The Complainant is LA FRANCAISE DES JEUX, of Billancourt, France, represented by INLEX IP EXPERTISE, of France.
The Respondent is Intercoastal Business Ltd, Godefridus Konings, of Tortola, British Virgin Islands Overseas territory of the United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <francaisejeux.com> (the “Domain Name”) is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2008. On November 20, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed Domain Name. On November 20, 2008 eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center sent an email communication to the Complainant on November 25, 2008 providing the correct Registrar contact details and requesting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 2, 2008 to correct the Registrar contact data as provided in the Complaint. 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” or “UDRP”), 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 2, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 23, 2008.
The Center appointed Luca Barbero as the sole panelist in this matter on January 6, 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.
The Complainant, LA FRANCAISE DES JEUX, is the “French lottery of State” which creates, develops and markets lottery and sports-betting games through France and in the French overseas departments and territories.
The Complainant is the owner of trademarks LA FRANCAISE DES JEUX in France and in Europe including the following trademarks:
- Trademark FRANCAISE DES JEUX registration (word and device) No. 98754463 of October 15, 1998;
- Trademark LA FRANCAISE DES JEUX registration (word and device) No. 1711330 of December 12, 1991,
- Trademark LA FRANCAISE DES JEUX registration No. 1759491 of February 27, 1991
- Trademark LA FRANCAISE DES JEUX application No. 06356497 of October 11, 2007.
The Complainant is the owner of several domain names which are redirected on the website of LA FRANCAISE DES JEUX such as <francaisedesjeux.biz>, <francaisedesjeux.info>, <francaisedesjeux.eu>, <francaisedesjeux.net>, <francaisedesjeux.tv>, <francaisedesjeux.fr>, <francaisedesjeux.org>, <francaisedesjeux.com>, <francaisedesjeux.mobi>, <francaise-des-jeux.eu>, <francaise-des-jeux.fr>, <francaise-des-jeux.com>, <francaise-des-jeux.org>, <francaise-des-jeux.net>, <françaisedesjeux.com>, <française-des-jeux.com>, <lafrancaisedesjeux.eu>, <lafrancaisedesjeux.fr>, <lafrancaisedesjeux.net>, <lafrancaisedesjeux.com>, <lafrancaisedesjeux.org>, <lafrancaisedesjeux.tv>, <la-francaise-des-jeux.com>, <la-francaise-des-jeux.eu>, <la-francaise-des-jeux.tv>, <la-francaise-des-jeux.fr>, <la-francaise-des-jeux.org>, <lafrançaisedesjeux.com>.
The Respondent registered the Domain Name <francaisejeux.com> on January 13, 2005.
The Complainant highlights that a cease and desist letter was sent to the Respondent requesting the transfer of the Domain Name to the Complaint but the Respondent replied indicating that the Domain Name was used in good faith and that he has no intention to damage another company. The Complainant underlines that in the same response the Respondent then offered to sell the Domain Name for EUR 1500.
The Complainant contends that the authorized representative replied to the Respondent, on March 3, 2008, arguing that the Domain Name had been registered without any interest and asking again to transfer the Domain Name, providing the Panel with copy of the correspondence exchanged.
The Complainant alleges that the Domain Name is confusingly similar to its trademarks and domain names and constitutes a case of typosquatting since there is only three different letters between the Domain Name and the trademark LA FRANCAISE DES JEUX. The Complainant informs the Panel that the letters “des” in France have a minor place in the pronunciation, “des” being the equivalent in English of the article “of”.
With reference to rights or legitimate interests in respect of the Domain Name, the Complainant asserts that the trademark FRANCAISE DES JEUX, which is used for over 17 years, is well known in France as well as the websites “www.francaisedesjeux.com” and “www.fdjeux.com”.
The Complainant contends that, to the best of the Complainant knowledge, the Respondent has no right or legitimate interest in the Domain Name nor has the Respondent trademark registrations or common law rights in the Domain Name.
