1.1 The Complainant is La Francaise des Jeux of Boulogne-Billancourt, France, represented by Inlex IP Expertise, France.
1.2 The Respondent is Johan Larsson of Gavle, Sweden.
2.1 The disputed domain names <fdjbet.com>, <fdjbets.com>, <fdjbingo.com>, <fdjcasino.com>, <fdjeuxbet.com>, <fdjeuxbets.com>, <fdjeuxbingo.com>, <fdjeuxsport.com>, <fdjeuxsports.com>, <fdjsport.com>, and <fdjsports.com> (the “Domain Names”) are registered with GoDaddy.com, Inc (the “Registrar”).
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2009. On April 9, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 9, 2009, the Registrar 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 verified that 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”).
3.2 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 April 20, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 11, 2009.
3.3 The Center appointed Matthew S. Harris as the sole panelist in this matter on May 18, 2009. 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.
4.1 The Complainant is a semi-public stock company having its principle place of business in France, and is majority owned by the French state. It operates the French state lottery and holds a legal monopoly over the operation of lotteries in that country. Its activities also extend to the development and marketing of “sports-betting games”.
4.2 The Complainant holds numerous trade marks. The marks specifically identified by the Complainant in the body of the Complaint include:
(i) French trade mark no. 3407774 filed on February 3, 2006 in classes 9, 16, 28, 38 and 41 for the word FDJEUX.
(ii) Community Trade Mark no. 002082212 filed on February 9, 2001 in classes 9, 16, 18, 25, 34, 38 and 41 in the following form:
(iii) Community Trade Mark no. 002946192 filed on November 25, 2002 in classes 9, 12, 14, 21, 28, 35, 37 and 41 in the following form:
4.3 The Complainant also holds various domain names which incorporate or comprise the terms “fdjeux” or “fdj” in combination with various ccTLDs and gTLDs.
4.4 The Respondent is an individual located in Sweden.
4.5 The Domain Names were all registered on March 16, 2009.
4.6 On March 24, 2009 the Complainant's lawyers sent an email to the Respondent claiming that the “reservation” and use of the Domain Names by the Respondent “constitute[d] fraudulent and counterfeiting acts which are prohibited by law” and demanding the transfer of the domain names to the Complainant.
4.7 The Respondent immediately responded by email in the following terms:
“Let lawyers makes [sic] some money! take me to court.”
4.8 Since the date of registration or at least shortly thereafter the Domain Names have been parked with the Registrar's parking service. As a consequence pages operating from the Domain Names contain various “sponsored listings” and “related searches” links. These pages continue to operate as at the date of this decision. Some, but not all, of the links that appear on these parking pages relate to gambling and lottery websites.
5.1 The Complainant refers to its trade marks and domain name registrations. It also claims that it is “using widely the letters FDJ as a commercial name for its activities”.
5.2 The Complainant further contends that the Domain Names are “visually, phonetically and intellectually almost identical to the Complainant's trademarks, domain names and commercial name”. In this respect it asserts that FDJ is a common abbreviation of the name of the Complainant and “could not have been chosen randomly”. Further it contends that insofar as the registration of domain names “constitute cybersquatting, then the [domain names] at issue are, by definition, confusingly similar to the Complainant's trademark”. It cites in this respect Dow Jones & Co. v. Poerclick Inc, WIPO Case No. D2000-1259 and La Francaise des Jeux v. Intercoastal Business, WIPO Case No. D2008-1784.
5.3 So far as rights or legitimate interests are concerned, the Complainant claims to have no knowledge of the Respondent having any legitimate interest in the Domain Names and that the Respondent has no trade mark registrations or common law rights that correspond to any of the Domain Names. It also asserts that the Respondent is not making any bona fide commercial use of the Domains Names, which are simply being used to generate internet traffic to the links that appear on the web pages operating from the Domain Names.
5.4 It further contends that the Domain Names were registered with the intention of imitating the domain names of the Complainant and to lead consumers to believe that the Domain Names are connected with the Complainant. From this it is said that it “can be deduced that the real intention of the [Respondent] from the beginning is to profit from the likelihood of confusion”.
