Complainant is La Française des Jeux of Boulogne-Billancourt, France, represented by INLEX IP, France.
Respondent is MichaelE Wilkins of Bellevue, Nebraska, United States of America.
The disputed domain names <fdijeux.com> and <fdjeuxpayment.com> are registered with Melbourne IT Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2009. On July 9, 2009, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain names. On July 9, 2009, Melbourne IT Ltd transmitted by email to the Center its verification response confirming that 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, Complainant filed an amendment to the Complaint on July 20, 2009. 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 Respondent of the Complaint, and the proceedings commenced on July 21, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 18, 2008. The Panel is satisfied that the Center discharged its responsibility to employ reasonably available means calculated to achieve actual notice to Respondent, pursuant to Rules, paragraph 2(a).
The Center appointed Roberto Bianchi as the sole panelist in this matter on August 27, 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.
The following facts and circumstances are non-contested:
- Complainant La Française Des Jeux is the French “société anonyme d`économie mixte” running the State lottery of France. The company creates, develops and markets lottery and sports-betting games through France and the French overseas departments and territories.
- Complainant owns numerous trademarks, inter alia, the French trademark FDJEUX No. 063407774, filed on February 3, 2006, and registered for classes 9, 16, 28, 38 and 41, the Community trademark FDJEUX No. 002082212, filed on February 9, 2001 for classes 9, 16, 18, 25, 34, 38 and 41, and the Community trademark FDJEUX.COM No. 002946192, filed on November 25, 2002 and registered on April 5, 2004 for classes 09, 12, 14, 21, 28, 35, 37 and 41.
- On December 24, 2007, the domain names <fdjeuxpayment.com> and <fdijeux.com> were registered with MELBOURNE IT in the name of Respondent.
- On March 25, 2008, Complainant sent a cease and desist letter to Respondent requesting the transfer of the contested domain names from Respondent to Complainant. A reminder by e-mail was sent on April 16, 2008 and by fax on April 18, 2008. Respondent did not reply to any of these communications.
In its Complaint, Complainant contends the following:
- Respondent's domain names are visually, phonetically and intellectually almost identical to Complainant's trademark.
- The lack of rights or legitimate interests of Respondent in the domain names results from the existence of well-known trademarks belonging to Complainant. In addition, Respondent is not making a noncommercial fair use of the site or a bona fide commercial use of the disputed domain names. No active websites are linked with <fdjeuxpayment.com> and <fdijeux.com>. Complainant has not licensed or otherwise authorized Respondent to use the disputed domain names. There is no relationship between Complainant and Respondent. No websites are active at the domain names in question.
- The domain names were registered and are being used in bad faith. Respondent obviously made the above registrations in bad faith, considering that the rights of French Company La Française Des Jeux are well known for a French consumer. Since the disputed domain names are confusingly similar to Complainant's globally famous and valuable trademarks, Respondent's use of the disputed domain names will cause consumers mistakenly to believe that “www.fdjeuxpayment.com” and “www.fdijeux.com” websites are affiliated with or owned by La Française Des Jeux. The name of Complainant, La Française Des Jeux, its trademarks and websites enjoy a great notoriety in France and, via the Internet, over the world. The first registration of the FRANCAISE DES JEUX trademarks dates back to 1991. A simple Google search for “francaise des jeux” on the Internet would have revealed the existence and notoriety of the denominations “francaise des jeux” and their association with Complainant as trademark owner. In addition, “fdjeuxpayment.com” and “fdijeux.com” are fanciful words that refer exclusively to the trademarks and the domain names of Complainant. Therefore, it is obvious that the registration of the <fdjeuxpayment.com> and <fdijeux.com> domain names has not been made by chance but with the intention to imitate the trademarks and the domain names of Complainant.
- There are no active websites at the disputed domain names, which shows that the activity of the websites does not exist, and that there is no interest to own these domain names. This use of the domain names cannot be considered as a bona fide exploitation because it is obvious that the domain names will lead the consumer to believe that the websites have a link with La Française Des Jeux and the French State. This use and exploitation of the disputed domain names is certainly tarnishing Complainant's marks, which is evidence of bad faith. Respondent is using fraudulently the domain names <fdjeuxpayment.com> and <fdijeux.com>, reproducing the trademarks over which Complainant holds rights, with bad faith, in order to make money. It can be deduced that Respondent's real intention from the beginning was to profit from the likelihood of confusion for his own commercial gain.
Respondent did not reply to Complainant's contentions, and is in default.
