The Complainant is S.L.E. Service aux Loteries en Europe of Brussels, Belgium, represented by Inlex IP Expertise, France.
The Respondent is Steve Patton, Data Download of Sligo, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
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 disputed domain name. On August 24, 2018, 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 Complainant on August 28, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 29, 2018.
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 Respondent of the Complaint, and the proceedings commenced on August 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 20, 2018.
The Center appointed Bradley A. Slutsky as the sole panelist in this matter on September 27, 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. 4. Factual Background
Complainant is a Belgian entity incorporated in 2003 for coordinating, managing and operating the lottery game called “EuroMillions”. The “EuroMillions” game was originally launched in February, 2004. Complainant has many trademark registrations and applications for EUROMILLIONS in logo and word format, including International Registration No. 847434, registered on July 12, 2004, covering goods and services in classes 9, 16, 28, 35, 38 and 41.
Respondent registered the disputed domain name with Network Solutions, LLC on July 22, 2014. The disputed domain name resolves to a website purporting to offer services to play lottery games online, including selling the “EuroMillions” tickets. 5. Parties’ Contentions A. Complainant
Complainant asserts that its “EuroMillions” lottery enjoys great notoriety in European countries, and notes that other UDRP decisions have observed that “EuroMillions” is “one of the most important lottery games in Europe” (see Societe aux Loteries en Europe, SLE v. Take That Ltd.,WIPO Case No. D2007-0214) and “has a high degree of renown” S.L.E. Services aux Loteries en Europe v. DomainsbyP / Marcel Klugman,WIPO Case No. D2016-0294. Complainant notes that the disputed domain name consists of Complainant’s EUROMILLIONS trademark coupled with a hyphen and the word “lotto”, plus the generic Top‑Level Domain (“gTLD”) “.net”. Complainant asserts that “Complainant’s trademark EUROMILLIONS is in an attack position within the disputed domain name and thus creates a higher confusion in the relevant public’s mind”, and that the addition of “-lotto” and the “.net” gTLD does not ameliorate the confusing similarity between Complainant’s EUROMILLIONS trademark and the disputed domain name. Complainant further asserts that Respondent does not use EUROMILLIONS as a business name, and has no rights in or trademarks for EUROMILLIONS. Complainant notes that Respondent’s website offers services to play a lottery game online, that there is no business relationship between Complainant and Respondent, and Respondent has not been authorized by Complainant to use the name “EuroMillions” or to offer such services. Instead, Complainant asserts that Respondent is making commercial use of the disputed domain name with the intent for commercial game through misleadingly diverting Internet users. Complainant also asserts that Respondent registered and is using the disputed domain name in bad faith, due to the notoriety of the EUROMILLIONS trademark, Respondent’s failure to respond to Complainant’s cease and desist letter, and Respondent’s attempts to attract Internet users to Respondent’s website – for commercial gain – by associating the website with the notoriety of the “EuroMillions” game. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Pursuant to paragraph 15(a) of the Rules, a panel in UDRP proceedings “shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Under paragraph 4(a) of the Policy, Complainant must prove the following:
(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. A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which Complainant has rights”.
Complainant’s trademark registrations attached to the Complaint demonstrate that Complainant has rights in the EUROMILLIONS mark.
The disputed domain name consists of the EUROMILLIONS mark, plus the term “-lotto”, plus the “.net” gTLD. Generally, “where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” WIPO Overview of Panel View on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Thus, the addition of the term “-lotto” and the “.net” gTLD, does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s mark on the facts of this case. See Societe aux Loteries en Europe, SLE v. Take That Ltd.,WIPO Case No. D2007-0214 (“the inclusion of the hyphen or the lack of space between the words […] should not be taken into account in order to evaluate the identity or similarity existing between the Domain Names and the Complainant’s trademarks”); WIPO Overview 3.0, section 1.8 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”); WIPO Overview 3.0, section 1.11.1 (“The applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”).
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Complainant also must demonstrate that Respondent has “no rights or legitimate interests in respect of the domain name[s]”, paragraph 4(a)(ii) of the Policy.
“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, shall demonstrate [Respondent’s] rights or legitimate interests to the domain name[s] for purposes of paragraph 4(a)(ii):
(i) before any notice to [Respondent] of the dispute, [Respondent’s] use 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) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or
(iii) [Respondent is] making 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 at issue.”
Policy, paragraph 4(c).
