Complainant is La Francaise Des Jeux, Boulogne Billancourt, France, represented by Inlex Conseil, France.
Respondent is Oleg Filatov, Pikesville, Maryland, United States of America.
2. The Domain Name and Registrar
The disputed domain name <smsloto.net> is registered with Schlund + Partner AG.
3. Procedural History
The Complaint was filed (in French) with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2008. On April 24, 2008, the Center transmitted by email to Schlund + Partner AG a request for registrar verification in connection with the domain name at issue. On April 25, 2008, Schlund + Partner AG transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
As the Center noted that the disputed domain name is set to expire on July 26, 2008, it requested Schlund + Partner AG by email dated May 6, 2008 to confirm that the domain will be placed in registrar LOCK status, and that the domain name will remain in such status after the lapse of the expiry date until the UDRP proceedings are concluded. Schlund + Partner AG sent the requested confirmation by email of the same date and stated that it would automatically renew the disputed domain name if the administrative proceeding were still pending on July 26, 2008.
Also on May 6, 2008, the Center notified Complainant by email that according to the information received from the concerned registrar, the language of the registration agreement for the disputed domain name is English and that, accordingly, Complainant shall provide the Center with a translation of the Complaint (originally submitted in French) into English by May 11, 2008. Upon Complainant’s request, the Center extended this deadline by email dated May 6, 2008, until May 21, 2008. On May 16, 2008, Complainant sent an English version of the Complaint to the Center.
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 the Rules, Paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 22, 2008. In accordance with the Rules, Paragraph 5(a), the due date for Response was June 11, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 12, 2008.
The Center appointed Andrea Mondini as the sole panelist in this matter on July 1, 2008. 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
Complainant is a French company acting as a French state lottery, which creates, develops and markets gambling games and sports-betting games under the trademark LOTO throughout France. Complainant is the holder of numerous LOTO trademarks associated with other terms such as EURO, SUPER, FOOT, BLEU, PLUS, etc.
Inter alia, Complainant is the owner of the following French trademarks:
- Trademark LOTO n°1435425 filed on April 22, 1983 in classes 1 to 42;
- Trademark LOTOPHONE n°1394262 filed on January 8, 1987 in classes 35, 36, 38, 39 and 41;
- Trademark LOTO n°99782889 filed on March 25, 1999 in classes 1 to 42;
- Trademark LOTO n°99782890 filed on March 25, 1999 in classes 1 to 42;
- Trademark LOTO SURPRIZZ n°023178019 filed on August 2, 2002 in classes 9, 16, 28 and 41;
- Trademark SUPER LOTO n°95603714 filed on December 29, 1995 in classes 16, 28 and 41;
- Trademark LOTO n°023158601 filed on April 10, 2002 in classes 9, 16, 35, 38 and 41; and
Complainant further owns several domain names containing its trademark LOTO (“.net”, “.fr”, “.eu”, “.com”), for example:
<loto.eu> (reserved on March 9, 2006)
<loto.fr> (reserved on January 05, 2004)
<loto.tm.fr> (reserved on October 17, 1996)
<loto.tv> (reserved on January 19, 2004)
<loto.mobi> (reserved on September 26, 2006)
<lotophone.eu> (reserved on March 10, 2006)
<lotophone.tv> (reserved on February 27, 2004)
<lotofrance.com> (reserved on September 2004)
<loto-France.com> (reserved on April 21, 1997)
<loto-France.tv> (reserved on February 27, 2004)
<loto-France.net> (reserved on February 25, 2004)
<3615loto.fr> (reserved on February 28, 2005)
<3615loto.com> (reserved on February 23, 2000)
<as-loto.org> (reserved on December 11, 2006)
<euroloto.tv> (reserved on February 27, 2004)
<euroloto.eu> (reserved on June 10, 2006)
<euroloto.fr> (reserved on March 28, 2003)
