WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lottoland Holdings Ltd. v. Privacy Guardian / Sky Wits

Case No. D2020-2665

1. The Parties

The Complainant is Lottoland Holdings Ltd., Gibraltar, United Kingdom, represented by Dentons UK and Middle East LLP, United Kingdom.

The Respondent is Privacy Guardian, United States of America (“United States”) / Sky Wits, South Africa.

2. The Domain Name and Registrar

The disputed domain name <lottoland.games> (the “Domain Name”) is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2020. On October 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 13, 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 October 14, 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 amended Complaint on October 14, 2020.

The Center verified that the Complaint, together with the amended 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 October 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 4, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 5, 2020.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on November 10, 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 a limited company registered and headquartered in Gibraltar, United Kingdom. The Complaint recounts that the Complainant “has operated under the consumer-facing brand LOTTOLAND since 2013” and that the Lottoland Group now has 280 global employees, with global revenues exceeding EUR 300 million from a market presence chiefly in the United Kingdom, Ireland, Gibraltar, United Kingdom, Germany, Austria, Sweden, Slovakia, Brazil, Australia, India, South Africa, Hungary, New Zealand, and Mexico. The Complainant operates websites at “www.lottoland.com”, “www.lottoland.eu”, “www.lottoland.asia”, “www.lottoland.at”, “www.lottoland.co.uk”, “www.lottoland.ie”, “www.lottoland.com.au”, “www.lottoland.se”, “www.lottoland.co.za”, “www.lottoland.it”, and “www.lottoland.gi”.

The Complainant currently holds the following trademark registrations for LOTTOLAND as a word mark:

The Registrar reports that the Domain Name was created on March 6, 2020 and registered in the name of a domain privacy service. After receiving notice of this dispute, the Registrar identified the registrant as the Respondent Sky Wits, listing as an address a post box in a suburb of Cape Town, South Africa.

The Domain Name has been associated only with a parking page that displays third-party pay-per-click (“PPC”) advertising links, some of them to competing online gambling sites. A screenshot attached to the Complaint shows that the parking page formerly linked to a page offering the Domain Name for sale for EUR 29,995. At the time of this Decision, a link at the bottom of the page leads instead to a Sedo GmbH webpage with a message offering to inform the Domain Name owner about domain name monetization.

The Complainant made an offer through the Registrar in July 2020 to purchase the Domain Name for EUR 500, without identifying itself, but received no response. In August 2020, the Complainant sent a cease-and-desist letter, apparently without reply.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Name is comprised exclusively of a string identical to the Complainant’s registered trademark LOTTOLAND, as it is “well-established that the top-level domain name should be disregarded for the purpose of determining identical or confusingly similarity”.

The Complainant contends that the Respondent has no evident rights or legitimate interests in the Domain Name, as the Respondent has no permission from the Complainant to use the Complainant’s mark and has merely parked the Domain Name for PPC advertising.

The Complainant argues that the Respondent’s use of the Domain Name for a PPC landing page and efforts to sell the Domain Name for an amount far in excess of likely out-of-pocket costs reflect bad faith, an inference reinforced by the Respondent’s conduct in concealing its identity and failing to respond to communications.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(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.

Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

A. Identical or Confusingly Similar

The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The Complainant holds trademark registrations for the word mark LOTTOLAND, which is identical to the Domain Name. As usual, the generic Top-Level Domain (“gTLD”) “.games” is disregarded as a standard registration requirement. See WIPO Overview 3.0, section 1.11.2.

The Panel concludes that the Complainant has established the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the respondent may establish rights or legitimate interests in the domain name, by demonstrating any of the following:

(i) before any notice to it 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) that the respondent has been commonly known by the domain name, even if it 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.

Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.

The Complainant in this proceeding has demonstrated trademark rights and the lack of evident rights or legitimate interests on the part of the Respondent, as the Respondent lacks permission to use the mark and has not posted an associated, substantive website. The Respondent has not come forward to claim rights or legitimate interests in the Domain Name. The Panel concludes, therefore, that the Complainant prevails on the second element of the Policy.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):

“(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

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The record demonstrates that the Complainant’s online business associated with the distinctive and coined LOTTOLAND mark is substantial and international, and that it was well established by March 2020 when the Respondent registered the Domain Name. The Complainant holds many domain names consisting simply of the LOTTOLAND mark and a gTLD or country code Top-Level Domain, used for online gaming sites. The Panel finds it probable that the Respondent registered the Domain Name with the mark in contemplation when creating a Domain Name consisting precisely of that mark in the gTLD “.games”.

The Respondent has not approached the Complainant with an offer to sell the Domain Name and did not respond to the Complainant’s anonymous offer to purchase it for a much smaller amount than advertised. Thus, the evidence is equivocal concerning the Respondent’s “primary” intent to sell the Domain Name to the Complainant or a competitor, despite the large asking price that was advertised. In any event, parking the Domain Name indefinitely for PPC advertising purposes corresponds with the example of bad faith cited in the Policy, paragraph 4(b)(iv) (misdirecting Internet users for commercial gain). The Respondent’s obscured identity and failure to communicate in response to allegations of trademark and Policy violations also support an inference of bad faith.

The Panel concludes that the Complainant has established the third element of the Complaint, bad faith.

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 Domain Name, <lottoland.games>, be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist
Date: November 24, 2020