The Complainant is La Française des Jeux of Boulogne-Billancourt, France, represented by Cabinet Bouchara, France.
The Respondent is Yunkook Jung of Daegu, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with DropC LLC (the “Registrar”). 3. Procedural History
The Complaint was filed 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 disputed domain name. On April 23, 2019, 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 and contact information for the disputed domain name. The Registrar has also indicated that the language of the Registration Agreement was English. The Complaint having been submitted in French, the Center invited the Complainant to provide sufficient evidence of an agreement between the Parties for French to be the language of proceeding, a Complaint translated into English, or a request for French to be the language of proceeding. The Complainant submitted a Complaint translated into English on April 26, 2019.
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 April 30, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 20, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 21, 2019.
The Center appointed Thomas M. Legler as the sole panelist in this matter on May 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
The Complainant is the French company La Française des Jeux who is active in the field of gaming and more specifically gambling activities, games of luck and sports betting.
The Complainant is the owner of several trademarks including the French word mark No. 96654440 LOTO FOOT filed on December 9, 1996 in classes 28 and 41.
The Respondent is Yunkook Jung, domiciled in the Republic of Korea.
The disputed domain name has been registered by the Respondent on December 8, 2018. The disputed domain name is being used for a website which contains several links to information related to football and gaming. 5. Parties’ Contentions A. Complainant
The Complainant sets out that it has been well known for more than 30 years in particular in its capacity as organizer of the national lottery, in France, under the brand name LOTO. The reservation of the disputed domain name by the Respondent is in the Complainant’s view unlawful not only insofar as it reproduces, in almost identical manner, the trademarks of the Complainant but also insofar as it imitates others creating hereby a high risk of confusion in the mind of the public.
According to the Complainant, the disputed domain name is reproducing in its entirety all the letters of the LOTO FOOT trademark. In addition, it also reproduces the trademark LOTO of which the Complainant is a holder, notwithstanding the fact that the word “loto” is followed by the term “foot” in the disputed domain name. The Complainant is furthermore of the view that the disputed domain name is also an imitation of the LOTO SPORTIF trademark of which it is a holder, as the term “sportif” is directly related to the field of sport. The Complainant therefore concludes that the disputed domain name is so similar as to be confused with its earlier trademarks.
The Complainant is furthermore of the opinion that the Respondent has no legitimate interests in the disputed domain name as it does not own any rights to the trademarks that he reproduces. The Respondent did not request nor obtain any authorization to reproduce and imitate the Complainant’s trademarks within a domain name. Equally, the Respondent has no right to use the trademarks of the Complainant in the course of a commercial activity, especially to designate services that are identical or at least similar to those of the Complainant.
The Complainant found that the disputed domain name is being used for a website on which are unlawfully reproduced various trademarks of the Complainant. It is obvious that the registration of the disputed domain name was made by the Respondent in bad faith. Indeed, by reserving the disputed domain name, the Respondent could not have ignored that it was reproducing, in an identical manner, the LOTO FOOT trademark, as well as the LOTO trademark, which are notoriously well known. This is all the more true since the Respondent operates a website in the French language.
As a consequence, the Complainant requests that the disputed domain name be transferred to it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
iii) the disputed domain name was registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs the Panel to 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”.
These elements are discussed in turn below. A. Identical or Confusingly Similar
The terms “loto” and “foot” used in the domain name registered by the Respondent are exactly the same as reflected in the Complainant’s trademark LOTO FOOT. The presence of a space between the two terms in the registered trademark (impossible to apply within a domain name) and the addition of the generic Top-Level Domain (“gTLD”) “.com” in the domain name do not prevent a confusing similarity with the Complainant’s trademark LOTO FOOT.
Therefore, the disputed domain name registered by the Respondent is practically identical with the Complainant’s French word mark No. 96654440 of which the Respondent should have been aware (all the more as it is running a website in French under the disputed domain name). B. Rights or Legitimate Interests
In order to assess rights or legitimate interests in a domain name, the panel must look for the following elements; (i) that the respondent uses or plans to use the domain name in connection with a bona fide offering of goods or services; (ii) the respondent has been commonly known by the domain name; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name.
The Complainant must establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of proof to the Respondent to come forward with evidence demonstrating rights or legitimate interests in the domain name. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In the present case, the Respondent is not using the domain name in a legitimate manner as it is using on its website not only the above mentioned LOTO FOOT trademark but also the Complainant’s French trademark No. 3908481 PARIONS SPORT filed on March 27, 2012. The posting of various links to services in competition with those of the Complainant’s by using the Complainant’s trademarks does not amount to a bona fide offering.
The Panel notes that the Respondent has not filed a Response and did not take the opportunity to explain its approach and to argue for the possible legitimacy of its website.
In addition, there is no evidence in the record suggesting that the Respondent is commonly known by the disputed domain name nor that the Complainant would have authorized the Respondent to use the domain name in question.
Finally, there is no indication let alone an allegation of the Respondent that it is making a legitimate noncommercial or fair use of the Domain Name.
Accordingly, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain names have been registered and are being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
One of these circumstances is that the respondent by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location (paragraph 4(b)(iv) of the Policy).
Again, the Respondent did not submit any response to explain to the Panel his view regarding the third element of the Policy.
In addition, the Panel finds that the marks LOTO as well as LOTO FOOT are quite well-known trademarks for gaming in France and generally in Europe.
By registering the disputed domain name incorporating the Complainant’s well-known trademark and by running the underlying website in French, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s trademark. It is inconceivable in those circumstances that the Respondent was ignorant of the Complainant’s mark at the time of registration. The evidence of record indicates that the Respondent has registered the disputed domain name to take advantage of Internet traffic generated by an apparent affiliation with or connection to the Complainant.
The Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark for the Respondent’s own pecuniary gain or to disrupt the business of the Complainant.
Consequently, the Panel is of the opinion 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.
Thomas M. Legler
Sole Panelist
Date: June 10, 2019
Full & Egal Universal Law Academy