<europaloto.eu> (reserved on July 10, 2006)
<europaloto.fr> (reserved on March 31, 2003)
<europa-loto.fr> (reserved on March 31, 2003)
<franceloto.fr> (reserved on January 12, 2004)
<franceloto.eu> (reserved on March 26, 2006)
<franceloto.tv> (reserved on February 27, 2004)
<france-loto.fr> (reserved on January 12, 2004)
<gagnerauloto.com> (reserved on January 09, 2005)
<lotobytel.com> (reserved on November 14, 2001)
<lotoeuropeen.fr> (reserved on March 22, 2005)
<lotoeuropeen.eu> (reserved on April 07, 2006)
<lotofoot.tv> (reserved on February 27, 2004)
<lotofoot.eu>(reserved on March 10, 2006)
<lotofoot.fr> (reserved on June 17, 2002)
<lotofoot.tm.fr> (reserved on November 12, 1998)
<lotofoot.net> (reserved on April 25, 2004)
<lotofoot.info> (reserved on April 26, 2004)
<loto-foot.fr> (reserved on April 03, 2003)
<lotofr.com> (reserved on July 09, 2001)
<lotonational.fr> (reserved on March 22, 2005)
<lotonational.eu> (reserved on April 07, 2006)
<lotophone.fr> (reserved on March 11, 2004)
<lotos.fr> (reserved on January 23, 2006)
<lotosportif.eu> (reserved on June 19, 2006)
<lotosportif.fr> (reserved on March 25, 2004)
<loto-sportif.tm.fr> (reserved on March 05, 1997)
<lotosurprizz.eu> (reserved on March 27, 2006)
<lotosurprizz.fr> (reserved on April 03, 2003)
<loto-surprizz.fr> (reserved on April 03, 2003)
<monloto.com> (reserved on December 27, 2005)
<petitloto.fr>(reserved on May 25, 2004)
<resultatloto.fr> (reserved on January 24, 2005)
<resultatloto.mobi> (reserved on February 02, 2007)
<superloto.tv> (reserved on February 27, 2004)
<superloto.eu> (reserved on July 10, 2006)
<superloto.fr> (reserved on March 31, 2003)
<super-loto.fr> (reserved on March 28, 2003)
<super-loto.com> (reserved on February 25, 2004)
<videoloto.eu> (reserved on June 22, 2006)
<wwwloto.fr> (reserved on January 23, 2006)
Respondent registered the disputed domain name on July 26, 2007. On March 3, 2008, the disputed domain automatically redirected to a domain name parking service (<sedoparking.com>) offering several commercial links in French, including an “entertainment” heading.
On October 1, 2007, legal representatives for Complainant sent a cease and desist letter to Respondent informing him, inter alia, that Complainant is the owner of several trademarks and domain names that contain the term “loto”. Despite several reminders by letter and e-mail, Respondent failed to answer to Complainant’s request to indicate Respondent’s intention of use concerning the disputed domain name.
5. Parties’ Contentions
A. Complainant
5.1. Complainant asserts that French courts, the French trademark office as well as the Office of Harmonization for the Internal Market (OHIM) and the World Intellectual Property Organization (WIPO) have recognized that Complainant’s LOTO trademarks are distinctive for designating products and services other than a traditional lottery. The French dictionary (Petit Robert) also distinguishes between the French word “loto” designating a traditional lottery and the trademark LOTO used by Complainant to identify its own game. Moreover, several decisions by French courts and the Center found that the trademarks LOTO owned by Complainant are commonly known.
5.2. Complainant contends that the disputed domain name is confusingly similar to Complainant’s LOTO trademarks and domain names for the following reasons:
- Complainant refers to the decision in La Française des Jeux v. Réponses.fr, WIPO Case No. DFR2005-0023, wherein the transfer of the domain names <loto-gratuit.fr>, <lotogratuit.fr>, <loto-sms.fr> and <lotosms.fr> was ordered. The Sole Panelist in this decision reasoned that the mere addition of the words “sms” or “gratuit” (“for free” in French) to the domain names does not rule out a likelihood of confusion regarding the trademarks and domain names used by Complainant. Complainant alleges that the same reasoning should apply in the present case as the term “sms” is usually used to designate written messages sent by mobile phones and is a generic term in French.
