The Complainant is Lotto Sport Italia S.p.A. of Treviso, Italy, represented by Avvocati Associati Feltrinelli & Brogi, Italy.
The Respondent is David Dent of North Vancouver, British Columbia, Canada, represented by Steven Rinehart, United States of America.
The disputed domain names <lottostore.com> and <lottoworks.com> (“Disputed Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2016. On December 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name <lottoworks.com>. On December 15, 2016, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on December 22, 2016. The Complainant requested to add the Disputed Domain Name <lottostore.com> to its amended Complaint. On December 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name <lottostore.com>. On the same date, 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 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 December 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2017. The Response was filed with the Center on January 17, 2017.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on January 30, 2017. 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.
The Complainant was established in Italy in 1973. It manufactures and distributes sportswear. Over the years, the Complainant has sponsored several sporting events and professional players, including David Ferrer and the National football teams of the Netherlands, Switzerland, Serbia, Croatia and Costa Rica. The Complainant distributes its sportswear in over 110 countries. The Complainant holds an International trade mark registration for the LOTTO WORKS trade mark (registered on June 14, 2013) and an EU trade mark registration for the LOTTO WORKS device mark (registered on February 1, 2010). The Complainant also holds International trade mark registrations for the LOTTO trade mark and LOTTO device marks, the earliest of which was applied for in 1974.
The Respondent is an individual based in British Colombia, Canada. The Respondent is involved in the gambling industry. In 2006, he started a business under the trade name “Trimark”, which operates lotto and casino games. The business has been licensed to operate gaming websites in the Isle of Man since 2009.
The Disputed Domain Name <lottoworks.com> was initially registered in July 1998 and the Disputed Domain Name <lottostore.com> in January 2011. The Disputed Domain Name <lottostore.com> is currently inactive. The Disputed Domain Name <lottoworks.com> currently resolves to a parking page which contains sponsored links.
The Complainant’s contentions can be summarized as follows:
(a) The Complainant was established in 1973, and has been operating under the LOTTO brand for over 40 years. The Complainant holds an International trade mark registration for the LOTTO WORKS trade mark (registered on June 14, 2013) and an EU trade mark registrations for the LOTTO WORKS device mark (registered on February 1, 2010). The Complainant also holds International trade mark registrations for the LOTTO trade mark and LOTTO device marks, the earliest of which was applied for in 1974.
(b) The Complainant alleges that “lotto” is exclusively associated with the Complainant, and any use of “lotto” in a domain name will likely lead to confusion amongst members of the public as to its association with the Complainant.
(c) The Disputed Domain Names are confusingly similar to the Complainant’s LOTTO WORKS and LOTTO trade marks. The use of a generic word in addition to the word “lotto” does nothing to distinguish the Disputed Domain Names from the Complainant’s LOTTO trade marks.
(d) The Complainant has no relationship with the Respondent and has never authorized him to use the Disputed Domain Names or any other domain names incorporating its trade marks. The Complainant’s trade marks are well known, as the Complainant is a world leader in shoes and sportswear, and has been in operation for many years. The Respondent’s name is in no way linked to the Disputed Domain Names. The use of a domain name that is identical or confusingly similar to a trade mark cannot amount to a bona fide offering of goods or services. The Disputed Domain Names are primarily descriptive of the Complainant’s goods, as they incorporate the LOTTO WORKS and LOTTO trade marks. The Disputed Domain Names currently resolves to a webpage offering the Disputed Domain Names for sale. The Respondent therefore registered the Disputed Domain Names for profit.
(e) The Respondent registered and used the Disputed Domain Names in bad faith, with the intent of making a commercial gain. The Complainant alleges that it is well known worldwide, therefore making it inevitable that the Respondent registered the Disputed Domain Names in full knowledge of the Complainant. The Complainant asserts that there is no legitimate reason for the Respondent to have registered the Disputed Domain Names. The Respondent is a cyber squatter that registers domain names in bulk in order to sell them for profit.
The Respondent’s contentions can be summarized as follows:
(a) The Respondent is in the gambling industry, and he has a controlling interest in a business that operates online gaming websites, including lotto and casino games. Such business has been in operation since 2006.
(b) The Respondent has numerous domain names relating to gambling, which he has acquired over the last 20 years. These include <euro-lotto-numbers.com>, <giganticlotto.com>, <irishlotto.com>, <lotto-max-numbers.com>, <lotto-max-results.com>, et cetera. The Respondent registered these domain names, as well as the Disputed Domain Names, due to the value imparted on them in relation to the generic terms “gambling” and “lotteries”. The word “lotto” is a generic term in the English language, and is synonymous with “lottery”.
