The Complainant is S.L.E. Services aux Loteries en Europe of Bruxelles, Belgium, represented by Inlex IP Expertise, France.
The Respondent is DomainsbyP of Scottsdale, United States of America / Marcel Klugman of Tel Aviv, Israel. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2016. On February 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 12, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 15, 2016 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 February 17, 2016.
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 February 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 9, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 11, 2016.
On February 25, 2016 the Complainant filed a Supplemental filing with the Center, forwarding an email communication from the Respondent, in which it offered to sell the Disputed Domain Name to the Complainant after commencement of the proceeding.
The Center appointed Charné Le Roux as the sole panelist in this matter on March 18, 2016. 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 Belgium entity incorporated in 2003. Its main activities include the co-ordination, management and operation of a lottery game under the trade mark EUROMILLIONS, which was launched in the United Kingdom of Great Britain and Northern Ireland, Spain and France in February 2004. The game was subsequently launched also in Austria, Belgium, Ireland, Luxemburg, Portugal and Switzerland. The Complainant owns a number of registered trade marks for the mark EUROMILLIONS in logo and word format, including Community Trade Mark registrations nos. 29847568, 3644564 and 9656638, registered in 2004, 2005 and 2011 respectively, and International Registrations nos. 847434, 855526 and 888585 obtained in 2004, 2004 and 2005, respectively, all covering goods and services in classes 9, 16, 28, 35, 38 and 41. The Complainant also owns close to 40 domain names in Top-Level and country-code specific domain name extensions, all comprising the EUROMILLIONS trade mark (or variations of it), such as , and .
The Disputed Domain Name was registered by the Respondent on October 9, 2013. On September 22, 2015, the Complainant’s representative wrote to the Respondent requesting it to transfer the Disputed Domain Name to the Complainant against payment of the amount of EUR 1,000. The letter drew attention to the Complainant’s trade mark rights and previous UDRP cases in which the Complainant had successfully asserted its rights in connection with conflicting domain names. A reminder was sent on October 30, 2015, but no response was forthcoming. The website in connection with the Disputed Domain Name was initially pointed to a parking page of the Registrar, but is currently re-directing to an inactive page. 5. Parties’ Contentions A. Complainant
The Complainant provided substantial information regarding the development and history associated with its EUROMILLIONS trade mark. It asserts that it has been using this trade mark since February 2004, and that it has become one of the most popular brands within the European Union. The Complainant contends that the EUROMILLIONS trade mark is well known and refers in support of this contention to several articles espousing the success of the EUROMILLIONS game, extracts from its 2012 and 2013 annual reports and a survey that had been conducted in January 2014, showing that 94% of French people are aware of the game.
The Complainant submits that the Disputed Domain Name is confusingly similar to its EUROMILLIONS trade mark. It points out that the Disputed Domain Name incorporates the whole of its EUROMILLIONS trade mark coupled with a non-distinctive and descriptive element being the word “raffle”. The Complainant argues that the addition of the term “raffle” will, in fact, enhance the likelihood of confusion, due to its reference to the gaming industry.
The Complainant asserts that the Respondent lacks rights or legitimate interests in the Disputed Domain Name in that:
a. The use of the Disputed Domain Name either in connection with a parking page of the relevant Registrar or an inactive website is not considered activity which provides rights or legitimate interests in a domain name.
b. The Respondent is not using a business name that incorporates the Complainant’s trade mark and has not provided any bona fide offering of goods and services through the Disputed Domain Name.
c. The Respondent has not been authorized by the Complainant to use its trade mark.
The Complainant submits that the Disputed Domain Name was registered and is being used in bad faith. It states that the fame associated with its EUROMILLIONS trade mark is so significant that when the Respondent registered the Disputed Domain Name in October 2013, it could not have ignored the existence of the Complainant’s trade marks or websites. The Complainant contends that the failure of the Respondent to respond to its cease and desist letter is an indication of the Respondent’s bad faith. The Complainant asserts that the Respondent’s bad faith registration and use of the Disputed Domain Name applies also with reference to the Respondent’s passive holding of the Disputed Domain Name. The Complainant further contends that the Respondent registered the Disputed Domain Name to capitalize on the Complainant’s trade mark, in order to attract Internet users to the Respondent’s website and away from the Complainant’s official website. The Complainant states, lastly, that the Respondent’s use of a privacy provider, taking into account the factors set out above, demonstrates the Respondent’s bad faith.