- The use of the word “sms” in the disputed domain name creates the misleading impression that the website under the disputed domain name allows to play the Loto game by mobile phone or to obtain the results of a Loto game by “sms” on a mobile phone. The latter service is in fact offered by Complainant under its LOTO trademark. It must therefore be assumed that the average Internet user may be misled into thinking that the disputed domain name is in any way affiliated with or belongs to Complainant.
5.3. Complainant alleges that, for the following reasons, Respondent has no rights or legitimate interest in respect of the disputed domain name:
- Respondent never used or become known under the term “loto” or its derivation “smsloto” and never tried to register the trademark LOTO or any word combination containing the word “loto”.
- The search engine “www.google.fr” does not indicate any connection between the term “loto” or “smsloto” and Respondent.
- Complainant never licensed Respondent to use its trademarks LOTO, nor is there any commercial relationship between Complainant and Respondent.
5.4. Complainant, lastly, contends that the Domain Name was registered and is used in bad faith for the following reasons:
- Since the year 1976, the trademark LOTO has been constantly and widely used. Complainant owns the respective trademark rights already since the year 1983.
- Complainant’s LOTO trademarks and its trademarks containing the term “loto” are well-known in France. Complainant’s LOTO game represents an important part of the market among the various games offered by Complainant. In France, a fair number of commercials and advertisements concerning the products and services under the trademarks were made.
- The website “www.loto.fr” is well-known, particularly in France.
- A market research made in the year 2001 by a company called IPSOS revealed the well-known character of the trademark LOTO.
- A search on “www.google.fr” instantly reveals the link between the trademark LOTO and Complainant.
- A part of the services offered on the website under the disputed domain name, namely games and entertainment services, is identical to part of the services offered by Complainant on its official website “www.loto.fr”.
- Respondent uses the contested domain name to redirect Internet users towards a website parking that displays generic links in French language, in particular links connected to entertainment activities, which are Complainant’s main activity. Thus, the main purpose of the website under the disputed domain is to generate profit by diverting Internet users to Respondent’s website or other on-line location by creating a likelihood of confusion with Complainant’s trademarks.
- The lack of Respondent’s reply to Complainant’s cease and desist letters reveals that Respondent does not have any arguments justifying its use of the term “loto” in the disputed domain name.
5.5. Complainant requests a decision that the disputed domain name be transferred to Complainant.
B. Respondent
Respondent did not submit a response.
6. Discussion and Findings
Respondent’s default does not automatically result in a decision in favor of Complainant. Complainant must still prove each of the three elements required by Paragraph 4(a) of the Policy (see The Vanguard Group, Inc. v. Lorna Kang, D2002-1064; Berlitz Investment Corp. v. Stefan Tinculescu,
WIPO Case No. D2003-0465; Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan,
WIPO Case No. D2004-0383). Namely, Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. In accordance with Paragraph 14(b) of the Rules, the Panel may draw such inferences as it deems appropriate from Respondent’s failure to reply to Complainant’s assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panel’s decision is based upon Complainant’s assertions and evidence as well as from inferences drawn from Respondent’s failure to reply.
A. Identical or Confusingly Similar
The Panel finds that Complainant, as registered owner of the various LOTO trademarks, has established rights in those trademarks, sufficient for the purposes of Paragraph 4(a) of the Rules. The Panel notes that Complainant has registered its LOTO trademarks years before Respondent’s registration of the disputed domain name.
The Panel finds that there is a confusing similarity between Complainant’s LOTO trademarks and the disputed domain name. The mere addition of a common term such as “sms”, a commonly used abbreviation of “Short Message Service”, does not change the overall impression of the disputed domain name as being a domain name connected to Complainant (see PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS),
WIPO Case No. D2003-0696; La Française des Jeux v. Réponses.fr,
WIPO Case No. DFR2005-0023). This finding is also supported by the fact that Complainant offers under the LOTO trademarks a service that allows obtaining the results of a LOTO game by “sms” on a mobile phone.
