WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

S.L.E. Services aux Loteries en Europe v. Oleksii Kovalskyi, Afesto H.E.Ltd

Case No. D2020-0089

1. The Parties

The Complainant is S.L.E. Services aux Loteries en Europe, Belgium, represented by Inlex IP Expertise, France.

The Respondent is Oleksii Kovalskyi, Afesto H.E.Ltd, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <goldeuromillions.com> (the “Domain Name”) 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 January 15, 2020. On January 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 15, 2020, the Registrar 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. The Center sent an email communication to the Complainant on January 16, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 16, 2020.

On January 21, 2020, the Center received an email communication from the Respondent. Accordingly, on the same day, the Center sent to the Parties an email regarding possible settlement. On January 22 and 23, 2020, the Complainant commented on possible settlement, to which the Respondent did not reply.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 19, 2020. On February 17, 2020, the Respondent sent an email communication to the Center indicating its wish to settle. However, the Complainant did not comment on the latter communication and the Respondent did not submit any formal response. Accordingly, the Center notified to the Parties that it was proceeding to the panel appointment stage on February 28, 2020.

The Center appointed Olga Zalomiy as the sole panelist in this matter on March 6, 2020. 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 the company located in Brussels, which coordinates and organizes the implementation and operation of the EuroMillions game. The Complainant is the registered owner of several EUROMILLIONS trademarks, which includes:

- the European Union trademark EUROMILLIONS No. 002987568 that was registered on September 28, 2004; and

- the International Registration combined trademark EURO MILLIONS, No. 1398736 designating, among others, Russian Federation, that was registered on December 26, 2017.

The Respondent registered the Domain Name on July 10, 2019. The Domain Name used to direct to a website in Russian, which displayed the Complainant’s trademark.

On October 2, 2019, the Complainant’s representative emailed a cease and desist letter addressed to the Respondent at the contact address specified on the Respondent’s website. On October 25, 2019, the Complainant’s representative resent the October 2, 2019 cease and desist letter. The Respondent did not respond to the cease and desist letter.

When the Respondent learnt in the course of January 2020 that the Complainant had launched this Complaint, the Respondent submitted the following email on January 21, 2020:

“Dear Sirs!
I have read all your requirements. In turn, I sent a letter to the management of the site with an urgent request to fulfill all your claims. I hope that the conflict will be settled as soon as possible.
I offer my most sincere apologies for the trouble.
Kind Regards,
Kovalskyi Oleksii.”

Later the same date, the purported representative of the owner of the website connected to the Domain Name, sent an email that, in essence, inquired how it can assist residents of the Russian Federation to play the EuroMillions lottery without violation of the Complainant’s rights and apologized for the inconvenience. Upon receipt of the emails, the Center inquired if parties wished to explore settlement options and to suspend this proceeding.

On January 22, 2020, the Complainant’s representative sent an email that outlined conditions of its submission of a request to the Center for suspension of this proceeding.

On January 23, 2020, the Respondent’s representative responded with the following e-mail:

“We respect your rights. And, in this regard, we confirm that we accept your requirements to stop using our domain name and your name EuroMillions.
It will take us several days to change the nature of our work so as not to violate your rights.
Kind Regards,
Titova Daria”

On the same day the Respondent’s representative responded with the following terms: “Please tell us if you accept to suspend the URDP complaint proceeding and assign back the litigious domain name to our client during the suspension.”

The correspondence ended there. In absence of a suspension request, the Center moved to the notification of the Complaint.

On February 17, the Respondent sent an email stating the following: “We have fulfilled all your requirements. In particular, we no longer use the words “Euro Millions” in the logo of our site. We also stopped using the domain name “goldeuromillions”. We are ready to contribute to the return of the court fee, in connection with the pre-trial settlement of the dispute. We apologize for the inconvenience.”

