The Complainant is La Française des Jeux of Boulogne-Billancourt, France, represented by Inlex IP Expertise, France.
The Respondent is Elliott Stambouli of Nicosia, Cyprus.
2. The Domain Name and Registrar
The disputed domain name <lotofrance.info> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2007. On March 12, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On March 15, 2007, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 15, 2007. In accordance with paragraph 5(a) of the Rules, the due date for Response was April 4, 2007. The Response was filed with the Center on March 20, 2007.
The Center appointed Brigitte Joppich as the sole panelist in this matter on April 12, 2007. 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 paragraph 7 of the Rules.
In addition, the Center received a supplemental submission
from the Complainant on April 20, 2007 by e-mail and on April 23, 2007 by fax.
On April 23, 2007, the Respondent sent comments by e-mail to the Center in reaction
to the Complainant’s supplemental filing.
4. Factual Background
The Complainant is the French State lottery, La Française des Jeux, creating, developing and marketing lottery and sports betting games under the mark LOTO in France and in the French overseas departments and territories. Accordingly, the Complainant is the holder of numerous trademarks containing the term “Loto”, inter alia the French trademark LOTO (number 1435425) registered on April 23, 1983 and the CTM FRANCE LOTO (number 002178788) registered on June 20, 2003 (the “LOTO Marks”). Two of the LOTO Marks have been registered for lottery activities in 2002 and 2003 respectively on the basis of their distinctiveness acquired due to intensive use.
The Complainant originally identified “Domain for sale on behalf of customer Domain For sale on behalf of customer c/o Mr. Elliott Stambouli” as Respondent, while pointing out that Elliott Stambouli communicated with the Complainant prior to the filing of the Complaint without contesting that he was the owner of the disputed domain name. eNom also confirmed to the Center that Elliott Stambouli was the owner of the disputed domain name. Finally, Elliott Stambouli referred to himself as the Respondent in this case in his Response. As a result, “Domain for sale on behalf of customer” is apparently only a labeling that can be neglected for purposes of these administrative proceedings, and the Panel will regard Elliott Stambouli as the correct and only Respondent.
The Respondent registered the domain name <lotofrance.info>
on May 10, 2006. He used the logo of one of the LOTO Marks on the website under
the disputed domain name, followed by ®, mentioning that it was a registered
trademark of the Complainant.
5. Parties’ Contentions
A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy, are given in the present case:
(i) The domain name is identical to the Complainant’s trademarks as it only changes the order of the words of its CTM FRANCE LOTO and fully contains the term “Loto” while merely adding a country name that is not distinctive here. The LOTO Marks are distinctive and well known.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name for several reasons: The LOTO Marks of the Complainant are well-known in France, the Complainant has never authorized the Respondent to use its LOTO Marks (more particularly, there is no commercial relationship between the parties and the Respondent has infringed the Complainant’s trademark rights) and the Respondent uses the disputed domain name to redirect Internet users to its personal website in French language promoting a book on the “Loto” game, which is contrary to the public interest safeguarded by the Complainant as a semi-public company.
(iii) The domain name was registered and is used in bad faith: The Complainant contends that the Respondent was well aware of the fact that he needed the Complainant’s consent for the use of the LOTO Marks when he registered the domain name, that the LOTO Marks are famous, that the registration of the domain name occurred with the intention to profit from the notoriety of the LOTO Marks, and that the Respondent intended to use the reputation of the LOTO Marks fraudulently and in bad faith to attract consumers to its website for commercial gain.
B. Respondent
In his Response, the Respondent claims that none of the three elements specified in paragraph 4(a) of the Policy are given in the present case:
(i) The Respondent contends that the Complainant has no right to monopolize the word “loto”, even more so as the Respondent added the suffix “france” and does not use the word “loto” for a game but to promote his book and to explain the game operated by the Complainant. The Respondent claims that he already registered the domain name <lotofrance.net> in 2000, while the Complainant did not even bother to register other, “basic” LOTO domain names. The Respondent published a book on the “Loto” game in Israel in 1999 and kept the domain name <lotofrance.net> to use it for the promotion of such book, also in other territories. The Respondent further contends that he is not competing with the Complainant and that the domain is not confusingly similar to the LOTO Marks. The Respondent finally states that it was he himself who informed the Complainant of the existence of the disputed domain name.