There is no evidence that Respondent was making a bona fide use of the disputed domain name before receiving notice of this dispute, or that Respondent has been commonly known by the disputed domain name . Rather, Complainant asserts that its marks are widely recognized, that there is no business relationship between Complainant and Respondent, that Respondent has not been authorized by Complainant to use the name EUROMILLIONS or to offer lottery services in association with that mark, and that Respondent is making a commercial use of the disputed domain name with intent for commercial gain by misleadingly diverting consumers through association with the EUROMILLIONS mark.
These allegations make out a prima facie case of lack of rights or legitimate interests, which Respondent has not rebutted. See S.L.E. Services aux Loteries en Europe v. Domains By Proxy, LLC / Finchdale Limited,WIPO Case No. D2014-0183 (“The Complainant has not authorized the Respondent’s use of the trademark EUROMILLIONS and there is no evidence showing that the Respondent might be commonly known by the disputed domain name. In addition, from the evidence on records, showing that the disputed domain name has been redirected to a website where a logo similar to the Complainant’s one was published and substantially identical games were provided, the Panel infers that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or service and has not made a legitimate noncommercial or fair use of the disputed domain name.”); Maryland State Lottery and Gaming Control Agency v. Whois Privacidad SA de CV / Iris Milady Soto Puerto,WIPO Case No. D2015-2325 (“The Panel further notes that as reflected in the evidence submitted with the Complaint the contents of the website at the disputed domain name, and in particular its links, do not relate to the ‘Maryland Lottery’ but to other providers of lottery games, which mostly compete with Complainant. [...] The Panel concludes, in agreement with Complainant, that offering information under the title ‘Maryland Lottery’, and providing in fact access to competing lotteries and games, presumably to receive monies from click-through, is neither a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i).”).
Accordingly, the current state of the record supports a conclusion that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Complainant also bears the burden of establishing that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b):
“[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [Respondent has] registered or [Respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to [C]omplainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent’s] documented out‑of‑pocket costs directly related to the domain name; or
(ii) [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 [Respondent has] engaged in a pattern of such conduct; or
(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site 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.”
“Given that the scenarios described in UDRP paragraph 4(b) are non-exclusive and merely illustrative, even where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to Complainant’s trademark would also satisfy Complainant’s burden.” WIPO Overview 3.0, section 3.1.
Complainant asserts that the following facts support a finding that Respondent registered and is using the disputed domain name in bad faith: the EUROMILLIONS trademark is well known and thus Respondent would have been aware of it when registering the disputed domain name, Respondent failed to respond to Complainant’s cease and desist letter while allegedly engaging in knowing infringement, Respondent is using the disputed domain name for a website that makes a “EuroMillions” online game available, but that game is not the official game of the Complainant and instead competes with Complainant’s game, and “Respondent[’s] goal is to attract [I]nternet users to its website and to benefit of the notoriety of the European game of the Complainant to obtain commercial gains.” Respondent did not respond to the Complaint and thus has not controverted any of these contentions.
Taken as a whole, these contentions support a finding of bad faith registration and use. Societe aux Loteries en Europe, SLE v. Take That Ltd.,WIPO Case No. D2007-0214 (Respondent’s use of , , and for competitive gaming services constitutes bad faith under paragraph 4(b)(iv) of the Policy); S.L.E. Services aux Loteries en Europe v. Domains By Proxy, LLC / Finchdale Limited,WIPO Case No. D2014-0183 (“Respondent’s [...] provision, on the website published at the disputed domain name, of lottery games in direct competition with the Complainant suggests that the Respondent was indeed actually aware of the Complainant’s trademark at the time of the registration of the disputed domain name. In view of the above-described use of the disputed domain name, the Panel finds that the Respondent registered and used the disputed domain name to intentionally attract, for its own commercial gain, Internet users to its website, by causing a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website by the Complainant according to paragraph 4(b)(iv) of the Policy.”); S.L.E. Services aux Loteries en Europe v. DomainsbyP / Marcel Klugman,WIPO Case No. D2016-0294 (one factor in finding bad faith was that “[t]he 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”). See also S.L.E. Services aux Loteries en Europe v. Juergen Strenger,WIPO Case No. D2014-1850.
Accordingly, the Panel finds that the present record supports a conclusion that the disputed domain name has been registered and is being used in bad faith, and that paragraph 4(a)(iii) of the Policy is satisfied. 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 Complainant.
Bradley A. Slutsky
Sole Panelist
Date: October 12, 2018
Full & Egal Universal Law Academy