WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Lotter Enterprises Limited v. NG, Ying Fat
Case No. DAU2016-0047
1. The Parties
The Complainant is The Lotter Enterprises Limited of Belize City, Belize, represented by Eran Price, Belize.
The Respondent is NG, Ying Fat, of Glengowrie, Australia.
2. The Domain Name and Registrar
The disputed domain name <thelotter.com.au> (the “Domain Name”) is registered with Drop.com.au Pty Ltd (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2016. That day the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 25, 2016, 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 .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 December 6, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was December 26, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2016.
The Center appointed Alan L. Limbury as the sole panelist in this matter on January 9, 2017. 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 incorporated in Belize on March 13, 2007. Through the website at its domain name <thelotter.com>, which was originally registered on February 28, 2001 and which has been used since at least November 29, 2002, the Complainant provides services relating to lotteries, including enabling consumers to purchase lottery tickets issued by official lotteries worldwide.
On December 17, 2013 the Complainant registered United States of America service mark No. 4,450,365 on the Principal Register, claiming the colours black and red as a feature of the mark. The Complainant had registered the same mark in the European Union on May 24, 2013, with Registration No. 011457173.
The Domain Name, according to the Registrar, was created on July 24, 2009. The Registrar also stated in its verification response: “Unsure when the current registrant got the domain, but at least as far back as 2011”.
The Domain Name currently resolves to a website displaying sponsored links including, among others, “Lotto”, “Lottery”, “Enter to Win Money”, “Instant Win Cash Sweepstakes”, and “How to win the lottery”.
A disclaimer in fine print beneath a 2016 copyright notice at the foot of the home page reads:
“The Sponsored Listings displayed above are served automatically by a third party. Neither the service provider nor the domain owner maintain any relationship with the advertisers. In case of trademark issues please contact the domain owner directly (contact information can be found in whois).”
The Respondent did not reply to two cease and desist letters from the Complainant’s representative.
5. Parties’ Contentions
The Complainant says that by the time the Domain Name was registered, the Complainant had acquired, though use, common law rights in the trademark THE LOTTER, which the Complainant defines as “the Trade Mark”. It says the Domain Name is identical or, at the very least, confusingly similar to that mark and that the Respondent has no rights or legitimate interests in respect of the Domain Name, which was registered and is being used in bad faith.
As to legitimacy, the Complainant says that when the Domain Name was registered, the Trade Mark was well-known in the online lottery related services industry, in which the Complainant had been operating under the Trade Mark for over a decade. To the best knowledge of the Complainant, the Respondent was not commonly known by or associated with the Trade Mark prior to registration of the Domain Name. The Respondent does not use the Trade Mark for a non-commercial legitimate reason. Consumers seeking to locate the service offered by the Complainant will likely assume that the service offered under the Domain Name is associated with that of the Complainant. The Respondent is clearly aware of this and has attempted to take advantage of such confusion for commercial gain. Therefore, the Respondent cannot be regarded as making non-commercial or fair use of the Domain Name and thus does not have any rights or legitimate interests in the Trade Mark, pursuant to the Policy, paragraph 4(c)(iii).
As to bad faith, the Complainant says the Respondent is diverting Internet users to its website for commercial gain. The Respondent’s website constitutes links marketing different other websites. The Respondent’s website is clearly a commercial business and, therefore, the Respondent must have some commercial purpose in operating its website. By operating a website utilising a domain name which is identical to the Trade Mark, and to the Complainant’s domain name, <thelotter.com> (under which the Complainant’s service is offered), the Respondent is causing confusion, since Internet users may assume that the Respondent’s website is associated with the Complainant or its website. In light of the above, the circumstances set out in Paragraph 4(b)(iv) of the Policy undoubtedly exist in order to determine that the Respondent’s registration and use of the Domain Name are in bad faith.
The Respondent did not submit any response.
6. Discussion and Findings
Under Paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.” In the absence of a Response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based upon the complaint”. In the event of such a “default” the Panel is required under paragraph 14(a) of the Rules “to proceed to a decision on the complaint”, whilst under paragraph 14(b) of the Rules the Panel “shall draw such inferences therefrom as it considers appropriate”.
Paragraph 4(a) of the .auDRP requires the Complainant to prove three elements:
(i) the Domain Name is identical or confusingly similar to a name (Note 1), 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 (Note 2); and
(iii) the Domain Name has been registered or subsequently used in bad faith.
For the purposes of this policy, auDA has determined that a “name … in which the complainant has rights” refers to:
(a) the complainant’s company, business or other legal or trading name, as registered with the relevant Australian government authority; or
(b) the complainant’s personal name.