5.5 Lastly, it is claimed that the Respondent's response to the Complainant's lawyers' letter before action also evidences bad faith. It is claimed that he refused “to enter into any reasonable settlement” and that “he knows how much it costs to legally obtain the transfer of domain names”.
5.6 The Respondent did not reply to the Complainant's contentions.
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names (paragraph 4(a)(ii)); and
(iii) the Domain Names have been registered and are being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
6.4 The Panel will address the three aspects of the Policy listed above in turn.
6.5 The Complainant did not put its case on this issue as helpfully as it could have. Four examples of its trade marks were listed in the Complainant, but it was not at all clear what form these trade marks took. Although the Complaint claimed that copies of these marks were annexed to the Complaint, they were not. Instead, the Complainant produced a long list of approximately 1200 trade marks said to be owned by the Complainant, the vast majority of which were not of any relevance to these proceedings.
6.6 However, the Panel was able to obtain further details regarding three of the four trade marks specifically referred to in the Complaint by conducting an online search using the L'Institut National de la Propriété Industrielle website. These are the three marks that are identified in section 4 of this decision above. One of the marks comprises the text “FDJEUX” alone and the other two incorporate that word prominently as part of a design mark.
6.7 The issue of how a Panel will consider a trade mark that takes the form of text embodied in a broader design is one that was considered by this Panel in Injury Lawyers 4U Limited v. M A, WIPO Case No. D2008-2005. However, it is not necessary to consider this any further for the purposes of this decision since neither of the two design marks provide any better rights for the purposes of the Policy than the FDJEUX word mark that is relied upon (i.e. French trade mark no. 3407774).
6.8 The Complainant also refers to the reputation and “notoriety” of “FDJ”, but it is unclear whether this is intended to be some independent mark relied upon by the Complainant for the purposes of the Policy. No common law “unregistered trade mark” or the like is claimed in this respect. Even if it were, it would be insufficient to simply assert that the term “FDJ” is well known. As this Panel stated in Antonio de Felipe v. Registerfly.com, WIPO Case No. D2005-0969 (at paragraph 6.15):
“Unregistered trademark rights do not exist in some nebulous way across the breadth of the countries in which a complainant proves it has a reputation. These rights derive from national laws and do not exist divorced from such laws. They therefore depend upon the extent to which the laws of a particular country recognise or do not recognise that the activities of the complainant provide unregistered rights in that country. A personal name [(in which rights was claimed in that case)] is capable of qualifying as an unregistered trademark recognised by the Policy, but in determining whether it does in a particular case a panel will look to the jurisdictions in which those rights are claimed. The panel will then determine whether the complainant can show that the name provides an unregistered right in at least one of these jurisdictions.”
6.9 Therefore, ultimately, notwithstanding the extensive material filed by the Complainant in this case the Panel will consider the first requirement of the Policy by reference the FDJEUX mark alone.
6.10 Of the 11 Domain Names the subject matter of these proceedings, five of the Domain Names incorporate the FDJEUX mark in its entirety. These are <fdjeuxbet.com>, <fdjeuxbets.com>, <fdjeuxbingo.com>, <fdjeuxsport.com> and <fdjeuxsports.com>. As this Panel recently stated in Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227:
“in most cases where a domain name incorporates the entirety of a trade mark, then the domain name will for the purposes of the Policy be confusingly similar to the mark. The Complainant has cited a number of cases that are said to support that proposition. However, this Panel would prefer not to endorse this as a hard and fast rule. Each case must be judged on its own facts, and the assessment will always depend on the specific mark and the specific domain name.”
6.11 In this case each of these five domain names can only be understood as the term “fdjeux” combined with words that have deferring degree of association with the betting industry and the “.com” TLD. The FDJEUX mark is registered in respect of various classes, including the “Organization of gambling, Organization services lotteries, gambling, games of chance, raffles, prize draw”1.
6.12 The Panel, therefore, has little difficulty in concluding that these five Domain Names are confusingly similar to the FDJEUX mark for the purposes of the Policy.