(c) The Respondent had no knowledge of the Complainant when he registered the Disputed Domain Names. The Disputed Domain Names were registered on July 30, 1998 (<lottostore.com>) and January 1, 2011 (<lottoworks.com>). The Complainant has taken no action against the Disputed Domain Names until now, and should be barred from making its claim based on the doctrine of laches.
(d) The Complainant only filed trade mark applications to register the LOTTO WORKS word mark in 2013. The Disputed Domain Names are not confusingly similar to any of the Complainant’s trade marks, and both comprise generic terms unrelated to the Complainant’s products. The Complainant is claiming rights simultaneously in 2 different marks (i.e. LOTTO WORKS and LOTTO), which is not permitted under the Policy – the Complainant can only seek relief under one trade mark as paragraph 3(b)(ix)(1) of the Rules only refers to “a trademark…in which the Complainant has rights”.
(e) The Respondent is not using the Disputed Domain Names due to any value attributed to them in relation to the Complainant’s trade mark. He is using them in relation to their generic meaning. The Disputed Domain Names resolve to landing pages, from which the Respondent derives no revenue. The use of the Disputed Domain Names in relation to their descriptive or generic meaning constitutes a right or legitimate interest in them. The Respondent has also been making preparations to use the Disputed Domain Names to resolve to a website in relation to the Respondent’s lottery products.
(f) The Respondent requests a finding of Reverse Domain Name Hijacking, as it is an attempt by the Complainant to seize generic domain names to which it has no rights. The Complainant should have known that it had no plausible basis for its Complaint.
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(1) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(3) the Disputed Domain Names have been registered and are being used by the Respondent in bad faith.
The Panel notes that the Respondent seeks to rely on the doctrine of laches to deny the Complainant’s Complaint. It is well established that the doctrine of laches does not apply under the Policy (see, Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091; The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447; TMK A/S v. woosan, James Motors, WIPO Case No. D2012-2073). However, an inordinate delay in bringing proceedings may still be taken into account in the assessment of the Complaint, as “even if laches does not apply, delay may reflect the strength, or lack thereof, of a complainant’s case” (see Board of Trustees of the University of Arkansas v. FanMail.com, LLC, WIPO Case No. D2009-1139). In this case, no evidence has been provided by the Respondent to show that the Complainant has been aware of the Disputed Domain Names for a significant amount of time, nor that the Respondent may have relied on any such knowledge (had it existed). As such, the Panel will not take into account the length of time between registration of the Disputed Domain Names and the date the Complaint was filed in assessing the evidence.
The Panel accepts that the Complainant has rights in respect of the LOTTO WORKS trade mark and LOTTO trade mark on the basis of its International and EU trade mark registrations.
The Disputed Domain Name <lottoworks.com> incorporates the Complainant’s LOTTO WORKS trade mark in its entirety and is therefore confusingly similar. The Panel notes that the Complainant did not apply to register the LOTTO WORKS word mark until June 2013, and the LOTTO WORKS device mark until August 2009, which is after the Disputed Domain Name <lottoworks.com> was registered in 1998. However, the Panel refers to paragraph 1.4 of the WIPO Overview of the WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), which states that registration of a domain name before a complainant acquires trade mark rights in a name does not prevent a finding of identical or confusing similarity under the first element of the UDRP. Whether the Complainant had rights in the trade mark at the time of registration of the Disputed Domain Names may be relevant to the consideration of the second and third element, but it is not relevant for the purposes of determining whether the Disputed Domain Names are confusingly similar to a trade mark in which the Complainant has rights.
Either way, the Panel is satisfied that the Disputed Domain Name <lottoworks.com> is also confusingly similar to the Complainant’s LOTTO trade mark.
With regard to the Disputed Domain Name <lottostore.com>, the Complainant’s LOTTO trade mark is incorporated in its entirety, the only difference being the generic word “store”. It is well established that where the distinctive and prominent element of a disputed domain name is the complainant’s mark, and the only difference is a generic term that adds no distinctive element, then such a generic term does not negate the confusing similarity between the disputed domain name and the mark (See, Oakley, Inc. v. Joel Wong/BlueHost.com- INC, WIPO Case No. D2010-0100; Diageo Ireland v. Guinnessclaim, WIPO Case No. D2009-0679; and The Coca-Cola Company v. Whois Privacy Service, WIPO Case No. D2010-0088). The Panel finds that “lotto” is the distinctive component of the Disputed Domain Name and the addition of the word “store” does nothing to distinguish it from the Complainant’s trade mark for purposes of the Policy.
