WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tatts Group Limited v. Bassel Djaroueh
Case No. D2019-1586
1. The Parties
The Complainant is Tatts Group Limited, Australia, represented by King & Wood Mallesons, Australia.
The Respondent is Bassel Djaroueh, Lebanon.
2. The Domain Name and Registrar
The disputed domain name <oz-lotto.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2019. On July 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 31, 2019. Further to the latter notification, the Center received an informal email communication from the Respondent on the same day. The Center acknowledged receipt of the latter on August 1, 2019.
The Center appointed Assen Alexiev as the sole panelist in this matter on August 7, 2019. 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 was founded in 1885. Its parent company, Tabcorp Holdings Limited (Tabcorp), is one of Australia’s leading wagering, lotteries and gaming solutions company. Tabcorp is listed on the Australian Stock Exchange, and had an annual revenue of AUD 3.8 billion for the financial year ending June 2018.
Tabcorp’s lotteries and keno business boasts annual revenue of over AUD 1,390 million. In the second half of 2018, there were approximately 96 million visits to Tabcorp’s lotteries website each month. More than 2.9 million Australians are registered online lottery players.
In Australia, the Complainant, through a number of wholly owned subsidiaries, is licensed to sell its lottery products in every state and territory except for Western Australia (whose lottery is government-owned and operated). The Complainant is the exclusive lottery operator in New South Wales, Queensland and Victoria. In 2012, Tatts Group was appointed as the exclusive Master Agent to operate South Australia’s government‑owned lottery on behalf of the Lotteries Commission of South Australia. The Complainant markets and provides lotteries to consumers through a number of different brands. Some lottery games, such as the Saturday Lotto, are branded locally by jurisdiction. Others, such as Oz Lotto, have the same overall branding nationally. The Complainant oversees the provision of the Oz Lotto lottery in every state and territory in Australia (except for Western Australia).
The Complainant is the co-owner (together with several third parties, with whom it has entered into a joint user agreement) of the following trademark registrations for OZ LOTTO (the “OZ LOTTO trademark”):
- the trademark OZ LOTTO with registration No.615862, registered in Australia on August 9, 1996 for goods in International Class 16;
- the trademark OZ LOTTO with registration No.615863, registered in Australia on August 9, 1996 for services in International Class 36;
- the trademark OZ LOTTO with registration No.800236, registered in Australia on March 27, 2002 for goods and services in International Classes 16 and 36; and
- the trademark OZ LOTTO with registration No.1080489, registered in Australia on August 6, 2007 for goods and services in International Classes 16 and 41.
The disputed domain name was registered on May 26, 2015. It resolves to a website that provides information and results about the Complainant’s lottery products (including Oz Lotto). It also contains links redirecting users to a third-party website offering lottery tickets, as well advertising links relating to currency exchange and other topics.
5. Parties’ Contentions
The Complainant submits that the disputed domain name is identical to the OZ LOTTO trademark, which it wholly incorporates without the addition of any other elements.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name. The disputed domain name reflects the OZ LOTTO brand of lottery products and services operated by the Complainant, which the Complainant has not authorized the Respondent to use in a domain name. The Respondent is not affiliated with or licensed by the Complainant or commonly known by the disputed domain name. The Complainant submits that the Respondent has not used, or made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. The website at the disputed domain name purports to offer information and results regarding the lottery games operated by the Complainant, including Oz Lotto. The title of the website at the disputed domain name is “Buy, check and win”, indicating that the website is not only for informational purposes. This website contains a number of links inviting users to “buy tickets” in the relevant lottery for which results are being provided. These links redirect Internet users to a competitor of the Complainant who resells lottery tickets in lottery games in United States of America, Australia and European Union. The Respondent is thus using the OZ LOTTO trademark in the disputed domain name and in meta-tags on the website to optimize search engine results, bait consumers and then switch them to other goods and services offered at competing lottery companies and other third parties, and to generate affiliate referral revenue.
The Complainant also submits that the website at the disputed domain name is being used to harvest email addresses from Internet users looking for the Complainant’s lottery services. Internet users visiting the Respondent’s website are invited to provide their email addresses on the premise that lottery results would be sent to them.
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith. The OZ LOTTO trademark was registered many years before the disputed domain name. The use of the OZ LOTTO trademark in the disputed domain name and on the associated website shows that the Respondent was aware of this trademark at the time he registered the disputed domain name in 2015.
The Complainant further submits that the Respondent has intentionally used the disputed domain name to attract for commercial gain Internet users to his website by creating a likelihood of confusion with the OZ LOTTO trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the lottery services referred to on this website. The Respondent is using the website to display information and results relating to the Complainant’s lotteries and to post links to a website that provides services which compete with those offered by the Complainant.
