The Complainant is S.L.E. Service aux Loteries en Europe of Brussels, Belgium, represented by Inlex IP Expertise, France.
The Respondent is Super Privacy Service Ltd. c/o Dynadot of San Mateo, California, United States of America.
The disputed domain name <lotoeuromillions.com> (“Domain Name”) is registered with Dynadot, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2018. On August 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 26, 2018, 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 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 August 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 18, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 21, 2018.
The Center appointed Tee Jim Tan, S.C. as the sole panelist in this matter on October 10, 2018. 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.
The Complainant is a Belgian entity incorporated in 2003 for coordinating, managing and operating the lottery game named “Euromillions”. The Complainant operates the lottery game in collaboration with public lotteries operators in several Member States of the European Union.
The “Euromillions” game was originally launched in February 2004, in the United Kingdom of Great Britain and Northern Ireland, Spain and France. Those countries were later followed by Austria, Belgium, Ireland, Luxembourg, Portugal and Switzerland. Currently, “Euromillions” is a lottery played weekly and has become one of the most popular games within the European Union, given its international scope and the high prizes it offers to its participants.
Based on the exhibits in the Complaint, the Complainant is the proprietor of several trademark registrations for the word mark EUROMILLIONS (the “Mark”), such as European Union Trade Mark No. 002987568 filed on December 23, 2002 and registered on September 28, 2004.
The Complainant also owns several domain names incorporating the Mark, such as <euromillion.com>, <euromillions.eu> and <euromillions.org>.
The Domain Name was registered on April 14, 2009. It resolves to a website purporting to offer lottery‑related content and games.
The Complainant contends as follows:
(1) It has rights in the Mark because:
(a) it has registered the Mark in various European countries and several domain names containing the Mark, e.g., <euromillion.com>, <euromillions.eu> and <euromillions.org>; and
(b) past UDRP panel decisions indicate that the Mark is “intensely used” since 2004 and well known in Europe and notably France.
(2) The Domain Name is confusingly similar to the Mark as the Domain Name includes the word element “euromillions”, which is the distinctive element of the Mark and is clearly visible within the Domain Name. The only differences are that the Domain Name:
(a) is coupled with another word element “loto” (in the beginning); and
(b) includes the “.com” suffix.
With respect to (a), the Complainant contends that the word element “loto” is secondary and not sufficient to avoid a finding of confusing similarity, as the Mark is entirely included in the Domain Name.
With respect to (b), there have been past UDRP panel decisions (e.g.,A & F Trademark, Inc., Abercrombie & Fitch Stores, Inc., Abercrombie & Fitch Trading Co., Inc. v Party Night, Inc., WIPO Case No. D2003-0172) which indicate that the “.com” suffix should not be taken into account when assessing identity or similarity between the Domain Name and the Mark.
(3) The Respondent has no rights or legitimate interests in respect of the Domain Name due to the following reasons:
(a) The Domain Name was registered anonymously, which may be regarded as an indication that the Respondent wishes to hide its identity because it has no rights or legitimate interests in respect of the Domain Name;
(b) The content of the Respondent’s website as well as the WhoIs database details do not indicate:
(i) that the name of the Respondent is composed of the word “Euromillions” or that the Respondent is commonly known as “Euromillions”; or
(ii) that the Domain Name is linked to an official registered company bearing the word “Euromillions”; or
(iii) that the Respondent has rights, including trademark rights, to the Mark;
(c) The Respondent has not been authorized by the Complainant to use the Mark or register the Domain Name;
(d) The Domain Name is not used bona fide with offering goods and/or services and does not constitute a legitimate noncommercial fair use; and
(4) The Domain Name was registered and is being used in bad faith because:
(a) the Mark has been famous in European countries since 2004;
(b) the Respondent failed to respond to the cease and desist letter sent by the Complainant’s representative on July 26, 2017, and a subsequent email reminder, informing the Respondent of the dispute over the Domain Name and Mark and requesting the Respondent to stop using the Domain Name and Mark; and
(c) the Respondent used the Domain Name in such a manner that Internet users would believe that its website is controlled or endorsed by the Complainant.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to succeed in its Complaint:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, the Panel shall, in the absence of exceptional circumstances, decide the dispute based on the Complaint.
The Complainant has furnished evidence of its trademark registrations concerning the Mark and past UDRP panel decisions indicating the well-known nature of the Mark. Based on the evidence, the Panel is satisfied that the Complainant has rights in the Mark.
The Panel notes the consensus view in previous UDRP panel decisions that in determining confusing similarity under paragraph 4(a) of the Policy, the generic Top-Level Domain (“gTLD”) suffix (“.com” in this particular instance) should be disregarded except where the applicable top-level suffix itself forms part of the trademark in question. The Panel agrees with this view and holds that the exception does not apply in the present case.
