Complainants are Tatts Group Limited, Golden Casket Lottery Corporation Limited and New South Wales Lotteries Corporation Pty Limited, all of Woolloongabba, Queensland, Australia, represented by King & Wood Mallesons, Australia.
Respondent is Lottoland Gibraltar Ltd or Lottoland Ltd of Gibraltar, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland / Whois Privacy (enumDNS dba) of Leudelange, Luxembourg, represented by Actuate IP, Australia.
The Disputed Domain Names <ozlotto.co> and <powerball.org> are registered with GoDaddy.com, LLC. The Disputed Domain Name <setforlifelottery.org> is registered with EuroDNS S.A. Both registrar are collectively referred to as the "Registrars".
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 18, 2016. On March 18, 2016, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Disputed Domain Names. On March 19, 2016 and March 21, 2016, the Registrars transmitted by email to the Center their verification responses, GoDaddy confirming the Respondent Lottloand Gibraltar Ltd. as the registrant for the Disputed Domain Names <ozlotto.co> and <powerball.org> and EuroDNS S.A. disclosing the underlying registrant, Lottoland Ltd., and its contact information for the Disputed Domain Name <setforlifelottery.org>. The Center sent an email communication to Complainants on March 23, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. Complainants sent an email to the Center on March 24, 2016 informing it did not wish to amend the Complaint.
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 Respondent of the Complaint, and the proceedings commenced on March 31, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 20, 2016. The Response was filed with the Center on April 20, 2016.
The Center appointed Richard W. Page as the sole panelist in this matter on May 2, 2016. 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.
This Complaint is filed jointly by Tatts Group Limited ("Tatts Group") and two of its wholly owned subsidiaries, Gold Casket Lottery Corporation Limited ("Golden Casket") and New South Wales Lotteries Corporation Pty Limited ("NSW Lotteries"). NSW Lotteries has the exclusive license with the State Government of New South Wales to operate Powerball, Oz Lotto and Set for Life lotteries in New South Wales. Golden Casket has the sole license with the State Government of Queensland to operate these same lotteries in Queensland. Tatts Group, as the parent company of these and other wholly owned subsidiaries, overseas the provision of Powerball, Oz Lotto and Set for Life lotteries in New South Wales, Queensland and every other State in Australia (except for Western Australia).
Previous panels have permitted a single complaint where the Complainants have a "common grievance" against a respondent, as long as it is equitable and procedurally efficient to do so (Fulham Football Club (1987) Limited, et al. v. Domains By Proxy, In/Official Tickets Ltd., WIPO Case No. D2009-0331). The "common grievance" could arise where complainants have a common legal interest in a trademark, or where the complainants are the target of common conduct by a respondent.
Here, Complainants have a common grievance against Respondent on the basis that they have a common legal interest in the relevant trademarks. This is because:
1. Tatts Group, Golden Casket and NSW Lotteries are joint-owners of registered trademarks for OZ LOTTO. Complainants have authority to act on behalf of each of the other joint-owners of these trademarks in relation to this Complaint;
2. Tatts Group and NSW Lotteries each owns separate registered trademarks for POWERBALL;
3. Golden Casket owns registered trademarks of SET FOR LIFE;
4. As parent company and controlling entity of the corporate group, Tatts Group has oversight of, and an interest in, any trademarks owned by its subsidiaries; and
5. Golden Casket and NSW Lotteries are subsidiaries of Tatts Group.
The POWERBALL, OZ LOTTO and SET FOR LIFE trademarks will hereinafter be referred to collectively as the "TATTS Marks."
Complainants are also the target of common conduct by Respondent, who has allegedly registered the Disputed Domain Names which correspond to the TATTS Marks. Complainants use each of the TATTS Marks in respect of a different lottery product and in provision of lottery services. Respondent created websites (the "Websites") corresponding to each of the Disputed Domain Names (which, following notice of the dispute, they removed or redirected). The Websites all allegedly had a similar "look and feel," and all allegedly trade off the reputation of Complainants' TATTS Marks.
Respondent makes no objection to the Complaint containing other related entities. Therefore, the Panel finds that there is sufficient justification to proceed with multiple Complainants.
Complainants submit that it is appropriate for a single complaint to be brought against the multiple Respondents listed above as all of the Disputed Domain Names are subject to common control (Speedo Holding B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281).