Even if a respondent is in default, a complainant must still make out its case under Policy, paragraph 4(a) that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Since Complainant only submitted a list of the trademarks upon which it relies, on September 4, 2009, under its general powers pursuant to Rules, paragraph 10(a), the Panel made searches on the online trademark database of the French “Institut National de la Propriété Industrielle” at http://bases-marques.inpi.fr/. The Panel is satisfied that Complainant's marks as mentioned by Complainant at section 4 above do exist and are registered in the name of Complainant. Accordingly, Complainant has shown that it has trademark rights in the “FDJEUX” and “FDJEUX.COM” expressions.
The only difference between the <fdijeux.com> domain name and Complainant's FDJEUX mark is the addition of the letter “i” in the disputed domain name. This difference is irrelevant when comparing both identifiers. See Harrods Limited v. Sean Kwon, WIPO Case No. D2003-0722, Sanofi-aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303, Kiloutou v. Domain Drop SA, WIPO Case No. D2006-1105, and Royal Canin SA v. Zsofia Tallai, WIPO Case No. D2009-0241, where the additions of the letters “i”, or “s”, or “t”, or “e”, respectively, were deemed irrelevant to distinguish the domain names there at issue from the marks of the complainants. As to the <fdjeuxpayment.com> domain name, it differs from Complainant's mark in that the domain name incorporates the common term “payment”. This addition also does not suffice to distinguish the domain name from the mark. See General Electric Company v. Ted Chen, WIPO Case No. D2007-0399, where the panel found that the addition of generic words to the complainant's marks does not distinguish the respondent's domain names from the complainant's marks (one of the terms added was “payment”).
The Panel concludes that the disputed domain names are confusingly similar to Complainant's marks.
As seen at section 4 above, Complainant has contended that Respondent is not making a noncommercial fair use of the site or a bona fide commercial use of the disputed domain names, that no active websites are linked with the <fdjeuxpayment.com> or <fdijeux.com> domain names, that Complainant has not licensed or otherwise authorized Respondent to use the disputed domain names, and that there is no relationship between Complainant and Respondent. In addition, Complainant contends that Respondent's use of the disputed domain names was fraudulent.
Taken together, these contentions and supporting evidence are sufficient to make out a prima facie case that Respondent lacks rights or legitimate interests in respect of the disputed domain names. It is generally accepted by UDRP panels that once a prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See paragraph 4.6. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
In the present case, Respondent has not presented the Panel with any comments or evidence in his own favor. Accordingly, the Panel finds that Complainant has satisfied Policy, paragraph 4(a)(ii).
Complainant has shown with copies of the results of research made by the Ipsos market research company on the notoriety of several marks owned by Complainant, that such marks are well known and recognized in France. Since the FDJEUX mark is extensively used by Complainant on the Internet to market its lottery games and other betting-games, the Panel accepts that this mark is also well known as a lottery operator and that Respondent, even if residing in the United States, knew or must have known Complainant's marks, products and services. Moreover, the use of the disputed domain names by Respondent as described below suggests that he is perfectly aware of Complainant and its FDJEUX marks. Since Respondent is in default and there is no evidence of any element in Respondent's favor on the record, the Panel concludes that the registration of the disputed domain names was in bad faith.
Complainant also contends that Respondent's exploitation of the domain names was fraudulent. At Annex “I” to the Complaint, Complainant submits printouts of results from a Google search for the “fdijeux.com” and “fdjeuxpayment.com” terms.
In such results there is evidence that the domain names in dispute in all likelihood have been used in e-mail addresses to send communications to Internet users with likely “advance fee fraud” purposes. In other words, that the disputed domain names may have been used by Respondent to attempt to extract money from inadvertent Internet users who were asked to send money in order to facilitate payment of false lottery prizes, i.e. with criminal purposes. 1 This clearly is a use of the domain names in bad faith. Since Respondent did not present the Panel with any explanation for his conduct, the Panel is satisfied that the domain names were registered and are 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 domain names <fdijeux.com> and <fdjeuxpayment.com> be transferred to Complainant.
Dated: September 9, 2009
1 Under “Advance Fee Scheme” the FBI's website (http://www.fbi.gov/majcases/fraud/fraudschemes.htm) states: “An advance fee scheme occurs when the victim pays money to someone in anticipation of receiving something of greater value, such as a loan, contract, investment, or gift, and then receives little or nothing in return. The variety of advance fee schemes is limited only by the imagination of the con artists who offer them. They may involve the sale of products or services, the offering of investments, lottery winnings, ‘found money', or many other ‘opportunities'.”