WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Lotter Enterprises Limited v. SunSeven NV, F.M. Brendan John, No Organisation: Common Law Jurisdiction, Per BN (under common law)
Case No. DCC2011-0001
1. The Parties
Complainant is The Lotter Enterprises Limited (“Complainant”) of Sheffield, United Kingdom of Great Britain and Northern Ireland, represented by S. Horowitz & Co., Israel.
Respondents are SunSeven NV, F.M. Brendan John, and No Organisation: Common Law Jurisdiction, Per BN (under common law) (“Respondents”) of Curaçao, the Netherlands Antilles.
2. The Domain Name and Registrar
The disputed domain name <thelotter.cc> (the “Domain Name”) is registered with Register.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2011. On February 8, 2011, the Center transmitted by email to Register.com, Inc., a request for registrar verification in connection with the Domain Name. On February 8, 2011, Register.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on February 16, 2011.
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 February 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 14, 2011. Respondents did not submit any formal response. Accordingly, the Center notified Respondents’ default on March 15, 2011.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on March 22, 2011. 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.
Several email communications were received from Respondents SunSeven NV and F.M Brendan John throughout the proceedings in which Respondents opposed the Center’s and Panel’s subject matter and personal jurisdiction over this case. As explained to Respondents by the Center, this administrative proceeding has been commenced against the Respondents pursuant to the Policy, which is incorporated by reference into the Registration Agreement (the “Agreement”) with the concerned registrar, Register.com, Inc. Under the Agreement, the registrant of the Domain Name must submit to and participate in a mandatory administrative proceeding in the event that a third party submits a complaint concerning the Domain Name.
The Panel is satisfied that it has jurisdiction over this dispute and shall therefore proceed to render a decision regarding this matter.
4. Factual Background
Complainant is the owner of European Community trademarks for THE LOTTER (Registration No. 009100827) (the “trademark”) and a stylized version of the trademark (Registration No. 009100801) (collectively, the “trademarks”). Complainant’s registration of the trademark within the United States is pending.
The Domain Name was registered on February 3, 2009, with Register.com, Inc. Register.com, Inc. reflects that the Domain Name’s registrant is “No Organisation: Common Law Jurisdiction. Per BN (under common law)” with a P.O. Box number in Curaçao.
The Domain Name markets itself as an online lottery website allowing its users to play the U.K. Lottery, Euro Millions Lottery, Powerball Lottery, and Mega Millions Lottery. According to Complainant, between September 2009 – January 2010, the website operating under the Domain Name participated in Complainant’s affiliate program. The affiliate program offered its participants the opportunity to earn money for successful referrals of Internet users to Complainant.
According to Complainant, Respondents had no authority to register a domain name which incorporates the trademark. Moreover, the affiliation agreement did not permit affiliates of Complainant to use any of Complainant’s trademarks. Complainant terminated the affiliation agreement when it discovered that the website operating under the Domain Name was making unauthorized use of Complainant’s trademark. Thereafter, the website began to advertise for Complainant’s competitors, including “www.lotterynetwork.net”.
Respondents are “No Organisation: Common Law Jurisdiction, Per BN (under common law)” and SunSeven NV, a company located in the Netherlands Antilles and Mr. F.M. Brendan John, a resident of the Netherlands Antilles. In prior email correspondence of record, Respondent, SunSeven NV, expressly disclaimed ownership of the disputed domain name. However, Respondent SunSeven NV failed to file any formal Response to the Complaint.
In prior email correspondence of record, Respondent F.M. Brendan John asserted his ownership over the Domain Name. Respondent F.M. Brendan John, however, did not file a formal Response to the Complaint.
5. Parties’ Contentions
Complainant contends the following:
Complainant makes substantial use of its trademarks, primarily through its website, “www.thelotter.com”.
Prior to 2009, Complainant expended millions of dollars marketing and advertising its service and trademarks.
Respondents registered the Domain Name after Complainant’s trademarks had obtained worldwide notoriety, in an effort to capitalize on the recognition of the marks by those seeking lottery services.
Respondents have registered and are using the Domain Name in bad faith in an effort to confuse potential consumers searching for lottery services into thinking that these products and services are offered by Complainant.
Respondents have no rights or legitimate interests in the Domain Name. Respondents are neither licensees nor affiliates of Complainant.
Respondents are not using the Domain Name in connection with a bona fide offering of goods or services.
As indicated above, Respondents SunSeven NV and F.M. Brendan John sent several email communications to the Center but filed no formal Response to Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, a complainant must prove that:
(i) The 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.
