Complainant is La Française des Jeux, France, represented by Cabinet Bouchara, France.
Respondent is Alain Montes, Corporaciones Industriales Inc. de Centro America S.A, Canada. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed in French with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2019. On April 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 23, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 20, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On the same day, the Center notified the Parties in both English and French that the language of the Registration Agreement for the disputed domain name was English.
In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint in English on May 22, 2019. Moreover, Complainant filed an amendment to the Complaint on May 23, 2019.
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 May 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 17, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 25, 2019.
The Center appointed Robert A. Badgley as the sole panelist in this matter on June 27, 2019. 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 corporation offering services “in the field of gambling activities, games of luck and sports betting.” Complainant also operates the French national lottery (referred to as “LOTO” in French).
Complainant holds a French trademark registration No. 1735225 for the word mark LOTO SPORTIF, with an application date of March 12, 1985, in connection with various products and services including games and lotteries. Complainant also holds a French trademark registration No. 1735227 for SPORT LOTO, with an application date of April 1, 1985, in connection with various products and services including playing cards and lotteries. In addition, Complainant holds a French registration No. 3158601 for the word mark LOTO, with a registration date of April 10, 2002, in connection with various services including “organization of contests, competitions and raffles, lotteries for entertainment, educational or cultural purposes …”
The Domain Name was registered on November 21, 2002. There is no evidence that the Domain Name has ever resolved to an active website. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has established the three elements required under the Policy for a transfer of the Domain Name. B. Respondent
Respondent has not replied to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the marks SPORT LOTO and LOTO SPORTIF through registration and use demonstrated in the record.
The Panel concludes further that the Domain Name is confusingly similar to these two marks. The Domain Name contains the dominant word in the mark, “loto”, plus a slight variant on the other word in the mark, “sports.”
Complainant has established Policy paragraph 4(a)(i). B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.
The Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Names. Respondent has not come forward to explain his bona fides vis-à-vis the Domain Names. For 17 years, it appears, Respondent has made no use of the Domain Name, and this passage of time suggests that Respondent never had any bona fide purpose for registering the Domain Name. The Panel notes further that Complainant’s LOTO family of marks is well-known in France, as has been confirmed by prior UDRP panels deciding cases under the Policy. See, e.g., La Française des Jeux v. Eduardo Rosas, Vanislewebservicesltd,WIPO Case No. D2016-0439 (involving ; “les termes ‘loto’ et ‘euro millions’ reprennent les marques du Requérant qui désignent des activités de jeux de hasard très connues en France et en Europe, opérée par des lotteries publiques […], il s’agit de signes fortement distinctifs du fait de leur usage intensif sur le territoire de la France” [“the terms “loto” and “euro millions” constitute marks which designate complainant’s games of chance which are very well-known in France and Europe, operated by the public lotteries […], we have here very distinctive symbols by virtue of their intensive use within France”], translation provided by the Panelist).
Complainant has established Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that 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) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. As was found in the previous section, Complainant’s LOTO-formative marks are well-known in France. The Panel observes further that Respondent’s physical address is in Montreal, Quebec, which part of Canada is francophone. The Panel finds it more likely than not that Respondent had Complainant’s LOTO family of marks in mind when registering the Domain Name.
The Panel also finds bad faith use here under the “passive holding” doctrine first enunciated in the case Telstra v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In that seminal case, the panel held that bad faith under the Policy may occur, in appropriate circumstances, where a respondent passively holds a domain name confusingly similar to a famous trademark. The two main factual considerations driving the Telstra decision, which are also present here, are that the trademark in question is well-known and that the respondent offered no evidence of any legitimate purpose for registering the domain name. The Telstra panel concluded that, in those circumstances (plus some other considerations not present here but not as important), “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.”
The Panel concludes that the same result is warranted under the record here.
Complainant has established Policy paragraph 4(a)(iii). 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 Domain Name be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Date: July 1, 2019
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