domain names are used by the Respondent, an Australian entity, to redirect Internet users to the Respondent’s website, which offers links to gambling services that sometimes utilize French titles and/or wording.

 

5. Parties’ Contentions

A. Complainant

The Complainant is a quasi-public company operating in France and its overseas territories. It creates, develops and markets state-sponsored gambling games under the trademark LOTO within those geographical areas.

The Complainant owns a valid FTO registration for the mark LOTO as well as several other related trademarks that incorporate that main mark.

The Complainant also owns several domain names that relate to its trademark, including, among others, <loto.fr>, <loto.eu>, <loto.tv>, <super-loto.com> and <loto-france.com>. All of these domain names redirect Internet users to the Complainant’s main websites at <loto.fr> or <fdjeux.com>.

All of the disputed domain names are confusingly similar to the Complainant’s distinctive gambling-related trademark. Prior French court decisions have upheld the distinctiveness of the Complainant’s trademark. Mere addition of a descriptive word to the trademark does not reduce, but rather reinforces, the confusion and false connection between the domain names and said mark.

The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent owns no corresponding trademarks and has never been granted authority by the Complainant to use its trademark in any manner.

Gambling is strictly regulated in France, and the Complainant (partially owned by the French government) possesses the state monopoly in operating games of the sort provided by the Complainant in France and its overseas territories. Although the Complainant has no commercial relationship with the Respondent, the disputed domain names redirect consumers to a gambling website that is accessible in the French language. Such use is not a bona fide offering of services, since those services compete directly with those offered by the Complainant and employ the Complainant’s trademark.

The domain names in question were registered and are being used in bad faith. The Complainant’s trademark is exceedingly well known in France, and that notoriety could have been easily established by simple consultation with an Internet search. The Respondent uses the disputed domain names to directly compete with the Complainant. By use of the Complainant’s mark within those names, the Respondent seeks to suggest to the Internet user that there is an affiliation between the names and the Complainant’s services.

The Respondent, an Australian company, uses the English spelling, “Lotto,” on its website, but seeks to entice French-speaking consumers to participate in gambling activities through that site by using the French spelling “Loto” on the disputed domain names. The Respondent also reproduces several games titled in French that correspond to similar games offered by the Complainant at its website.

The Complainant sent the Respondent a cease and desist letter on September 5, 2006 with respect to the disputed domain names. The Respondent’s failure to respond is further evidence of bad faith registration and use of those names.

B. Respondent

The Respondent did not file a response to the Complainant’s contentions.

 

6. Discussion and Findings

Pursuant to paragraphs 4(a)(i)-(iii) of the Policy, the Complainant may succeed in these administrative proceedings and obtain possession of the disputed domain names, <instantloto.com>, <lotoaffiliate.com>, <loto-online.com>, <loto-result.com>, <lotoresult.info>, <lotoresult.net>, <lotoresults.info>, <loto-results.net>, <lotoresults.org>, <lotosyndicate.com>, <lotosyndicates.com>, <lototicket.info>, <lototicket.net>, <lototickets.info>, <lototickets.net>, <resultloto.info>, <resultloto.net>, <resultsloto.info>, <resultsloto.net>, <ticketloto.com>, and <videoloto.com>, if the Complainant can prove the following:

- The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- The Respondent has no rights or legitimate interests in respect of the disputed domain names; and

- The disputed domain names were registered and are being used by the Respondent in bad faith.

Because the Respondent declined to file a response in these proceedings, the Panel will accept all of the Complainant’s reasonable contentions as valid and draw all reasonable inferences from them. See Garage Records, Inc. v. Garage Records, NAF Case No. FA95071 (“As a result of the Respondent’s failure to respond, all reasonable inferences of fact in the Complaint will be deemed true.”); and Randstad General Partner (U.S.), LLC v. Domains For Sale For You, WIPO Case No. D2000-0051.

A. Identical or Confusingly Similar

The Panel has been supplied by the Complainant with compelling evidence of the registration of its trademark, LOTO, with the FTO (Annex G to the Complaint). Presented with similar evidence, several prior UDRP panels have concluded that the Complainant has valid rights in that mark for the purposes of the Policy. See, for example, La Franšaise des Jeux v. Mary Lin Telemarket Asia, WIPO Case No. D2005-0734; and La Franšaise des Jeux v. Elliott Stambouli, WIPO Case No. D2007-0345. The Panel discerns no reason to deviate from those prior rulings.