Given the absence of a formal Response in this case, “[i]n considering those three matters a Panel, by virtue of Rule 14(b) of the Rules, is entitled to draw such inferences as it considers appropriate from the failure by a Respondent to respond to a Complaint.” Debevoise & Plimpton LLP v. Marketing Total S.A., WIPO Case No. D2007-0451.
A. Respondents’ Identity
The Rules define “Complainant” as “the party initiating a complaint concerning a domain-name registration” and “Respondent” as “the holder of a domain-name registration against which a complaint is initiated”. In this case, the concerned registrar, Register.com, Inc., confirmed that Respondent, “No Organisation: Common Law Jurisdiction, Per BN (under common law)”, is listed as the holder of the Domain Name registration against which the Complaint was initiated. Complainant has provided convincing evidence that sufficient indicia exists that the Domain Name is subject to the common control of Respondents SunSeven NV and F.M. Brendan John. The Panel shall therefore proceed to render a decision against all three Respondents in this case.
B. Identical or Confusingly Similar
To satisfy this element, Complainant must establish that it has rights to a trademark or service mark and that the Domain Name is identical or confusingly similar to such mark. Policy, paragraph 4(a)(i). As established by prior UDRP decisions, the applicable test is “confined to a consideration of the disputed domain name and the trademark”. The Boucher Group, Inc. v. Nevis Domains LLC, WIPO Case No. D2006-1463 (citing America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004).
Complainant has shown that it has rights to the trademark THE LOTTER in connection with Internet lottery services. The Domain Name incorporates the trademark in its entirety. “[T]he fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.” Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
Respondents have not rebutted Complainant’s contention that the Domain Name is identical or confusingly similar to Complainant’s Marks.
The Panel finds that Complainant has recognizable rights to THE LOTTER trademark and that the Domain Name is identical or confusingly similar to Complainant’s trademarks. Complainant has thus satisfied its burden of proof under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
According to the Policy, Respondents may demonstrate that they have rights or legitimate interests in the domain name by showing:
(i) before any notice to you of the dispute, your use of, or demonstrable 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Policy, paragraph 4(c).
“[I]t is necessary to consider the bona fides of the use, as well as the bona fides of the offer for sale, in determining whether Respondent possesses a legitimate right or interest in the domain name.” Barnes & Noble College Bookstores, Inc. v. Leasure Interactive, WIPO Case No. D2001-1216. Given Complainant’s international presence, it is probable that Respondents, in registering the Domain Name, sought to profit from the trademarks’ notoriety. In the absence of any contrary showing from Respondents, the use of the Domain Name is ineligible for classification as a “bona fide” offering of goods or services.
Respondents have provided no evidence that it was or is commonly known by the Domain Name, and it is unlikely that the Respondents could make such a showing given Complainant’s early, long-standing, public use of the trademarks.
Furthermore, the Domain Name provides Internet lottery services in direct competition with those offered by Complainant and Complainant’s website, “www.thelotter.com”. Thus, it is clear that Respondents’ use of the Domain Name constitutes commercial use.
Respondents have offered no evidence or argument to counter Complainant’s case. Thus, the Panel finds that Complainant has satisfied its burden of proof that Respondents possess no rights or legitimate interests in the Domain Name.
D. Registered and Used in Bad Faith
The Panel finds that the prior participation in Complainant’s affiliate program, as well as its receipt and response to Complainant’s letter demanding that Respondents refrain from the infringement underlying this action, demonstrate that Respondents were aware of Complainant’s trademarks. In light of this knowledge, and given that neither Complainant nor the provisions of the affiliation agreement ever permitted Respondents to register the Domain Name which incorporates Complainant’s trademarks, the Panel is of the opinion that Respondents’ unauthorized incorporation, and continued use, of the trademark in the Domain Name constitutes bad faith. See Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi, Ltd.) v. Click Consulting, Ltd., WIPO Case No. D2007-0809 (“[I]incorporating a widely-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements.”).
The Panel finds further bad faith in the provision of links to Internet lottery services which are substantially similar to, and in competition with, those services offered by Complainant at its website, “www.thelotter.com”.
In the absence of a formal Response, Respondents’ apparent intent in registering and using the Domain Name is to disrupt the relationship between Complainant and its current and potential customers by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondents’ website.
In sum, the above facts are sufficient to indicate bad faith pursuant to paragraph 4(b)(iii) and (iv) of the Policy. Therefore, the Panel concludes that Respondents registered and used the Domain Name 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 Name <thelotter.cc> be transferred to Complainant.
Maxim H. Waldbaum
Dated: April 4, 2011