The Complainant notes that a disclaimer appears in several places on the website at the disputed domain name. The disclaimer states that the website is not an official lottery website, and that the owner of the website does not operate Australian lottery games. However, these disclaimers are not prominently displayed on the website and are not sufficient to eliminate the likelihood of confusion. Further, the Respondent is not using the website at the disputed domain name only to display information about lotteries, but also to post links to websites that compete with the Complainant.
The Complainant submits that on September 19, 2018, it sent to the Respondent a cease and desist letter drawing the Respondent’s attention to the Complainant’s rights in the OZ LOTTO trademark and seeking the removal of this trademark from the Respondent’s website. The Respondent did not reply to this letter.
The Respondent did not formally reply to the Complainant’s contentions. The Respondent sent two emails asking “where do we reply?”, but no further communication was received.
6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …”
In this proceeding, the Respondent has not used the opportunity provided to it under the Rules and has not submitted a substantive Response addressing the contentions of the Complainant and the evidence submitted by it.
A. Identical or Confusingly Similar
The Complainant has provided evidence of the registrations of the OZ LOTTO trademark in Australia. As stated by the Complainant, it oversees the provision of the Oz Lotto lottery in every state and territory in Australia except for Western Australia, and all owners of the OZ LOTTO trademark have entered into a joint user agreement in relation to this trademark. This satisfies the Panel that the Complainant has established its rights in the OZ LOTTO trademark for the purposes of the Policy and has standing to file the Complaint in this proceeding.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain Name (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name.
The relevant part of the disputed domain name is therefore the sequence “oz-lotto”. It consists of the elements “oz” and “lotto”, which are identical to the word elements of the OZ LOTTO trademark, and are separated by a hyphen. The hyphen does not affect in a significant way the perception of the disputed domain name and does not prevent a finding of confusing similarity between the disputed domain name and the OZ LOTTO trademark.
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the OZ LOTTO trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not known by the disputed domain name and is not affiliated to the Complainant, that it has not been authorized to register the disputed domain name, and that the Respondent uses the disputed domain name for a website that features the OZ LOTTO trademark and in addition to information about the Complainant contains links to a competitor of the Complainant. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not replied to the Complainant’s contentions and has not alleged that it has rights and legitimate interests in the disputed domain name and has not disputed the Complainant’s allegations in this proceeding.
The disputed domain name is confusingly similar to the OZ LOTTO trademark which was registered 19 years earlier, and resolves to a website that features the OZ LOTTO trademark and in addition to various content related to the Complainant, contains commercial links to a competitor of the Complainant as well as to other services offered by third parties. Website owners usually post such links expecting to generate income.
In view of the above and in the lack of any denial by the Respondent of it, the Panel is satisfied that it is more likely than not that the Respondent, being aware of the goodwill of the Complainant’s OZ LOTTO trademark, has registered and used the disputed domain name in an attempt to exploit the trademark’s goodwill to attract Internet users to the Respondent’s website and attempt to divert them to a competitor of the Complainant, likely for a commercial gain. In the Panel’s view, such use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use, and therefore does not give rise to rights and legitimate interests of the Respondent in the disputed domain name.
In addition, the Panel notes, the nature of the disputed domain name is almost identical to the OZ LOTTO trademark. The Panel finds that the nature of the disputed domain name carries a high risk of implied affiliation, irrespective of the disclaimer on the website, which in any case the Panel does not find to be prominent (see section 2.5.1 of the WIPO Overview 3.0).
Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
As discussed above, the disputed domain name fully incorporates the OZ LOTTO trademark and is linked to a website that features the OZ LOTTO trademark and contains information and results about the lotteries organized by the Complainant, but also features the title “Buy, check and win” and contains links inviting users to “buy tickets” which redirect to a third party lottery website that competes with the Complainant.
The Respondent’s website indeed includes a disclaimer, but it is not prominent and may remain unnoticed given the vast amount of other information on the website. As summarized in section 3.7 of the WIPO Overview 3.0, where the overall circumstances of a case point to the respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith. In such cases, UDRP panels may consider the respondent’s use of a disclaimer as an admission by the respondent that users may be confused.
Taking all the above into account, the Panel accepts that the Respondent has registered and used the disputed domain name in bad faith targeting the Complainant. By creating a likelihood of confusion with the Complainant’s OZ LOTTO trademark, the Respondent has attempted to attract traffic to the disputed domain name by confusing Internet users that they are reaching an online location of the Complainant and then to divert them to a competitor of the Complainant or to other third parties likely for commercial gain.
Therefore, the Panel finds that the disputed domain name has been registered and used in bad faith.
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 name <oz-lotto.com> be transferred to the Complainant.
Date: August 19, 2019