(ii) The Respondent contends that he has a direct interest in the use of the domain name as he has written a book on the “Loto” game and intends to promote his book and not to mislead any potential visitors of his website. He maintains that he can rely on a legitimate right in the domain name as he has used the domain name <lotofrance.net> since 2000 without any objections from the Complainant.
(iii) The Respondent finally claims that there is
no bad faith use or registration as he is not a competitor of the Complainant
and does not disrupt the Complainant’s business. When he used the logo
of the Complainant he always did so mentioning that it was a registered trademark
of the Complainant. He is convinced that the Complainant is trying to harass
him.
6. Discussion and Findings
Many issues discussed by the parties in the Complaint and the Response cannot and must not be dealt with under the limited scope of the Policy. These include the questions of whether the slogan “Loto, c’est enfin votre tour” or the use of the LOTO Marks or reproductions in the Respondent’s book infringe rights of the Complainant as well as the dispute about the accurateness of the Respondent’s theses.
The first point to be discussed is the admissibility of both parties’ supplemental submissions.
The Rules do not allow the parties to file supplemental submissions on their own volition and paragraph 12 of the Rules provides that a Panel may in its sole discretion request further statements or documents from either of the parties. Thus, no party has the right to insist upon the admission of additional arguments or evidence.
Grounds justifying new submissions are above all the
existence of new pertinent facts that did not arise until after the complaint
was filed. For instance, if the respondent raises objections that could not
have been anticipated when the complaint was filed, the panel can give the complainant
a right to reply to the submission or may accept the complainant’s unsolicited
additional submission (see Universal City Studios, Inc. v. G.A.B. Enterprises,
WIPO Case No. D2000-0416 - <fieldofdreams.com>;
QNX Software Systems Ltd. v. Future Media Architects, Inc. and Thunayan K
AL-Ghanim, WIPO Case No. D2003-0921
- <qnx.info>; Goldline International, Inc. v. Gold Line, WIPO
Case No. D2000-1151 - <goldline.com>).
The Complainant does not cite any exceptional circumstances necessitating further submissions, nor does the Reply itself disclose any new facts or new legal authority not available at the time the Complaint was submitted. Instead, the Complainant appears to have submitted the Reply solely to reciprocate the arguments presented in the Response. Such a reply is not justified under the Rules. Neither is the supplemental submission by the Respondent admissible in the absence of any of such circumstances.
The Panel is able to decide this case on the facts submitted in the Complaint and the Response. Therefore, the Panel elects not to accept either of the supplemental submissions and has not relied on them in reaching this decision.
Under the Policy, paragraph 4(a), the Complainant must prove that each of the following three elements is present:
(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.
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s
LOTO Marks in which the Complainant has exclusive rights. The mere addition
of the geographical denomination “France” following the trademark
does not eliminate the similarity between the LOTO Marks and the domain name,
even more so, as one of the LOTO Marks also contains the word “France”,
i.e. the Complainant’s CTM “FRANCE LOTO”. It is well established
that a domain name that wholly incorporates a trademark may be confusingly similar
to such trademark for purposes of the Policy despite the addition of a geographical
identifier (cf. Universal City Studios, Inc. v. Meeting Point Co., WIPO
Case No. D2000-1245 - <osakauniversalstudios> et al.; La Poste
contre la Société L et Cie, WIPO Case
No. D2001-1253 - <la-poste-versailles.com>).
Furthermore, it is also well established that the
specific top level domain name is not an element of distinctiveness that can
be taken into consideration when evaluating the identity and similarity of the
complainant’s trademark and the disputed domain name (cf. Magnum Piering,
Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO
Case No. D2000-1525 - <magnumpiering.com> et al.; Phenomedia AG
v. Meta Verzeichnis Com, WIPO Case No.