Each of the disputed domain names contains within it the Complainant’s full mark, LOTO. In addition to the mark, each such name also includes a descriptive term, i.e., “instant,” “affiliate,” “result,” “ticket,” etc. Subordinate to the distinctive mark LOTO, all of those terms merely suggest access to the activity with which that mark is closely associated, namely gambling. The additional terms are in no way suggestive of dissimilar goods or services. As a result, the Panel determines that the disputed domain names are confusingly similar to the Complainant’s trademark. See Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0624 (where the panel found the disputed domain name, <aventislottery.org>, to be confusingly similar to the trademark, AVENTIS); and Novell, Inc. v. Taeho Kim, NAF Case No. FA167964 (where the panel determined that <novellsolutions.com> was confusingly similar to the NOVELL mark).

In accordance with the above, the Panel finds that the Complainant has succeeded in showing that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant asserts, and the Panel accepts, that the Respondent had no authorization to use the Complainant’s trademark. Moreover, the Panel has already found, supra, that the disputed domain names are confusingly similar to that mark. These conclusions constitute a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. The burden then falls upon the Respondent to put forth evidence rebutting that case, otherwise the Respondent fails with respect to this issue. See Compagnie Generale des Matieres Nucleaires v. Greenpeace International, WIPO Case No. D2001-0376; and AOL LLC v. Gerberg, NAF Case No. FA780200 (“Complainant must first make a prima faci[e] showing that the Respondent does not have rights or legitimate interests in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”)

In the absence of a filing by the Respondent, the Panel will examine other aspects of the record to determine whether the criteria listed in paragraph 4(c) of the Policy apply in the Respondent’s favor regarding such a rebuttal. Clearly, paragraph 4(c)(ii) fails to apply because Respondent’s name does not remotely resemble any of the disputed domain names. Moreover, Respondent’s use of the disputed domain names to resolve to its website, which promotes gambling activities, fails to meet the requirements of paragraph 4(c)(iii), because that business use is patently not a “noncommercial or fair use” of those names. Finally, Respondent’s actions – competing directly with the Complainant’s services based on a banner that incorporates the Complainant’s trademark – do not meet the standard of a “bona fide offering of goods and services” per paragraph 4(c)(i), as that standard has been articulated by numerous previous Policy panels. See, for example, Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037 (where the panel found that the respondent’s attempt to sell medicines using a disputed domain name confusingly similar to the complainant’s trademark, also used for the sale of medicines, “was not a ‘bona fide offering of goods or services within the meaning paragraph of 4(c)(i) of the Policy”); and Instron Corporation v. Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t, NAF Case No. FA768859. Therefore, as the Panel finds no rationale to support a rebuttal of the Complainant’s prima facie case, that case prevails on this issue.

In conclusion, the Panel finds that the Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four circumstances which, if any one is found to be true by the Panel, would provide sufficient grounds for a finding of bad faith registration and use of the disputed domain names. The circumstances are:

(i) circumstances indicating that you 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 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 concludes that paragraph 4(b)(iv) clearly applies to the Respondent’s conduct. The Respondent has employed the Complainant’s trademark within the disputed domain names intentionally to attract Internet users to its website. The Respondent’s actions were particularly insidious in this case since it was aware that the lottery form of gambling is commonly abbreviated as “loto” in French, as opposed to “lotto” in English. Thus, the English-speaking Respondent wanted to attract French gamblers to its otherwise Australian-based website by use of the Complainant’s French trademark, LOTO, supplementing that deception by use of additional French phrases in connection with the various lottery options made available at the website. The Respondent knew that confusion with the Complainant’s French government sanctioned services would be inevitable and would inure to the Respondent’s commercial gain. For prior UDRP cases supporting the Panel’s reasoning, see Mostchoice.com Inc. v. Xianqing Zhu c/o Most choice.com, Inc., NAF Case No. FA424540 (“Respondent is using [... ] [the disputed] domain name to ensnare unsuspecting Internet users. Respondent then redirects the users to its commercial website. The Panel infers that Respondent profits from this diversion. Such infringement is […] evidence that Respondent registered and used the domain name in bad faith under Policy [paragraph] 4(b)(iv).”); and Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, supra.

As a result, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <instantloto.com>, <lotoaffiliate.com>, <loto-online.com>, <loto-result.com>, <lotoresult.info>, <lotoresult.net>, <lotoresults.info>, <loto-results.net>, <lotoresults.org>, <lotosyndicate.com>, <lotosyndicates.com>, <lototicket.info>, <lototicket.net>, <lototickets.info>, <lototickets.net>, <resultloto.info>, <resultloto.net>, <resultsloto.info>, <resultsloto.net>, <ticketloto.com>, and <videoloto.com>, be transferred to the Complainant.


Dennis A. Foster
Sole Panelist

Dated: March 31, 2008