The common control is allegedly evidenced by:
1. The WhoIs records for the Disputed Domain Names <powerball.org> and <ozlotto.co> show the same registrant;
2. The Facebook link on the Website previously hosted at each of the Disputed Domain Names indicated that the Website was "By Lottoland Ltd." The WhoIs records shows that the true registrant of <setforlifelottery.org> behind the privacy service is Lottoland;
3. The similarity of the Disputed Domain Names <powerball.org> and <ozlotto.co> to the Disputed Domain Name <setforlifelottery.org>, in that each of these Disputed Domain Names identifies a lottery product which is operated exclusively in most parts of Australia by Tatts Group;
4. The look and feel of the Websites previously hosted at the Disputed Domain Names is identical, except for the lottery service to which the Websites related;
5. All three registrants share the same email address as confirmed by the Registrars;
6. The fact that in correspondence, the lawyers for an entity related to Lottoland (being Lottoland Australia Pty Ltd) have not disputed the assertion that Lottoland owns each of the Disputed Domain Names, and caused the Websites to be removed (in the case of the Disputed Domain Names <setforlifelottery.org> and <ozlotto.co>) or redirected (in the case of the Disputed Domain Name <powerball.org>) following a demand by Tatts Group.
Because of this commonality, it is procedurally efficient to consider these three Disputed Domain Names together in one complaint. This will not prejudice the rights of any party.
Respondent identifies itself as Lottoland Gibraltar Ltd and confirmed that it is the owner behind the privacy shield for the Disputed Domain Name <setforlife.org>. Respondent makes no objection to proceeding with the single Complaint. Accordingly, the Panel proceeds to a single decision.
Tatts Group is Australia's leading wagering, lotteries and gaming solutions company. It is listed on the Australian Stock exchange, and had an annual revenue of AUD 2.92 billion for the financial year ending June 2015.
Tatts Group's lotteries business boasts annual sales of over AUD 4.3billion. In the second half of 2015, there were approximately 3 million visitors to the Tatts Group's lotteries website each month. Approximately 2 million players registered on "www.tatts.com" during that time.
As of June 30, 2014, Tatts Group was ranked as the eleventh largest lottery operation worldwide.
In Australia, Tatts Group, through wholly owned subsidiaries including Golden Casket and NSW Lotteries, is licensed to sell its lottery products in every state and territory except for Western Australia (whose lottery is government-owned and operated). Tatts Group is the exclusive lottery operator in New South Wales, Queensland and Victoria. In 2012, Tatts Group was appointed as the exclusive Master Agent to operate South Australia's government-owned lottery on behalf of the Lotteries Commission of South Australia.
Tatts Group markets and provides lotteries to consumers through a number of different recognized brands. Some lottery games, such as the Saturday Lotto, are branded locally by jurisdiction. Others, such as Oz Lotto, Powerball and Set for Life, have the same overall branding nationally.
Complainants own a number of Australian registered trademarks for OZ LOTTO, POWERBALL and SET FOR LIFE (defined above collectively as the "TATTS Marks"), in word and logo form, which are registered in respect of the operation of lotteries and related goods and services. The TATTS Marks are long-standing and well-known in Australia with registration dates as early as 1993.
The Disputed Domain Names were registered between May 6, 2000 and February 19, 2015.
Complainants contend that the Disputed Domain Names <ozlotto.co> and <powerball.org> are identical to the OZ LOTTO Mark and POWERBALL Mark. These Disputed Domain Names wholly incorporate those marks and do not add any further terms. It is well established that generic Top-Level Domains such as ".org" and ".co" can be ignored for purpose of assessing identity or confusing similarity (see, e.g., Arthur Guinness Son & Co (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1968).
Complainants further contend that the Disputed Domain Name <setforlifelottery.org> is confusingly similar to the Complainants' SET FOR LIFE Mark. The Disputed Domain Name wholly incorporates the SET FOR LIFE Mark and adds the descriptive term "lottery." This addition only serves to increase the confusing similarity, as this term is descriptive of the services provided by Complainants under the TATTS Marks (see, e.g., Paris Hilton v. Turvill Consultants, WIPO Case No. D2012-0965). Complainants are well-known as the operator of the Set for Life lottery in Australia. For these reasons, Complainants submit that the Disputed Domain Names <ozlotto.co> and <powerball.org> are identical to Complainants' OZ LOTTO and POWERBALL Marks and the Disputed Domain Name <setforlifelottery.org> is confusingly similar to Complainants' SET FOR LIFE Mark.