It is well-established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic Top-Level Domain extension, in this case “.com”, may generally be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
The Respondent’s allegation that the Complainant can only allege that a Disputed Domain Name is similar to one trade mark owned by the Complainant is misconceived and an incorrect interpretation of the Policy and Rules. This has been demonstrated through numerous UDRP proceedings where the complainants are clearly allowed to refer to more than one trade mark right.
The Panel finds that paragraph 4(a)(i) of the Policy is satisfied.
Paragraph 2.1 of the WIPO Overview states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Complainant has not authorised the Respondent to use the LOTTO WORKS or LOTTO trade mark, and there is no relationship between the Complainant and the Respondent which would otherwise entitle the Respondent to use such trade marks. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to prove it has rights or legitimate interests in the Disputed Domain Names.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Names by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Names or a name corresponding to the Disputed Domain Names in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Names, even if it has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Disputed Domain Name <lottostore.com> is currently inactive. The Disputed Domain Name <lottoworks.com> currently resolves to a parking page which contains sponsored links. As stated in paragraph 2.6 of the WIPO Overview, use of a domain name to post parking pages or pay-per-click links “may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a ‘bona fide offering of goods or services’…or from ‘legitimate noncommercial or fair use’ of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder.” A common example of permissible use of parking pages or pay-per-click links, which may amount to a right or legitimate interest, is a domain name that consists of a dictionary or common word, and the pay-per-click links genuinely relate to the generic meaning of the domain name and the respondent had no intention of targeting the complainant (see National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424).
Whilst the Panel accepts that the words “lotto”, “store” and “works” are generic words by themselves, the Panel is not convinced that the Respondent registered the Disputed Domain Names with the generic words in mind for the purposes of legitimately using the Disputed Domain Names in relation to their generic meaning. This is based on the following:
(a) The Complainant has been using its LOTTO trade mark since 1973, and first applied to register its LOTTO trade mark in 1974, which is long before the Disputed Domain Names were acquired by the Respondent in 1998 and 2011.
(b) The parking page to which the Disputed Domain Name <lottoworks.com> resolves includes click-through links to both the Complainant and competitors of the Complainant – at least half of the links refer to “Lotto” shoes (which is the type of product sold by the Complainant under its LOTTO WORKS trade mark). The Panel refers to L’Oréal v. PPA Media Services, Ryan G Foo / Fundacion Private Whois, Domain Administrator, WIPO Case No. D2013-2230, concerning the domain name <darkandlovely.com>, which prima facie appears to be a generic term. In that case, the panelists held that the “Respondent’s use of the Complainant’s Mark for a website displaying click-through links to the Complainant’s competitors does not constitute either a bona fide offering of goods or services, or a legitimate noncommercial or fair use”. The same reasoning can be applied here.
(c) In accordance with the Panel’s powers granted under paragraph 10(a) of the Rules, the Panel conducted its own factual research in respect of the other domain names registered by the Respondent (as set out in the attachments to the Response). The Panel found that the Respondent has registered at least one other domain name that incorporates a third party brand or trade mark. The Respondent has registered <magnum-4d.com>, which appears to be confusingly similar to a trade mark owned by a leading gaming company in Malaysia (see Magnum Corporation Berhad v. Cheam Heng Ming, WIPO Case No. D2002-0510, concerning the domain name <magnum4d.com>).
As stated by the panelist in Electronic Arts Inc. v. Michele Dinoia, NAF Claim No. 1403750, where a respondent registers a large number of domain names, it “must be particularly careful with respect to the rights of others claiming an interest in such name. ‘[T]hose who register domain names, and particularly those who register domain names in large numbers using automated programs and processes, are not allowed to simply turn a blind eye to the possibility that the names they are registering will infringe or violate the rights of trademark owners. That responsibility derives from paragraph 2 of the Policy, and in particular the words: ‘It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights’”.
The Respondent claims that he has spent time and money to prepare the launch of a website to which both Disputed Domain Names shall resolve. The Respondent provided a link to a website which is intended to demonstrate to the Panel that he has made demonstrable preparations to use them for a bona fide offering of goods or services (http://demo.trimarkgaming.com/[...]) (“Demo Website”). The Demo Website displays 9 images/icons that the webpage calls “lotto tickets: samples”. Clicking on each icon merely leads to a webpage showing a bigger version of such icon. However, there is no evidence to show when the Demo Website was created, i.e., whether or not it was before or after the Complaint was filed. Further, the web address of the Demo Website is linked to the domain name <trimarkgaming.com>, a domain name held by the Respondent. The domain name <trimarkgaming.com> resolves to the Demo Website. There is therefore no evidence to even show that the Demo Website was prepared for the purposes of the Disputed Domain Names, rather than for <trimarkgaming.com>.