For the purposes of this policy, auDA has determined that “rights or legitimate interests in respect of the domain name” are not established merely by a registrar’s determination that the respondent ostensibly satisfied the relevant eligibility criteria for the domain name at the time of registration.
A. Identical or Confusingly Similar
The Complainant does not claim rights in a name, as defined in Note 1 to paragraph 4(a) of the .auDRP.
The Complainant defines THE LOTTER as “the Trade Mark” and contends that it has common law rights in that mark. Elsewhere the Complainant uses the expression “the Trade Mark” in relation to the mark in which it has rights as registrant in the United States and the European Union. The Panel will therefore consider both marks under this heading.
As to the mark THE LOTTER, the evidence required to establish common law trademark rights under the .auDRP is the same as under the Uniform Domain Name Dispute Resolution Policy (“ UDRP”). The auDA auDRP Overview of Panel Views on Selected auDRP Questions First Edition (“auDA Overview 1.0”), paragraph 1.7 relevantly provides:
“Under the .auDRP the requirement that the complainant has rights in a trademark or service mark is satisfied where the complainant can show that a name has acquired ‘secondary meaning’ and become a distinctive identifier associated with the complainant or its goods or services – i.e., that it is a common law or unregistered trademark. Evidence relevant to establishing such secondary meaning includes the length and amount of sales under the name, the nature and extent of advertising using the name, surveys of consumer recognition of the name, and media references to the name... To constitute a common law or unregistered trademark, the name does not need to be famous or well known. The key requirement is that the name has sufficient distinctiveness so as to be able to act as a badge of origin that distinguishes the goods or services of the complainant from those of other traders. However, merely trading under a name does not make that name distinctive... Operating a website which corresponds to an unregistered mark, and using that website in connection with business, will not necessarily give common law rights in that mark...”
The position under the .auDRP does, however, differ in a limiting respect from the UDRP. In this regard the auDA Overview 1.0, paragraph 1.1B provides:
“Where the complainant does not have a registered trademark, it must establish that it has unregistered trademark rights in Australia; evidence that it has unregistered trademark rights outside of Australia is insufficient. For unregistered trademark rights to exist in Australia, the complainant must have a reputation in Australia in respect of the unregistered trademark... Where there is no evidence (such as sales and revenue data) that the complainant has traded in Australia using the unregistered trademark, it is unlikely the complainant will be able to establish the existence of a reputation for the mark in Australia – with the likely result being that the complainant will not be able to satisfy the requirements of paragraph 4(a)(i) of the Policy.”
In one of the cases cited in support of this paragraph, We Buy Any Car Limited v. Highway Auto Mart and Jason Collings, WIPO Case No. DAU2012-0004, the panel said:
“The Complainant has a clear and established reputation in the United Kingdom for the mark WEBUYANYCAR.COM. The panel was referred to multiple decisions of UDRP and Nominet panels confirming the reputation of the Complainant in the United Kingdom. The Complainant may also have reputation elsewhere, but it has never, even according to its own Complaint, traded in Australia. The Panel refers to the decision in GE Capital Finance Australasia Pty Ltd v. Dental Financial Services Pty Ltd, [ WIPO Case No. DAU2004-0007, <carecredit.com.au>] in which the panel said that it cannot be assumed merely because of a complainant’s assertions that international trademarks are known in a country or that the reputation would enure to the benefit to the complainant.
Despite the Complainant’s assertions that there has been Australian traffic to its website, this is not sufficient, of itself, to establish reputation in Australia. Indeed, it seems to the Panel inherently unlikely that an Australian consumer would sell a motor vehicle in Australia through a United Kingdom-based website and business that does not purport to offer services in Australia. The Panel therefore finds that the Complainant does not have sufficient reputation in Australia to establish unregistered rights in Australia.”
In the present case the Complainant has not directly addressed the question whether it has common law trademark rights in Australia in THE LOTTER. There is no evidence (such as sales and revenue data) that the Complainant has traded in Australia using the claimed unregistered trademark, although it does appear from the websites of the Complainant’s affiliates, to which the Complaint refers, that the Complainant, through its website “www.thelotter.com”, sells lottery tickets in numerous lotteries around the world, including five Australian lotteries. Those affiliate websites acknowledge that the Complainant’s ticket prices are generally regarded as expensive, so the advantage in using the Complainant’s services (apart from security of payment of any winnings) is that players may participate in lotteries in countries other than their own, which normally require ticket purchasers to be present in person. The Complainant arranges for representatives in the various countries to buy tickets on behalf of its customers.