Past UDRP panel decisions also indicate that in cases where a domain name incorporates the entirety of a trademark, the domain name would be considered identical or confusingly similar to that mark for purposes of UDRP standing (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.7).
Past UDRP panel decisions also suggest that where the relevant trademark is recognizable within the dispute domain name, the addition of descriptive terms would not prevent a finding of confusing similarity (see WIPO Overview 3.0 at section 1.8). For instance, in LEGO Juris A/S v. Domain Privacy Service FBO Registrant / Jill Cottingham, WIPO Case No. D2016-1608, it was held that the disputed domain name, <kidslego.com>, was confusingly similar to the LEGO mark as adding the term “kids” to the LEGO mark in the disputed domain name did not avoid a finding of confusing similarity under the first element of the UDRP. In Accor SA v. Dinesh Arsid, Tiny Planet Inc, WIPO Case No. D2017‑2576, it was held that the disputed domain name, <thinknovotel.com>, was confusingly similar to the NOVOTEL mark as the addition of a descriptive or non‑distinctive element “think” to the mark also did not avoid a finding of confusing similarity.
In the present case, the only difference between the Domain Name and the Mark is the addition of the descriptive element “loto”. The Panel is of the view that such an addition does not avoid a finding of confusing similarity under the first element of the UDRP, especially as the Mark is also entirely included in the Domain Name.
Accordingly, this Panel is satisfied that the requirement in paragraph 4(a)(i) of the Policy has been fulfilled.
Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances which, if proven, will lead to a finding that the Respondent has rights or legitimate interests in the Domain Name. The list is reproduced below:
(i) The Respondent is able to demonstrate its use of, or its preparation 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 has been commonly known by the Domain Name, even if it has not acquired any trademark or service marks right therein; or
(iii) The Respondent makes 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.
The Panel agrees with the UDRP decision in Belupo d.d. v WACHEM d.o.o., WIPO Case No. D2004-0110 that, given the “often impossible task of proving the negative”, the Complainant is generally only required to establish a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name (See WIPO Overview 3.0 at section 2.1).
The Panel finds that the Complainant has established a prima facie case showing that the Respondent has no rights or legitimate interests in the Domain Name based on the Complainant’s contentions as set out in section 5 of this decision above. Thus, the burden shifts to the Respondent to rebut this prima facie case.
Regrettably, the Respondent has elected not to submit a response and thus cannot be taken to have discharged its burden. Notably, the use of the Domain Name, comprising the Complainant’s Mark, to promote lottery gaming products in direct competition with those of the Complainant, does not give rise to rights or legitimate interests in the Domain Name within the meaning of paragraph 4(c)(i) of the Policy. No other evidence has been put forward to prove any of the circumstances listed in paragraphs 4(c)(ii) and 4(c)(iii) of the Policy.
Thus, this Panel finds that on balance, the Respondent does not in fact have any legitimate rights or interests in the Domain Name.
In accordance with paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Domain Name has been registered and is being used in bad faith. Paragraph 4(b) sets out four circumstances which, without limitation, shall be evidence of the registration and use of the Domain Name in bad faith, namely:
(i) Circumstances indicating that the Respondent has registered or has 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 the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Domain Name; or
(ii) Circumstances showing that the Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) Circumstances showing that the Respondent has registered the Domain Name primarily for the purposes of disrupting the business of a competitor; or
(iv) The Respondent has, by using the Domain Name, intentionally attempted to attract, for commercial gain, Internet uses to its website or other online 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 the Respondent’s website or location.
In Accor SA v. Dinesh Arsid, Tiny Planet Inc, supra, and Courtney Kellogg v. Vance Larson, WIPO Case No. D2007-0085, the panels decided that use of a disputed domain name was in bad faith if:
(1) It contains a trademark, in which the complainant has rights, in its entirety; and
(2) It is used in connection with an active website, which is likely to mislead users into believing that they are connecting to a website legitimately approved or associated with the trademark owner.
These elements are also present in the present case. The Complainant has provided extensive evidence of its trademark and domain name registrations in respect of the Mark as well as past UDRP decisions which indicate that the Mark is well known and that it has rights in the Mark. Further, the Respondent appears to operate a lottery through its website bearing the Domain Name such that Internet users will likely be misled into believing that the website is operated by or otherwise endorsed by the Complainant.
In the circumstances, this Panel is satisfied that the requirement in paragraph 4(a)(iii) of the Policy has been fulfilled.
It follows that the Complainant has made out each of the three elements that it is required to prove.
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 <lotoeuromillions.com> be transferred to the Complainant.
Tee Jim Tan, S.C
Date: October 22, 2018
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