The Complainant emphasizes that the Respondent is not making a noncommercial or fair use of the Domain Name or a bona fide commercial use of the disputed Domain Name but is using the corresponding website as a parking page.
The Complainant asserts that the Respondent has not been licensed or otherwise authorized by the Complainant in any way to use the FRANCAISE DES JEUX trademark and that there is no relationship between the Complainant and the Respondent.
The Complainant states that the Respondent is also using the disputed Domain Name to redirect Internet users to a parking page in German language. The Complainant underlines that a warning appears on the website indicating that the owner of the Domain Name could sell it to anyone by making an offer.
With reference to the circumstances evidencing bad faith, the Complainant contends that the trademark LA FRANCAISE DES JEUX is well known in France and via the Internet all over the world.
The Complainant further states that the word francaisejeuxis a fanciful word that refers exclusively to the company name of the Complainant.
According to the Complainant, it is obvious that the reservation of <francaisejeux.com> has not been made by chance but with the intention to imitate the domain names of the Complainant.
The Complainant contends that the website corresponding to the Domain Name is a parking website in German language with commercial links dedicated to games on line. Furthermore, the Complainant highlights that this parking site proposes a link to
“scratch2cash.com”, which is a website dedicated to games on line. The Complainant deduces that the Domain Name has clearly been reserved to create traffic and attract customers.
The Complainant alleges that these elements obviously show that the activity of the website does not exist, so there is in fact no interest to own this domain name and that this cannot be considered as a bona fide exploitation of the domain name because, it is obvious that the domain name will conduct the consumer to believe that the websites have a link with LA FRANCAISE DES JEUX and the French State.
The Complainant alleges that the Respondent offered the Domain Name for sale for EUR 1500 demonstrating to have reserved the Domain Name just to have the opportunity to sell it and without honest intention to use it but to attract the consumer onto his website with intent for commercial gain.
The Complainant emphasizes that such use of the Domain Name tarnishes the Complainant's mark.
The Respondent did not reply to the Complainant's contentions.
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
The Complainant has provided evidence of ownership of the trademark FRANCAISE DES JEUX.
The Panel finds that the Domain Name is confusingly similar to the trade mark owned by the Complainant. Indeed the mere deletion of the word “des” which is the French translation of the preposition “of” is not sufficient to exclude the confusion between the Domain Name and the Complainant's trade mark.
As stated in Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Montecarlo Online Casino (MOC) WIPO Case No. D2005-0338. “The disputed domain name incorporates the two nouns of Complainant's trademark MONTE-CARLO and CASINO, the combination of which is distinctive for, and immediately brings to mind Complainant's business activities. These two nouns are clearly the most distinctive part both in Complainant's trademark and the domain name at issue. The preposition de has little distinguishing effect, and even more so the omission of it in the domain name at issue.”
See also a WIPO UDRP decision involving the Complainant La Française des Jeux v. Mark L Virgi, WIPO Case No. D2006-0283 where the panel stated that “this is a case of typosquatting where the domain name is a slight alphabetical variation of a mark which is widely known, at least among the French speaking public, which adds to a finding of confusing similarity between the disputed domain name and the Complainant's trademark. It has been stated in several decisions by prior WIPO UDRP panels that typosquatting can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark”.
In comparing the Complainant's marks to the Domain Name with reference to <françaisejeux.com > the panel takes into account the well-established principle that the generic top level domain may be excluded from consideration as being merely a functional component of a domain name. See inter alia, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 “the specific top level of the domain name such as ‘.net' or ‘.com' does not affect the domain name for the purpose of determining whether it is identical or confusingly similar”; Chevy Chase Bank, F.S.B. v. Peter Ojo, WIPO Case No. D2000-1770 “the accused domain name <chevychasebank.org> is legally identical to Complainant's trade name CHEVY CHASE BANK”).