Currently the website at the Domain Name displays the following text in Russian:

“Dear visitors, due to the insistence of the right owner, our site is being moved to the domain ˂GoldLottery.org˃. For our current and future registered customers, there will be no changes for the worse. Changes will always be only for the better!”
Then visitors of the Domain Name are automatically redirected to the “www.GoldLottery.org” website in the Russian language. The website is identical to the website that used to be associated with the Domain Name with the exception of the Complainant’s trademark that used to appear in the top left corner of the “Home” page. Now the Complainant’s trademark is only displayed in the bottom of the “Home” page.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to the Complainant’s EUROMILLIONS trademark because the Domain Name incorporates the Complainant’s trademark in its entirety. The Complainant argues that the inclusion of the word “gold” into the Domain Name would not prevent finding of confusing similarity because the word “gold” is related to the potential of winning of a lottery, which relates to the Complainant’s business. The Complainant submits that inclusion of the generic Top-Level Domain (“gTLD”) “.com” also does not prevent finding of confusing similarity between the Domain Name and the Complainant’s trademark because the gTLD is the standard registration requirement and should be disregarded as such.

The Complainant states that the Respondent has no rights or legitimate interests in respect of the Domain Name because the Respondent is not associated with the Complainant. The Complainant argues that the following circumstances support finding of lack of rights or legitimate interests: (i) Because the Respondent registered the Domain Name anonymously, it indicates that it is willing to hide its identity because he has no rights or legitimate interests in the Domain name; (ii) The website associated with the Domain Name does not reveal that the Respondent’s name is composed of the term “euromillions” or that the Respondent or its business is commonly known under the name of EUROMILLIONS. The Complainant asserts that the Domain Name is not used in connection with bona fide offering of goods or services, nor does it constitute a legitimate non-commercial fair use of the Domain Name.

The Complainant alleges that the Domain Name was registered and is being used in bad faith. The Complainant contends that the Respondent registered the Domain Name with the knowledge of the Complainant’s existence and its trademarks because the Complainant’s EUROMILLIONS trademark is well-known. The Complainant alleges that the Respondent’s failure to respond to it cease and desist letter demonstrates bad faith of the Respondent. The Complainant asserts that the Respondent intended to benefit from the notoriety of the Complainant’s trademark because the Respondent used the Domain Name to direct to a website in Russian, which provides information about lotteries. The Complainant argues that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creative a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or its service.

B. Respondent

The Respondent did not submit any formal response.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark 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 Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the UDRP, the Complainant must prove that the Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights.

The evidence of file shows that the Complainant owns the EU trademark registration for the EUROMILLIONS trademark and the International registration for the EURO MILLIONS mark. Pursuant to section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case”.

The Domain Name incorporates the Complainant’s EUROMILLIONS trademark and the word part of its EURO MILLIONS trademark in their entirety. The only difference between the Domain Name and the Complainant’s EUROMILLIONS trademark is the addition of the generic prefix “gold” and the gTLD “.com”. It is well established that in cases where the distinctive and prominent element¹ of a disputed domain name is the complainant’s mark and the only deviation from this is the inclusion of numbers, letters or a generic term² as a prefix or a suffix, such prefix or suffix does not negate the confusing similarity between the disputed domain name and the mark. “The applicable gTLD in a domain name … is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”.

In this case, neither the addition of the generic word “gold”, nor the addition of the gTLD “.com” negates the confusing similarity between the Domain Name and the Complainant’s trademarks. Thus, the Domain Name is identical or confusingly similar to the Complainant’s trademarks.

The first element of the UDRP has been satisfied.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the UDRP, the Complainant must make out a prima facie case in respect of the lack of rights or legitimate interests of the Respondent.