Accordingly, the Panel finds that Complainant has satisfied the requirement under Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
According to Paragraph 4(a)(ii) of the Policy, Complainant carries the overall burden of proof that Respondent has no rights or legitimate interests in the disputed domain name. However, it is the prevailing consensus view among panelists that were a complainant makes a prima facie case that respondent has no rights or legitimate interests, and Respondent fails to demonstrate his rights or legitimate interests in the disputed domain name, then complainant is deemed to have satisfied Paragraph 4(a)(ii) of the Policy (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,
WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,
WIPO Case No. D2004-0110).
In the present case, the Panel finds that Complainant has indeed made a prima facie showing that Respondent does not have rights or legitimate interests in the domain name within the meaning of Paragraph 4(a)(ii) of the Policy. This finding is based on the following, non-disputed circumstances brought forward by Complainant:
- Complainant has no relationship whatsoever with Respondent and has never authorized Respondent to use the LOTO trademarks.
- There is no indication in the file that Respondent is known under the disputed domain name. The search engine “www.google.fr” does not indicate any connection between the term “loto” or “smsloto” and Respondent.
- Respondent uses the disputed domain name solely to redirect Internet users towards a website parking service that displays commercial links in French language. This cannot be considered a bona fide offering of goods or services in the sense of Paragraph 4(c)(i) of the Policy.
Respondent failed to demonstrate his rights or legitimate interests in the disputed domain name. There is also no evidence in the file that suggests that Respondent has rights or legitimate interests in the disputed domain name.
Under these circumstances, the Panel finds that Complainant has satisfied Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Based on Complainant’s undisputed contentions and the evidence in the file, the Panel finds, on a balance of probabilities, that there is sufficient evidence for a finding of registration and use in bad faith:
- The Panel accepts that Complainant’s LOTO trademarks are well-known in France and that Complainant’s website “www.loto.fr” is well-known, particularly in France. Moreover, the Panel notes that Complainant has registered numerous domain names containing the trademark LOTO, often combined with a generic term, and that a search on an Internet search engine such as “www.google.fr” instantly reveals the fact that the term “loto” is used by Complainant as a trademark. The Panel also accepts that Complainant’s LOTO trademarks were registered years before Respondent registered the disputed domain name and that the LOTO trademarks were constantly and widely used for more than 30 years. The Panel further notices that Complainant offers a service to its customers that allows to be informed of the results of a Loto game by way of text messages sent to the customer’s mobile phone.
- The disputed domain name is confusingly similar to Complainant’s LOTO trademarks. The mere addition of the generic term “sms” even adds to the confusion as Complainant offers a “sms” service in connection with its game marketed under the LOTO trademark. Given the undisputed long and constant use of the LOTO trademarks, the fact that Complainant is the French state lottery and that Complainant has registered numerous domain names incorporating the term “loto”, often combined with a generic term, the Panel considers it unlikely that Respondent was unaware of Complainant’s business and LOTO trademarks when he registered the disputed domain name.
- Respondent is using the disputed domain name to redirect Internet users to a parking website. A review of the pages of the parking website shows that no mention is made on this site of the disputed domain name or a name corresponding to the disputed domain name. Instead, the parking website displays commercial links in French, in particular links connected to entertainment activities, which are Complainant’s main activity. This suggests that Respondent has registered and is using a domain name incorporating the LOTO trademark with the intention to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location (Paragraph 4(b)(iv) of the Policy).
- The failure of Respondent to reply to Complainant’s cease and desist letters is also supporting evidence of bad faith (see Ebay Inc. v. Ebay4sex.com and Tony Caranci,
WIPO Case No. D2000-1632). As Respondent also failed to submit a response in these proceedings, he did not come forward with any plausible explanation of his intention when registering and using the disputed domain name.
- The Panel further notes that Respondent registered the disputed domain name on an anonymous basis, which violated the pertinent registration agreement for the disputed domain name, and which made it more difficult for Complainant to contact him when asserting its rights. The Panel sees this as a further indication of Respondent’s bad faith.
In conclusion, the Panel finds that Complainant has satisfied the requirements 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 <smsloto.net> be transferred to Complainant.
Andrea Mondini Sole Panelist
Dated: July 15, 2008
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