Furthermore, the Panel notes the apparent mischaracterization of the registration date by the Respondent of the Disputed Domain Name <lottoworks.com>. The Panel notes in particular the conspicuous reference of the original 1998 registration date throughout the Response, but finds this disingenuous in light of the WhoIs record submitted by the Complainant in its original Complaint reflecting a wholly unrelated individual as registrant as recently as September 11, 2016.
The foregoing, coupled with the fact that the Respondent has failed to launch any active website in relation to the Disputed Domain Names, leads the Panel to conclude that the Respondent has not made demonstrable preparations to use the Disputed Domain Names for a bona fide offering of goods or services. Either way, any use of the Disputed Domain Names, particularly <lottoworks.com>, is likely to mislead Internet users into believing that it is connected to the Complainant.
In light of the above, the Panel finds that the Respondent registered the Disputed Domain Names to trade off the goodwill of the Complainant’s mark, which does not provide it with any rights or legitimate interests.
The Panel finds paragraph 4(a)(ii) of the Policy is satisfied.
The Respondent has used the words “store” and “works” in combination with the word “lotto” in the Disputed Domain Names. Although each of these words, by themselves, are common dictionary terms, the combination of them (i.e. “lotto store” and “lotto works”) are not generic phrases.
It cannot be mere coincidence that the Disputed Domain Name <lottoworks.com> is identical to the Complainant’s LOTTO WORKS trade mark, which it has been using for many years even prior to its trade mark registration. This is further supported by the fact that the Respondent conveniently omitted to explain that the Disputed Domain Name <lottoworks.com> was registered by the Respondent in 2016 and not 1998. Further, the parking page to which the Disputed Domain Name <lottoworks.com> resolves includes many references to shoes, and links to the Complainant’s and its competitors’ website. This amounts to bad faith registration and use. It is well established that even if the registrant is not exercising direct control over the content, the registrant remains responsible for the content appearing on any website to which its domain name resolves (e.g. sponsored links that are automatically generated). As stated in paragraph 3.8 of the WIPO Overview, to “the extent that the presence of certain advertising or links under such arrangement may constitute evidence of bad faith use of the relevant domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third-party trade marks…It would normally be sufficient to show that profit or ‘commercial gain’ was made by a third party, such as by the operator of an advertising revenue arrangement applicable to the registrant, or a domain name parking service used by the registrant.” See also Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912.
The fact that the Disputed Domain Name <lottostore.com> is currently inactive does not prevent a finding of bad faith registration and use (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The passive holding of a domain name may amount to bad faith registration and use when it is difficult to imagine any conceivable future use of the domain name that would be legitimate and would not infringe a complainant’s well-known mark or would not amount to unfair competition (see, Inter-IKEA v. Polanski, WIPO Case No. D2000-1614; Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438; Telstra Corporation Limited v. Nuclear Marshmallows, supra). In this case, the Disputed Domain Name <lottostore.com> would likely confuse users into falsely believing that the Disputed Domain Name will lead to an online store selling the Complainant’s sportswear. Due to the fact that the Complainant has been in operation since 1973 and is generally known worldwide, and taking into account the totality of the circumstances, the Panel is of the view that the Respondent was likely aware of the Complainant at the time he registered the Disptued Domain Name.
As stated in Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364, “it is use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the registrant is using the domain name in this manner because of its similarity to a mark or name of another person in the hope and expectation that that similarity would lead to confusion on the part of Internet users and result in an increased number of Internet users being drawn to that domain name parking page…the confusion that is usually relevant here is the confusion that draws the Internet user to the respondent’s website in the first place (for example, confusion that leads an Internet user to type the domain name into his Internet browser). It does not matter that when the Internet user arrives at the pay–per-click site that it then becomes clear that the website is unconnected with the trade mark holder.”
For all the reasons described above, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.
The Respondent requests a finding of Reverse Domain Name Hijacking. Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. In addition, Reverse Domain Name Hijacking is defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
The Panel has found that the Complainant has satisfied all three elements of the Policy, and therefore rejects the Respondent’s request for a finding of Reverse Domain Name Hijacking.
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 Names, <lottostore.com> and <lottoworks.com> be transferred to the Complainant.
Gabriela Kennedy
Sole Panelist
Date: February 13, 2017