WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
La Française des Jeux v. Christian Bodart
Case No. D2012-1763
1. The Parties
The Complainant is La Française des Jeux of Boulogne-Billancourt, France, represented by Inlex IP Expertise, France.
The Respondent is Christian Bodart of Antwerp, Belgium.
2. The Domain Names and Registrar
The disputed domain names <affiliation-loto.com>, <affiliationloto.com>, <affiliation-loto.net>, <affiliationloto.net>, <bingo-loto.net>, <loto-en-ligne.com>, <loto-en-ligne.net>, <lotoenligne.net>, <loto-internet.com>, <lotointernet.com>, <loto-internet.net> and <lotointernet.net> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2012. On August 31, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 3, 2012, 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”).
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 September 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 30, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 2, 2012.
The Center appointed Anne-Virginie La Spada-Gaide as the sole panelist in this matter on October 11, 2012. 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. Factual Background
The Complainant is a French company acting as a French state lottery, which creates, develops and markets lottery and sports-betting games under the trademark LOTO throughout France.
Among other trademarks including the word LOTO, the Complainant is the owner of the following French trademarks:
- Trademark LOTO (registration no. 1435425) filed on April 22, 1983 in classes 1 to 42;
- Trademark LOTO (registration no. 3233275) filed on June 26, 2003 in classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 16, 19, 20, 21, 22, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45.
The Complainant also owns numerous domain names including term “loto”, including:
The disputed domain names were created on July 6, 2009 in the name of R. Pouzas, with an address in the United States of America. In August 2009, they resolved to websites in French which offered links to commercial gambling sites such as Bingo 770. The Complainant sent a cease and desist letter to Mr. Pouzas on August 10, 2009. The letter could however not be delivered as the address was not correct.
In May 2011, the details of the owner had changed to Domains by Proxy. At that time, the disputed domain names resolved to the website Poker 83 owned by the French company Casino du Golfe. On July 19, 2011, the Complainant sent cease and desist letter to both Casino du Golfe and Domains by Proxy, Inc. Casino du Golfe replied that it was not the owner of the disputed domain names and stopped the redirection of the disputed domain names to its website.
On October 21, 2011, Domains by Proxy, Inc. disclosed to the Complainant that the owner of the disputed domain names was the Respondent Christian Bodard, with an address in Antwerp, Belgium.
The Complainant sent a cease and desist letter to the Respondent on October 31, 2011. The letter was returned to the Complainant with the mention “insufficient address”. The Complainant tried to contact the Respondent by telephone but the phone number indicated in the contact details for the disputed domain names was “not allocated”.
In March 2012, the disputed domain names resolved to websites presenting information on games as well as links to commercial gambling games, including bingo and poker. Banners with links to the website TurboPoker were prominently displayed.
In July 2012, the disputed domain names resolved to parking pages of GoDaddy.com, LLC in French, featuring links related to entertainment.
On September 10, 2012, the Center (pursuant to its obligations under paragraph 2(a) of the Rules) checked the status of the disputed domain names. It appears from the case file that on that date, the disputed domain names resolved to websites very similar to those in existence in March 2012, featuring banners for the website Bingo 770, among other banners and links related to poker, bingo and other gambling games.
5. Parties’ Contentions
The Complainant contends that it owns numerous LOTO trademarks, the validity of which has been regularly recognized by several administrative and court decisions. The Complainant further asserts that it owns various domain names including the term “loto”, redirecting to its websites “www.loto.fr” and “www.fdj.fr”. The Complainant has been using the trademark LOTO in France for lottery games since 1976.
In the Complainant’s opinion, the disputed domain names are confusingly similar to the trademark LOTO because they reproduce the mark LOTO in its entirety, and associate it with generic words that are in relation with games and/or Internet activities, i.e. activities that are directly in competition with the Complainant’s. The addition of such descriptive words does not permit to distinguish the disputed domain names from the Complainant’s trademarks, also in view of the fact that the Complainant holds domain names that are highly similar to the disputed domain names (such as <loto-online.com> or <lotoaffiliate.com>).
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain names, as the Respondent does not have any trademark rights on the denominations reserved as domain names, and as the Complainant has never granted a license or other type of authorization to the Respondent to use the LOTO trademarks.
With respect to the Respondent’s alleged bad faith, the Complainant asserts that the disputed domain names were registered in bad faith for the following reasons:
- The trademark LOTO is well-known in France;
- A simple Google search would have revealed the existence and notoriety of the LOTO trademarks, in particular because on the “www.loto.fr” website, the symbol ® appears next to the mark LOTO;
- The generic words associated with the mark LOTO in the disputed domain names refer to the Complainant’s field of activity.