D2001-0374 - <moor-huhn.com>).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent 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 non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the service marks at issue.
The Respondent wishes to rely on paragraph 4(c)(i) of the Policy, arguing that he used the website under the disputed domain name in search of an editor for his book dealing with “Loto” strategies in France already before any notice of the dispute. Such notice was given either by way of the Complainant’s letter dated July 21, 2006 or by way of the Complainant’s letter dated September 19, 2006. In any case, in its correspondence with the Complainant, the Respondent referred to the preparation of his website under the disputed domain name prior to such date (cf. Annex 09 to the Response).
The critical issue here is whether the Respondent can claim a bona fide offering of services. While he states that “Loto” is a game practiced under this name (or variations thereof) all over the world and that the Complainant has no right to monopolize its name, he concedes that he made his first contact with the Complainant in 1979 and always knew about the Complainant’s trademark rights. However, he felt that he needed the Complainant’s authorization to use the “Loto” logo on his website under the disputed domain name and asked on June 16, 2006 explicitly for the Complainant’s consent to such use (cf. Annex 09 to the Response).
The Respondent is wrong in his conclusion that his
request for the Complainant’s consent to such use saves him from acting
in bad faith. The unauthorized use of the complainant’s logo by the respondent
on his website has been considered as an indication of bad faith before (cf.
Kyocera Mita Corporation and Kyocera Mita America, Inc. v. Office Land,
WIPO Case No. D2000-0385 - <copystar.com>).
The apparent infringement of the Complainant’s trademark rights goes against
any claim of legitimate interest that Respondent may make in relation to the
publishing of his book. It makes no difference in this context that the Respondent
always made it clear that the trademarks in question belonged to the Complainant.
The Panel is inclined to follow the Complainant’s argumentation that the
“Loto” logo and trademarks were used by the Respondent with the
aim to create traffic and attract customers of the Complainant to the Respondent’s
business, in particular to advertise his book while profiting from the goodwill
attached to the Complainant’s name. The subsequent deletion of the logo
from the website is of no relevance here.
In conclusion, the Panel therefore finds that the Respondent cannot rely on legitimate rights or interest under paragraph 4(c)(i) of the Policy.
The Respondent also tries to rely on a non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the service marks at issue under paragraph 4(c)(iii) of the Policy. Again, the Panel is not convinced of the legitimacy of the Respondent’s conduct. The first question is whether looking for an editor might in principle be considered as non-commercial or fair use, given that the disputed domain name has direct relevance to the underlying work of the Respondent. This approach is questionable, however, as such search is only the first step towards a later commercialization of the Respondent’s work. In any case, the use of the Complainant’s “Loto” logo goes against Respondent’s claim of a legitimate interest and must therefore under these facts be considered as having occurred for commercial gain to misleadingly divert customers.
As a result, the Respondent cannot rely on rights or legitimate interests under paragraph 4(c)(iii) of the Policy either and the requirements of paragraph 4(a)(ii) of the Policy are met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which for purposes of paragraph 4(a)(iii) of the Policy shall be evidence of the registration and use of the domain name in bad faith, including
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.
The two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered and is being used in bad faith.
The Respondent does not deny knowledge about the LOTO Marks when he registered the disputed domain name and has also revealed such knowledge by using the Complainant’s logo on his website. The domain name was therefore registered in bad faith.
For the reasons already given, the Panel also finds that the Respondent who seemingly has infringed the Complainant’s trademark rights by copying the “Loto” logo used the domain name in bad faith under paragraph 4(b)(iv) of the Policy. The Respondent has fully incorporated the Loto Marks into the domain name and used the Complainant’s logo on his website in order to advertise his book and search for an editor. Thereby, the Respondent has created a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and tried to divert Internet users to such website for commercial gain.
As a result, the Complainant has also established registration and use in bad
faith under paragraph 4(a)(iii) of the Policy.
7. Decision
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 <lotofrance.info> be transferred to the Complainant.
Brigitte Joppich
Sole Panelist
Dated: April 26, 2007
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