The Complainant also filed a Supplemental filing with the Center, forwarding an email communication in which the Respondent offered to sell the Disputed Domain Name to the Complainant after commencement of the proceeding, for the amount of EUR 5,000. The Complainant alleges that it is further evidence of the Respondent’s bad faith in the registration and use of the Disputed Domain Name for the purpose of selling it for an amount that exceeds its documented out-of-pocket costs.
The Complainant requests that the Disputed Domain Name be transferred to it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. However, the Panel notes that it sent an email communication to the Complainant, copying the Registrar but not the Center, after the commencement of the proceeding. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Disputed Domain Name, the Complainant must prove on a balance of probabilities:
(i) that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which it has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
The Panel will take into consideration the Complainant’s Supplemental filing of February 25, 2016, on the basis that the Respondent was given a fair opportunity to present its case and to rebut the Complainant’s arguments within the Response due date. In any event, the Panel notes that the outcome of the decision would be the same even without considering the Complainant’s Supplemental filing. A. Identical or Confusingly Similar
The Complainant has demonstrated that it has acquired rights in the EUROMILLIONS trade mark by virtue of its portfolio of trade mark and domain name registrations for it and its considerable use of the mark for over a decade. The Complainant has also demonstrated that the EUROMILLIONS trade mark is broadly known, a fact confirmed by other UDRP panels in connection with complaints lodged by the Complainant in the following cases:
1. Services aux Loteries en Europe (SLE) v. Société Ascope,WIPO Case No. DFR2007-0037;
2. Services aux Loteries en Europe, SLE v. Take That Ltd.,WIPO Case No. D2007-0214;
3. S.L.E. Services aux Loteries en Europe v. Domains by Proxy, LLC / Finchdale Limited,WIPO Case No. D2014-0183; and
4. S.L.E. Services aux Loteries en Europe v. Juergen Strenger,WIPO Case No. D2014-1850.
The Panel finds that the Complainant has succeeded in proving that it has rights in the EUROMILLIONS trade mark and that the trade mark has a high degree of renown attaching to it. The Panel also finds that the Disputed Domain Name is confusingly similar to the EUROMILLIONS trade mark. It wholly incorporates the trade mark and, considering the extent of the repute that attaches to EUROMILLIONS and the trade mark’s combination with a descriptive term which denotes the Complainant’s area of business, a finding of confusing similarity is well supported.
The Panel finds that the Complainant has satisfied this Policy requirement. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove a negative, namely that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. This is accomplished if the Complainant makes a prima facie case that the Respondent lacks rights or legitimate interests, whereupon the burden of production shifts to the Respondent to submit evidence demonstrating rights or legitimate interests in the Disputed Domain Name. The Complainant has asserted that the EUROMILLIONS trade mark is well known and that it has not granted the Respondent any rights in respect of the Disputed Domain Name, that the Respondent is not known by the Disputed Domain Name nor has made any legitimate, noncommercial or fair use of the Disputed Domain Name.
The Panel finds that the Complainant has made a prima facie case under paragraph 4(a)(ii) of the Policy and that there is a case for the Respondent to answer.
The Respondent has not disputed any of the claims made by the Complainant and has not provided any answer. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. C. Registered and Used in Bad Faith
The Respondent has listed a number of factors that demonstrate the Respondent’s bad faith both at registration and in use, including its failure to respond to the Complainant’s cease and desist letter, the passive holding of the Disputed Domain Name, the attempt to attract Internet users by using a well known trade mark as part of its domain name, the use of a privacy provider and the attempt to sell the Disputed Domain Name in excess of its out-of-pocket expenses. These assertions, made against the background of the renown in the Complainant’s EUROMILLIONS trade mark and the fact that the Disputed Domain Name was registered many years after the establishment of the Complainant’s EUROMILLIONS business, do indicate deliberate targeting of the Complainant by the Respondent. The Respondent had opportunities both when the Complainant’s representative sent a cease and desist letter to it and in this administrative proceeding, to demonstrate its rights or legitimate interests, or its good faith conduct, or to challenge the Complainant’s contentions, but it elected not to take up these opportunities. Rather, its conduct after the commencement of the proceedings by attempting to sell the Disputed Domain Name only reinforced the Complainant’s assertions.
Taking all the above circumstances into account, the Panel finds that the Disputed Domain Name has been registered and is being used in 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 Disputed Domain Name be transferred to the Complainant.
Charné Le Roux
Sole Panelist
Date: April 7, 2016
Full & Egal Universal Law Academy