6.13 So far as the remaining six Domain Names, <fdjbet.com>, <fdjbets.com>, <fdjbingo.com>, <fdjcasino.com>, <fdjsport.com>, and <fdjsports.com> are concerned, the assessment is somewhat more difficult. The only textual similarity between each of these Domain Names and the FDJEUX mark are the three letters “fdj”.
6.14 As has already been recorded, the Complainant contends that FDJ is a common abbreviation of the name of the Complainant and “could not have been chosen randomly”. As will become apparent later in this decision the Panel accepts that this is correct, but the Panel does not accept that this is particularly helpful to the current assessment.
6.15 A panel may be reluctant to find that there are no rights in a name where a registrant has sought to take advantage of that name in a domain name. However, that does not justify a panel in concluding that rights exist in a name where no such rights have been claimed. In this case the rights relied upon are in the mark FDJEUX and not the term FDJ alone. Therefore, it is against the FDJEUX mark and not FDJ that the question of confusing similarity must be judged. Further, this part of the Policy requires an objective assessment of the degree of similarity between mark and domain in which the subjective intentions of the registrant are of limited significance2.
6.16 The Complainant relies upon the decisions in Dow Jones & Co. v. Poerclick Inc, WIPO Case No. D2000-1259 or La Francaise des Jeux v. Intercoastal Business, WIPO Case No. D2008-1784, which are said to support the proposition that in cases of “cybersquatting, then the [domain names] at issue are, by definition, confusingly similar to the Complainant's trademark”. What the Complainant means by this statement is far from clear. However, neither of these cases suggests that the approach adopted by the Panel in the current case is incorrect.
6.17 Is then the three letter textual similarity between the FDJEUX mark and the six remaining Domain Names in this case sufficient for a finding of confusing similarity? Ultimately, the Panel is of the view that it is sufficient, if only just. The factors that lead it to that conclusion are as follows:
(i) Each of the remaining Domain Names can only be sensibly understood as the letters “fdj” in combination with ordinary words i.e. “bet”, “bets”, “casino”, “bingo” “sport” and “sports”. Accordingly, “fdj” stands out as a separate term in the domain name and it is a term that, as far as the Panel is aware, does not have any obvious independent meaning in ordinary language.
(ii) Whilst the mark and Domain Names have only three letters in common, they comprise half of the text of the mark. It is also the first half of the text of the trade mark that is reproduced, and as many trade mark systems recognise, the first parts of a mark are often more significant as they are likely to impart a greater impression on the viewer of the mark.
(iii) The classes for which the FDJEUX mark is registered include gambling related activities. Therefore, this is a case where ordinary words added to the Domain Name not only do not detract from, but positively add to the similarity between the mark and the Domain Names.
6.18 In conducting this assessment the Panel also takes into account the fact that the requirement of confusing similarity has on a number of occasions been referred to as a “low threshold” test. See in this respect Research in Motion Limited v. One Star Global LLC supra and Asset Marketing Systems, LLC v. Silver Lining, WIPO Case No. D2005-0560.
6.19 In the circumstances, the Panel finds in respect of each of the Domain Names that the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
6.20 The Panel accepts that the Respondent has never engaged in a substantial business activity under the “fdj” or “fdjeux” names or anything similar. Accordingly, he has not as a consequence of such activity established a right or legitimate interest in this term.
6.21 The only activity in which the Respondent appears to have been engaged is the parking of the Domain Names with the Registrar's parking service. How these sorts of services and the web pages that they generate operate is described in greater detail in the context of bad faith later on in this decision. In the view of the Panel there is no real doubt that in this case the Respondent has registered these Domain Names with a view to earning a share of the click through revenue generated by the domain name parking page in question.
6.22 It is possible for use of a domain name for a parking site with advertising revenue generating sponsored links to provide a legitimate interest within the meaning of paragraph 4(a)(ii) of the Policy. For example, if a respondent intends to profit from the descriptive nature of the word or words in the domain name without intending to take advantage of a complainant's rights and reputation in that term, then it may have a legitimate interest in the domain name (see paragraph 2.2 of the WIPO Overview). On the other hand, if the domain name in question was chosen because of the similarity to a name in which a complainant has an interest and in order to capitalise or otherwise take advantage of that similarity, then such registration and use would not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267).
