The Complainant is Tatts Group Limited, Australia, represented by King & Wood Mallesons, United States of America.
The Respondent is Domain Admin, Whois Privacy Corp., Bahamas. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2020. On August 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 5, 2020, 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 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 27, 2020. The Center appointed Theda König Horowicz as the sole panelist in this matter on September 4, 2020. 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 was founded in Australia in 1885. The Complainant’s parent company Tabcorp Holdings Limited (hereinafter, Tabcorp) in Australia is active in the lotteries and keno business which generates a revenue of over AUD 2,684 million. Tabcorp’s official website enjoys millions of visits each month, more than 3 million of visitors being registered as online lottery players. The Complainant, through a number of wholly owned subsidiaries, is licensed to sell its lottery products in all states of Australia except Western Australia. The lottery products are marketed and provided to consumers through different brands, one of them being OZ LOTTO. The trademark OZ LOTTO was registered for the first time by the Complainant on November 11, 1993 (Australian registration number 615862). The term OZ LOTTO is currently being registered in Australia both as word and logo form by the Complainant, the Lotteries Commission of Western Australia, Lotteries Commission of South Australia, and three other related parties to the Complainant. The Complainant has in particular been the co-owner of the Australian word mark registration OZ LOTTO No 1080489, in classes 16 and 41, since October 12, 2005. The Complainant is mentioned as the address for service mentioned in the OZ LOTTO trademark registrations. The Respondent registered the disputed domain name on March 22, 2017 through a privacy service. The disputed domain name is linked to a website entitled OZ LOTTO, which reproduces the trademarks and logo of the Complainant. The website provides results, news, statistics, and links relating to Australian lotteries, including to “Lottery Heroes” and its website “lotteryheroes.com”. “Lottery heroes” offers gambling services and resells lottery tickets in lottery games. It is operated by a company called “Purple Rain NV”, which is registered in Curacao and which is not an authorized reseller of the Complainant’s OZ LOTTO products. 5. Parties’ Contentions A. Complainant Firstly, the Complainant alleges to be the co-owner of a number of Australian registered trademarks for OZ LOTTO in word and logo form which are registered in respect of operation of lotteries and related goods and services. The disputed domain name is therefore identical to the Complainant’s mark. Secondly, the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name for the following reasons: - The Complainants has not authorized the Respondent to use its trademark in the disputed domain name. Thirdly, the Complainant submits that the disputed domain name contains the iconic OZ LOTTO trademark of the Complainant, which was first registered on November 11, 1993, and which has been continuously used since then in Australia where it acquired the status of a well-known trademark. The disputed domain name was thus registered by the Respondent in bad faith. The Complainant is of the opinion that the disputed domain name is also used in bad faith, particularly since the website linked to the disputed domain name heavily features the Complainant’s OZ LOTTO mark along with other marks owned by it and its wholly owned subsidiaries. Furthermore, the website contains statements which falsely suggest an association with the Complainant. Finally, the website links to a website which offers competing lottery services. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) that the respondent has no rights or legitimate interests in the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant showed that it has trademark rights in OZ LOTTO through several Australian registrations. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In cases 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. The disputed domain name comprises the Complainant’s trademark, the only difference being the presence of hyphen between OZ and LOTTO. This difference does not prevent a finding of confusing similarity with the Complainant’s trademark. Under these circumstances, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s mark. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (i) the use of the domain name in connection with a bona fide offering of goods or services; (ii) being commonly known by the domain name; or (iii) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden of production shifts to the Respondent to rebut it. See WIPO Overview 3.0, section 2.1. The Complainant contends that the Respondent has no rights and legitimate interests in the disputed domain name, notably stating that (i) the Respondent is not allowed to use the trademark OZ LOTTO, (ii) the Respondent is not affiliated with the Complainant, (iii) the Respondent is using the OZ LOTTO trademark on the website linked to the disputed domain name in an unfair manner and (iv) that the Respondent has no rights in the name OZ LOTTO and is not known commonly known by the disputed domain name. Based on the above, the Panel considers that the Complainant has made a prima facie case and the burden of production shifts to the Respondent. The Respondent has chosen not to reply. No evidence is contained in the case file which would demonstrate that the Respondent has rights or legitimate interests in the disputed domain name, in particular that the Respondent has been commonly known by the disputed domain name or any evidence showing a bona fide offering of goods or services, or any legitimate noncommercial or fair use of the disputed domain name. In view of the above and in the lack of any denial by the Respondent, the Panel is satisfied that it is more than likely that the Respondent uses the disputed domain name without a bona fide offering of goods or services. In addition, the Panel notes the nature of the disputed domain name which is almost identical to the OZ LOTTO trademark, the only difference being the inclusion of a hyphen between OZ and LOTTO. The Panel finds that the nature of the disputed domain name carries a high risk of implied affiliation (see section 2.5.1. of the WIPO Overview 3.0 and Tatts Group Limited v. Bassel Djaroueh,WIPO Case No. D2019-1586, To the contrary, the content of the Respondent’s website and its layout are conceived in such a professional way that it the Internet user will have the impression that there is a link with the Complainant’s trademark and activities. Finally, considering the link made on the Respondent’s website to a lottery website which is operated by a competitor of the Complainant, it is more than likely that the disputed domain name was registered and is used for commercial gain. Consequently, the Panels finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Complainant has shown that the OZ LOTTO trademark is registered and widely used in Australia and on the web in relation to lottery games and other related goods and services which reaches out to a very large public in this country, and also abroad. Consequently, the Panel agrees with the Complainant over the fact that the Respondent knew or should have known of the Complainant’s trademark and deliberately registered the confusingly similar disputed domain name (see WIPO Overview 3.0, section 3.2.2). Furthermore, the website linked to the disputed domain name reproduces extensively and without authorization the OZ LOTTO trademark and the associated logos. It also provides a link to the website of “Lottery heroes” which is operated by a competitor of the Complainant in Curacao. This obviously falls in the scope of bad faith use as defined by the Policy. The Panel further notes that the Respondent has chosen to remain silent within these proceedings, which is a further indication of bad faith. In addition, the Respondent registered the disputed domain name through a privacy service, which may not be evidence of bad faith per se, but the use of a privacy service in the context of this case, is an indication that the Respondent intentionally hides its identity and uses the disputed domain name in bad faith (see WIPO Overview 3.0, section 3.6). In light of the above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith and that the Complainant has established its case under paragraph 4(a)(iii) of the Policy. 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 Theda König Horowicz
- The Respondent is not a licensee or a reseller for the Complainant.
- The Respondent is not otherwise affiliated with or endorsed by the Complainant.
- The Respondent is using the Complainant’s brand as the domain name for a website that diverts to a website that promotes and sells competing lottery tickets.
- The Respondent has created the website and incorporated the trademark OZ LOTTO into the disputed domain name for commercial purposes, namely to divert consumers seeking the Complainant’s lottery products away from the Complainant to a website that offers competing lottery services.
- The content of the website which uses the trademark OZ LOTTO gives the impression that the owner of the website is affiliated with or endorsed by the Complainant.
- The Respondent is not commonly known by the disputed domain name and has not registered any trademarks or business names comprising OZ LOTTO.
Sole Panelist
Date: September 22, 2020
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