“To demonstrate rights or legitimate interests in a domain name, non-exclusive respondent defenses under UDRP paragraph 4(c) include the following:

(i) before any notice of the dispute, the respondent’s 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is 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.”³

UDRP panels tend to view settlement discussion between the parties as “admissible”, particularly insofar as such discussions may be relevant to addressing the parties ‘respective motivations. Specifically, “negotiations between UDRP parties [that] confirm that the respondent’s intent was merely to capitalize on the complainant’s rights …., … would be material to a panel’s assessment of bad faith⁴ ”.

The Complainant asserts that the Respondent has no rights or legitimate interests in the Domain Name because (i) the Complainant never authorized, consented to, or licensed the Respondent to use the EUROMILLIONS mark, (ii) the Respondent has never used the EUROMILLIONS mark in connection with bona fide offering or goods or services, and (iii) the Respondent has not been previously known by the Domain Names. The Respondent’s statements made in its emails of January-February 2020, imply that the Respondent has no rights or legitimate interests in the Domain Name. Specifically, the Respondent stated: “We respect your rights. And, in this regard, we confirm that we accept your requirements to stop using our domain name and your name EuroMillions”, “we no longer use the words “Euro Millions” in the logo of our site. We also stopped using the domain name “goldeuromillions”. We are ready to contribute to the return of the court fee, in connection with the pre-trial settlement of the dispute. We apologize for the inconvenience”. Therefore, the Panel finds that the Respondent has not rights or legitimate interests in the Domain Name.

The second element of the UDRP has been satisfied.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Domain Name was registered and is being used in bad faith.

For the purposes of paragraph 4(a)(iii), “bad faith” registration and use of a domain name can be established by a showing of circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to respondent’s website or other online location, by creating a likelihood of confusion with complainant’s mark as to source, sponsorship, affiliation or endorsement of respondent’s website or location, or of a product or service on respondent’s website or location.⁵

Prior UDRP panels have found “the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: …(ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful, (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name,…(vi) absence of any conceivable good faith use.” ⁶

Given the reputation of the Complainant’s trademark in Europe, lack of the Respondent’s own rights in the EUROMILLIONS mark; the fact that the Respondent used the Domain Name in connection with the website offering Internet users an opportunity to play the EUROMILLIONS’ lottery; and that the Respondent’s website used to prominently display the Complainant’s EUROMILLIONS trademark in the top and bottom of its “Home” page in absence of any information about the real owner of the EUROMILLIIONS mark, the Panel finds that the circumstances of this case support a finding that the Respondent registered the Domain Name to intentionally attempt to attract, for commercial gain, the Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with complainant’s mark as to source, sponsorship, affiliation or endorsement of the Respondent’s website or location, or of a product or service on Respondent’s website or location.

While the Respondent currently disabled the website associated with the Domain Name, it is using the Domain Name to redirect Internet users to the “www.goldLottery.org” website in the Russian language⁷ . The website is identical to the website that used to be associated with the Domain Name with the exception of the Complainant’s trademark that used to appear in the top left corner of the “Home” page. The only difference between the “www.goldLottery.org” and the website to which the Domain Name used to direct is that the Complainant’s trademark is only displayed in the bottom of the “Home” page. The “www.goldLottery.org” website also provides Internet users with the opportunity to play the EUROMILLIONS lottery. Thus, the Respondent continues to benefit from the notoriety of the Complainant’s trademark and continues using the Domain Name in bad faith.

The Complainant has satisfied the third element of the UDRP.

7. Decision

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, <goldeuromillions.com> be transferred to the Complainant.

Olga Zalomiy
Sole Panelist
Date: March 18, 2020

Section 1.7, WIPO Overview 3.0.

Section 1.8, WIPO Overview 3.0.

Section 2.1, WIPO Overview 3.0.

Section 3.10, WIPO Overview 3.0.

See Policy, paragraph 4(b)(iv).

Section 3.1.4, WIPO Overview 3.0.

The Panel visited the website at the Domain Name to obtain more information about the Respondent’s use, which the Panel is allowed to do under the well-established practice of the UDRP panelists. See, Section 4.8., WIPO Overview 3.0.