6.23 Essentially, therefore, in a case such as this the assessment boils down to the questions: did the Respondent register the Domain Names with any of the Complainant's marks in mind and has he deliberately used them to take advantage of the reputation of those marks? These are also precisely the questions that have to be addressed in assessing the question of bad faith registration and use, and a separate assessment of the question of rights and legitimate interests adds very little.
6.24 For the reasons that are explained in greater detail under the heading of bad faith, the Panel concludes that the unequivocal answer to both questions is yes. In the circumstances, the Panel finds that the Respondent has no right or legitimate interest in the Domain Names and the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
6.25 The Panel has little difficulty in concluding in this case that the Domain Names have been registered and used in bad faith.
6.26 As already been stated the Domain Names have all been used with a “domain name parking” or “pay per click” service. It is now well-known how these sorts of pages operate. A domain name owner “parks” the domain name with a domain name parking service provider. The service provider then generates a page that incorporates sponsored links or links to sponsored links. When an Internet user clicks on these sponsored links, the entity sponsoring that link will make a payment. This “click-through revenue” is then ordinarily split between the domain name parking service provider and the owner of the domain name (see for example Owens Corning v. NA, WIPO Case No. D2007-1143).
6.27 The generation of revenue from domain name parking activities is not necessarily activity in bad faith. However, it is use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the registrant chose the domain name in question because of its similarity to a mark or name of another person in the hope and expectation that that similarity will result in an increased number of Internet users being drawn to that page (see for example Express Scripts, Inc., supra.).
6.28 In this case the Complainant claims that it is well known not only in France but elsewhere. However, no real evidence is provided as to the fame of the Complainant and its marks outside of France. The Complainant certainly does not address the question of the extent to which its activities are well known in Sweden (the place where the Respondent appears to reside).
6.29 Nevertheless, the Panel accepts that the Respondent was aware of the Complainant and the association of the terms “fdj” and “fdjeux” with the Complainant's business at the time of registration of the Domain Names. The Panel reaches that conclusion from the nature of the Domain Names themselves. As has already breen described, they can only sensibly be understood as the terms “fdj” and “fdjeux” with ordinary words such as “bet”, “bets”, “bingo”, “casino” and “sport”. This is an unusual combination of terms. So far as the Panel is aware, none of these combinations have an obvious natural, descriptive or generic meaning in any language. It is, therefore, difficult to understand why it is that someone might want to register the Domain Names other than to make some sort of reference to the Complainant. Particularly significant in this respect is the fact that the terms such as “bet”, “bets”, “bingo”, “casino” and “sport” are all words that to different degrees are descriptive of, or in some way connected, with the Complainant's business activities.
6.30 Further, all these Domain Names were registered at the same time. They each clearly form part of set of registrations that when considered in the round appears directed at the Complainant's business.
6.31 This combined with the subsequent use of the Domain Names means that the only sensible explanation of events is that when the Respondent registered the Domain Names he did so with full knowledge of the Complainant's FDJEUX mark and with a view to using the similarity between that mark and the Domain Names to draw Internet users to a domain name parking page for financial gain.
6.32 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
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 <fdjbet.com>, <fdjbets.com>, <fdjbingo.com>, <fdjcasino.com>, <fdjeuxbet.com>, <fdjeuxbets.com>, <fdjeuxbingo.com>, <fdjeuxsport.com>, <fdjeuxsports.com>, <fdjsport.com>, and <fdjsports.com> be transferred to the Complainant.
Matthew S. Harris
Dated: May 26, 2009
1 Source Google translation of the specification for the FDJEUX mark.
2 Where the rights relied upon are common law rights, such as those that exist in England and Wales under the law of passing off, the intention and knowledge of the respondent might in some cases conceivably be indirectly relevant. This is because the actions of the registrant may well constitute independent evidence of goodwill in a name that gives rise to the unregistered rights in the first place. However, they do not justify a finding of confusing similarity with an unregistered mark where no such mark is claimed.