This indicates that customers for tickets in Australian lotteries are more likely to be from outside Australia, since buying from a local Australian newsagent is cheaper than buying from the Complainant, and that customers of the Complainant from Australia are likely to purchase tickets in lotteries conducted outside Australia.
Although the Complainant provides an Australian helpline for Australian customers and claims worldwide advertising expenditure in recent years in the order of USD 2 million, there is no evidence before the Panel of any recognition of the Complainant in Australia, nor of any sales or advertising by the Complainant in Australia nor of the volume of any visitors to the Complainant’s website from Australia. Although the services offered by the Complainant are more likely to attract Australian customers than was the case in We Buy Any Car (supra), the Panel is unable, on the evidence provided by the Complainant, to conclude that the Complainant has, at least in terms of common law rights under the Policy, a reputation in Australia in respect of its claimed unregistered trademark THE LOTTER.
Accordingly, for the purposes of the Policy, the Complainant has not established that it has common law rights in Australia in THE LOTTER.
As to the registered mark, the auDA Overview 1.0, paragraph 1.11 notes that as figurative, stylized or design elements in a trademark are generally incapable of representation in a domain name, such elements are typically disregarded for the purpose of assessing the identity or confusing similarity of a domain name with a trademark. Accordingly, the assessment is generally made between the alpha-numeric components of the domain name and the dominant textual components of the relevant trademark. Adopting this approach and disregarding the inconsequential suffix “.com.au”, the Panel finds that the Domain Name is not identical to THE LOTTER PLAYING IT GLOBAL mark.
The test for confusing similarity, as under the UDRP, is as stated in Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743:
“Panels have routinely held that the question under paragraph 4(a)(i) of the Policy is simply whether the alphanumeric string comprising the challenged domain name is identical to the Complainan’'s mark or sufficiently approximates it, visually or phonetically, so that the domain name on its face is ‘confusingly similar’ to the mark.”
Confusion in this context, in the sense of bewilderment or failing to distinguish between things, may be regarded as a state of wondering whether there is an association, rather than a state of erroneously believing that there is one. An appropriate formulation might be: “Is it likely that, because of the similarity between the domain name on the one hand and the Complainant’s trademark on the other hand, people will wonder whether the domain name is associated in some way with the Complainant?”. See Liberty Utilities (America) Co. v. Christopher Ohrstrom, WIPO Case No. D2016-2062, citing Red Bull GmbH v. Paul Battista, WIPO Case No. D2010-0353 and SANOFI-AVENTIS v. Jason Trevenio, WIPO Case No. D2007‑0648.
The word “Lotter” is clearly the most prominent element of the Complainant’s mark. The Panel considers that Internet users familiar with the Complainant’s registered mark will likely wonder whether the Domain Name is associated in some way with the Complainant.
Accordingly the Panel finds that the Complainant has established that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
The Complainant has established this element.
B. Rights or Legitimate Interests
The Policy, paragraph 4(a)(ii) is expressed in the present tense. Accordingly the relevant issue is whether, irrespective of the situation at the time of registration of the Domain Name, the Respondent presently has rights or legitimate interests in respect of the Domain Name.
The Policy, paragraph 4(c) provides that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, are to be taken to demonstrate the Respondent’s rights or legitimate interests in the Domain Name for purposes of the Policy, paragraph 4(a)(ii):
(i) before any notice to the Respondent of the subject matter of the dispute, the Respondent’s bona fide use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with an offering of goods or services (not being the offering of domain names that the Respondent has acquired for the purpose of selling, renting or otherwise transferring); or
(ii) the Respondent (as an individual, business, or other organisation) 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 non-commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trademark or service mark at issue.
A complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests and will do so usually by establishing that none of the Policy, paragraph 4(c) circumstances are present. Once such a prima facie case is made, the burden of production shifts to the respondent, requiring it to provide evidence or plausible assertions demonstrating rights or legitimate interests in the domain name. See the auDA Overview 1.0, paragraph 2.1.
On the evidence available in this proceeding, the Panel does not accept the Complainant’s submission that when the Domain Name was registered, the claimed common law trademark THE LOTTER was well-known in the online lottery related services industry. The Complainant’s registered trademarks had not then been applied for. The Complainant alleges that the Respondent was never commonly known by the Domain Name and that the Respondent does not use the Domain Name for any non-commercial or fair use. However, the Panel finds that taken as a whole the Complainant’s contentions suffice to establish a prima facie case of absence of rights or legitimate interests in the Domain Name on the part of the Respondent.