The Complainant finally asserts that the disputed domain names were used in bad faith, as the Respondent has used them to offer gambling games that are not traditional loto and that are in competition with the Complainant’s activities. This indicates in the Complainant’s opinion that the Respondent has intended to use the notoriety of the Complainant’s trademarks to attract consumers onto its websites for commercial gain. The fact that the websites connected to the disputed domain names changed several times, often further to a cease and desist letter sent by the Complainant, is further evidence of the Respondent’s bad faith, as is the fact that the Respondent provided wrong contact details in the WhoIs database.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Complainant must prove each of the three elements required by paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the disputed domain names are 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 disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
In accordance with paragraph 14(b) of the Rules, the Panel may draw such inferences as it deems appropriate from the Respondent’s failure to reply to the Complainant’s assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panel’s decision is based upon the Complainant’s assertions and evidence as well as from inferences drawn from the Respondent’s failure to reply.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established valid rights in the trademark LOTO in France, even though the term “loto” may be deemed descriptive insofar as it designates a popular game in which numbered balls (or other numbered items) are drawn at random and players cover the corresponding numbers on their cards. In 2007, a French court rejected a complaint filed by a third party seeking to invalidate (for lack of distinctive character) several LOTO trademarks of the Complainant in relation to the organization of lotteries and the provision of access to a computer network enabling users to participate in lotteries (among other goods and services). The Court held that the mark LOTO of the Complainant was sufficiently fanciful for the claimed services, insofar as the lottery exploited by the Complainant differed from the traditional game of loto (TGI Nanterre, April 5, 2007, No. 06/05557).
Other UDRP administrative panels have accepted that the Complainant has valid rights in the mark LOTO (see La Française des Jeux v. Oleg Filatov, WIPO Case No. D2008-0633; La Française des Jeux v. EINFO Pty Limited, WIPO Case No. D2007-1101; La Française des Jeux v. Elliott Stambouli, WIPO Case No. D2007-0345).
The disputed domain names reproduce the trademark LOTO in its entirety, and combine it with the terms “en ligne” (meaning “online” in French”), “internet”, “affiliation” or “bingo”, with hyphens or without hyphens. These terms are generic and devoid of distinctiveness. They are not suggestive of any dissimilar goods or services. With respect to the disputed domain name <bingo-loto.net>, the presence of the term “bingo” only reinforces the similarity between the disputed domain name and the trademark LOTO, as “bingo” is the name of a game. In a previous UDRP case, the domain names <lotoaffiliate.com> and <loto-online.com> (among others) were thus likewise considered similar to the mark LOTO of the Complainant (La Française des Jeux v. EINFO Pty Limited, WIPO Case No. D2007-1101).
It is the general view among UDRP panels that the addition of merely generic, descriptive, or geographical words to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP (see for example Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; and eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307).
Accordingly, the Panel finds that the disputed domain names are confusingly similar to trademarks in which the Complainant has rights. The Complainant has thus satisfied the condition set forth in paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel accepts that the Respondent is not a licensee of the Complainant, and that the Complainant has not granted to the Respondent an authorization to use its trademark LOTO in the disputed domain names. Moreover, there is no indication that the disputed domain names correspond to the Respondent’s name.
In view of the evidence submitted by the Complainant, the Panel does not find it likely that the Respondent might have intended to use the disputed domain names to offer only services related to the traditional game of loto (such services would arguably fall outside the scope of protection of the Complainant’s trademark because the term “loto” would in this case be used in a descriptive manner). Indeed, on March 13, 2012, i.e. after Domains by Proxy, Inc. confirmed that the Respondent was the registrant of the disputed domain names, the disputed domain names resolved to websites offering links to poker and casino games websites (such as TurboPoker), alongside games of bingo in the French language. Poker is different from the traditional game of loto, and the Panel does not see any reason why the Respondent would have a legitimate interest in using the term “loto” under the circumstances in a domain name to offer news and links in relation to different games.