In view of the above, the Panel finds that the Complainant has proven that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent may establish a right or legitimate interest in the Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(i) that it has made 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 prior to the dispute; or
(ii) that it is commonly known by the Domain Name, even if he has not acquired any trademark rights; or
(iii) that it intends to make a legitimate, noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent's rights or legitimate interests in respect of the Domain Name according to paragraph 4(a) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, it is sufficient that the Complainant shows a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name in order to shift the burden of proof on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the Domain Name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Met America Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. 852581).
In the case at hand, by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Name.
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant's trademarks.
Furthermore, there is no indication before the Panel that the Respondent is commonly known by the disputed Domain Name, has made preparations to use the disputed Domain Name in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, noncommercial or fair use of the disputed Domain Name and the Respondent has not provided in the Response any convincing evidence to the contrary.
The Panel notes that the disputed Domain Name was at the time of the filing of the Complaint pointing to a sponsored pay-per-click (“PPC”) website mainly aimed at directing visitors to competing third party commercial websites.
The Panel finds that under the circumstances the use of the disputed Domain Name merely for a PPC page which directs visitors to various third party commercial websites does not constitute a legitimate, noncommercial use of the disputed Domain Name under the Policy. See e.g. Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044. See also, Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name, in accordance with paragraph 4(a)(ii) of the Policy.
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the holder has registered or has 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 the holder's documented out-of-pocket costs directly related to the Domain Name; or
(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the holder's website or location or of a product or service on the holder's website or location.
As to bad faith at the time of the registration the Panel notes that in light of the well known character of the Complainant's trademarks, the Respondent was likely aware of the Complainant's trademark.
As in Gateway, Inc. v. Lorna Kang WIPO Case No. D2003-0257, this Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks. As stated inter alia in DHL Operations B.V v. Net Marketing Group, WIPO Case No. D2005-0868 “It is obvious that the value and goodwill, of the Complainant's mark DHL which has an extensive world wide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”.
The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that knowledge of the Complainant's trademark at the time of the registration of the Domain Name is to be considered in drawing an inference of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
As additional circumstance of bad faith, the Respondent has simply deleted the word “des” to Complainant's FRANCAISE DES JEUX trademark. The Panel finds that this typosquatting should be regarded as a clear circumstance evidencing the Respondent's bad faith at the time of the registration (Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286; National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011; Bell Gardens Bicycle Club dba The Bicycle Casino (“TBC”) v. Craig Miller, WIPO Case No. D2006-0536 (stating that “in the present case, in the absence of any Response, the Panel is satisfied that the Respondent has engaged in flagrant typosquatting which is exactly the sort of abusive conduct to which the Policy is directed”).
The Panel finds that in light of the content of the correspondence attached to the Complaint, the Domain Name was also registered for the purpose of selling it to the Complainant for an amount well in excess of the documented out-of-pockets costs. Indeed the Respondent offered to assign the Domain Name for EUR 1500 amount that is certainly well over any out of pocket costs directly related to the Domain Name.
In view of the above, the Panel deems paragraph 4(b)(i) of the Policy applicable to the present case.
The Panel finds that Internet users, in light of the fact that the disputed Domain Name was at the time of the filing of the Complaint pointing to a sponsored pay-per-click website aimed only at directing visitors to competing third party commercial websites; may be misled on the source, sponsorship, affiliation, or endorsement of the Respondent's website. Moreover, in all likelihood, the Respondent profits by earning pay per click revenues (see inter alia Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044; Fry's Electronics, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1435; Barry D. Sears, Ph.D. supra.
The Panel therefore finds paragraph 4(b)(iv) of the Policy to be also applicable in this case since the Respondent has attempted (and probably succeeded) to attract Internet users to a website for commercial gain, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's services.
In view of the above, the Panel finds that the disputed Domain Name was registered and is being used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <francaisejeux.com> be transferred to the Complainant.
Dated: January 22, 2009