In the absence of any Response, the Panel finds that the Complainant has established this element.
C. Registered or subsequently used in bad faith
The Policy, paragraph 4(b) sets out, for the purposes of Policy, Paragraph 4(a)(iii), certain circumstances which, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration or use of the Domain Name in bad faith. The Complainant invokes paragraph 4(b)(iv):
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the Complainant's name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location.
The Domain Name was registered on July 24, 2009. It is unclear whether the Respondent was the registrant at that time. According to the Registrar, the Respondent became the registrant “at least as far back as 2011”.
Whichever is the relevant date, by the time the Respondent became the registrant of the Domain Name, the Complainant had been incorporated and was using the domain name <thelotter.com> for its website, providing services relating to lotteries. However, it had not applied to register its
mark in either the United States or the European Union and, as the Panel has already found, had no common law rights in Australia to the mark THE LOTTER.
Under these circumstances the Panel is not persuaded that the Respondent was aware of the Complainant when registering the Domain Name and accordingly finds that the Complainant has not established that the Domain Name was registered in bad faith.
According to the auDA Overview 1.0, paragraph 3.1:
“Paragraph 4(a)(iii) of the auDRP requires that the domain name has been registered or subsequently used in bad faith for the third requirement to be satisfied. Unlike the equivalent provision in the UDRP, the word ‘and’ is not used; thus, the issue of whether a complainant must establish both bad faith registration and bad faith use does not arise. As a result, registration – even one that is demonstrably in good faith – of the domain name prior to the complainant acquiring rights in its mark or name will not protect a respondent from a finding that the third requirement is satisfied where it is established that the respondent subsequently used the domain name in bad faith.”
As at the date of the filing of the Complaint, the Domain Name is confusingly similar to the Complainant’s
mark and the Complainant’s website is much better known than it was when the Domain Name was registered. The Domain Name currently resolves to a website displaying sponsored links including, among others, “Lotto”, “Lottery”, “Enter to Win Money”, “Instant Win Cash Sweepstakes”, and “How to win the lottery”. The disclaimer in fine print says: “The Sponsored Listings displayed above are served automatically by a third party.” According to the auDA Overview 1.0, paragraph 3.8:
“It appears that no auDRP case has yet addressed the issue of third party or automatically-generated material appearing on a website. Thus, it is not clear whether – and, if so, in what circumstances – third party or automatically-generated material appearing on a website to which the domain name resolves can form a basis for finding use of the domain name to be in bad faith.”
In the absence of any auDRP case that has addressed this issue, the Panel takes guidance from the corresponding paragraph of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) which, omitting cited cases, reads:
“3.8 Panels have found that a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content - for example, in the case of advertising links appearing on an ‘automatically’ generated basis. To the extent that the presence of certain advertising or links under such arrangement may constitute evidence of bad faith use of the relevant domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third-party trademarks. It may not be necessary for the registrant itself to have profited directly under such arrangement in order to establish bad faith use under paragraph 4(b)(iv) of the UDRP. It would normally be sufficient to show that profit or ‘commercial gain’ was made by a third party, such as by the operator of an advertising revenue arrangement applicable to the registrant, or a domain name parking service used by the registrant. Reasons may include that a rights holder should be able to rely on the registrant for enforcement purposes, or that such registrant has undertaken not to infringe third party rights in its registration agreement (see paragraph 2 of the UDRP)……Some panels have found that the inclusion of such advertising links may not necessarily be a basis for finding respondent bad faith where shown to be genuinely automated, and there is no evidence that the respondent influenced the advertising content, and the respondent credibly denies knowledge of the complainant’s trademark and there is no evidence of the respondent previously being put on notice of such mark, and other indicia of cybersquatting are not present.”
In the absence of any Response denying the Complainant’s contentions and explaining the Respondent’s conduct, the Panel finds that, following registration of the Domain Name, the Respondent did become aware of the Complainant and, by using the Domain Name to resolve to a website displaying automated lottery-related links, has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainants to the source, sponsorship, affiliation, or endorsement of that website. Accordingly the Panel finds that the Respondent has used the Domain Name in bad faith.
The Complainant has established this element.
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.com.au> be transferred to the Complainant provided the Complainant fulfills the eligibility criteria set out in Schedule C of the Australian Domain Name Authority’s Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs (2012-04) for ownership of the Domain Name. Failing that, the Panel orders that the Domain Name <thelotter.com.au> be cancelled.
Alan L. Limbury
Date: January 20, 2017