Furthermore, on July 12, 2012, the disputed domain names resolved to parking pages of GoDaddy.com, LLC featuring sponsored links in French. A number of UDRP panels have found that use of a domain name corresponding to the trademark of another for the purpose of offering sponsored links is not in itself evidence of any rights or legitimate interests (see Woolworths Limited v. Domain AdminkPrivacyProtect.org / Smvs Consultancy Private Limited, WIPO Case No. D2010-1046; Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation, WIPO Case No. D2009-0776; and Mayflower Transit LLC v. Domains by Proxy Inc./Yariv Moshe, WIPO Case No. D2007-1695. See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.6).
Finally, the Respondent did not file a Response to the Complaint. The Panel may draw from the lack of a Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b). It is the Panel’s inference that the Respondent’s silence corroborates the Complainant’s assertion that the Respondent lacks rights or legitimate interests in the disputed domain names.
Under the circumstances, as the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, which has not been rebutted, and on the basis of the information and evidence before the Panel, the Panel finds that the Complainant has thus satisfied the condition set forth in paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
It is generally accepted that the transfer of a domain name amounts to a new registration for the purposes of determining whether the domain name was registered in bad faith (see paragraph 3.7 of the WIPO Overview 2.0).
In the present case, the disputed domain names might still be under the control of the same person or entity, even though they were formally transferred to the Respondent. The Panel indeed observes that the excerpts of the websites to which the disputed domain names resolved on March 13, 2012 all include a copyright notice of 2009. Furthermore, after reviewing the excerpts of the websites connected to the disputed domain names provided in the case file (dated September 10, 2012), the Panel observes that the websites consistently advertize a website entitled Bingo 770, which was also mentioned in the first excerpts obtained by the Complainant in August 2009.
Assuming that the Respondent is indeed a different person from the initial registrant, the issue is whether the Respondent was in bad faith when the disputed domain names were transferred to him. The Panel cannot know the date on which the transfer took place. Because the disputed domain names were for a time registered in the name of a privacy service, the Registrar informed the Center after the filing of the Complaint that it could not determine the date of change of ownership from the previous owner(s) to the Respondent. The transfer might have taken place shortly after the initial registration, or, at the latest, on October 21, 2011, when Domains by Proxy, Inc. disclosed the name of the Respondent to the Complainant. In any event, the publicly-available WhoIs indicates that the disputed domain names were all initially registered on July 6, 2009, many years after the Complainant began using its mark.
Based on the Complainant’s undisputed assertions and the evidence submitted, the Panel finds it more likely than not that the Respondent was aware of the Complainant’s trademark LOTO when the disputed domain names were transferred to him. The Panel accepts indeed that the Complainant’s trademarks LOTO are well-known in France. As the websites to which the disputed domain names resolve since October 21, 2011 are in French, it appears likely that the Respondent, although allegedly domiciled in Belgium, was familiar with the French gambling market and was aware of the Complainant’s activities and of this trademark LOTO.
Also, the fact that the Respondent provided an incorrect street address and a wrong telephone number is in the Panel’s view an indication that the Respondent wished to avoid identification, which strongly suggests a registration of the disputed domain names in bad faith.
Turning to the determination of use in bad faith, the Panel notes that the websites to which the disputed domain names resolved on March 13, 2012 (i.e. websites presenting news, links and banners related to poker, bingo and other games) mainly advertise poker and bingo websites, and hardly mention the term “loto” (on the website connected to the disputed domain name <loto-en-ligne.com>, the term “loto” even appears in connection to the Complainant’ activities: “jouez au loto en ligne avec la FDJ”).
The Panel further observes that the disputed domain names were used at least for a certain period (in July 2012) in relation to parking pages of GoDaddy.com, LLC displaying sponsored links in French, in particular links connected to entertainment activities, corresponding to the Complainant’s main activities.
In view of such circumstances, the Panel finds that the Respondent has used the disputed domain names with the intention to attract for commercial gain Internet users to its websites or other on-line locations by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites, within the meaning of paragraph 4(b)(iv) of the Policy.
Finally, the failure of the Respondent to submit a Response providing an explanation for his intentions is supporting evidence of the Respondent’s bad faith.
For the reasons set out above, the Panel finds that the Respondent has registered and is using the disputed domain names in bad faith, and that the Complainant has satisfied the condition set forth in paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <affiliation-loto.com>, <affiliationloto.com>, <affiliation-loto.net>, <affiliationloto.net>, <bingo-loto.net>, <loto-en-ligne.com>, <loto-en-ligne.net>, <lotoenligne.net>, <loto-internet.com>, <lotointernet.com>, <loto-internet.net> and <lotointernet.net> be transferred to the Complainant.
Anne-Virginie La Spada-Gaide
Dated: October 23, 2012