Complainants submit that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. Once Complainants are able to demonstrate a prima facie case, the evidentiary burden shifts to Respondent to rebut the presumption of an absence of rights or legitimate interests (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1).
Complainants further submit that they have not authorized Respondent to use the TATTS Marks in the Disputed Domain Names, and Respondent is not a licensee of or reseller for Complainants. Respondent is not otherwise affiliated with or endorsed by Complainants.
Complainants further submit that Respondent is a business with the registered name "Lottoland Gibraltar Limited," which operates in Australia via a subsidiary with the registered name "Lottoland Australia Pty Ltd." Respondent operates websites associated with their gambling business at the domain name <lottoland.com> and, in Australia, <lottoland.com.au>. Complainants are not aware of any facts which would indicate Respondent trades under names which are the same as or similar to the Disputed Domain Names.
Complainants conclude that Respondent is not commonly known by the Disputed Domain Names.
Complainants allege that, before any notice to Respondent of the dispute, Respondent was not using the Disputed Domain Names in connection with a bona fide offering of goods or services. Respondent is a bookmaker who operates an online gambling business which allows Internet users to bet on the outcome of lottery games. Respondent's primary websites for taking such bets are at <lottoland.com> and <lottoland.com.au>.
Complainants further allege that Respondent is a competitor of Complainants. Respondent and Complainants both operate within the gambling industry. While Respondent appears to assert that they provide bookmaking services and do not operate a lottery in Australia, they clearly provide services which allow consumers to bet on the outcome of lotteries, including those owned and operated by Complainants.
This is a similar alternative to playing the lottery, and as such, is a service which competes with Complainants' lotteries.
Complainants continue to allege that before Respondent had any notice of the dispute, the Websites at the Disputed Domain Names were each targeted at one of Complainants' lottery products, any offering of good or services via the Websites at the Disputed Domain Names could not have been bona fide while Respondent was trading off Complainants' reputation and goodwill in the TATTS Marks.
Complainants suggest that an inference can be drawn that these Websites were set up in preparation for allowing Respondent to take bets on the outcome of Complainants' lotteries online. For example, text on the homepage of each of the Websites referred to "playing" the relevant lottery online, or buying tickets online.
Complainants argue that it is inconceivable that a commercial organization such as Lottoland would establish websites for the sole purpose of advertising or providing information about its competitors' products or services. The only possible reason that Respondent could have created such Websites, and incorporated the TATTS Marks into the Disputed Domain Names, is for commercial purposes to further their lottery betting business and to drive consumers seeking Complainants' lottery products away from Complainants.
Complainants submit that the content of the Websites previously hosted at the Disputed Domain Names gave the impression that the owner of the Website was also the operator of the relevant lottery, or was a least affiliated with the lottery operator. Respondent used the TATTS Marks, as well as similar logos and similar color schemes through the Websites as those of Complainants.
Complainants submit that it appears that Respondent was using the Websites at <powerball.org> and <setforlifelottery.org> to harvest email addresses from Internet users who were looking for Complainants' lottery services, also in furtherance of their lottery betting business. Internet users visiting the Websites were invited to provide their email addresses on the premise that lottery result would be sent to their email. The inference can be drawn that Respondent was using the Websites to generate mailing lists for its Lottoland business. Once again, the use is not bona fide.
Complainants submit that currently, the Disputed Domain Names <ozlotto.co> and <setforlifelottery.org> are inactive. The Disputed Domain Name <powerball.org> redirects to a website at <powerball.info>, which is also registered to Lottoland Gibraltar Ltd. This website allows Internet users to bet on Powerball lotteries in the United States of America and the United Kingdom via Lottoland's UK website (at "www.lottoland.co.uk"). This use does not provide Respondent with rights or legitimate interest in the Disputed Domain Name <powerball.org> under the Policy, as Respondent only began using the Disputed Domain Name in this way following notice of the dispute.
Complainants submit that Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names. The Disputed Domain Names were previously (and in the case of <powerball.org> still) being used for commercial purposes. Respondent is a competitor of Complainants and it would be absurd to think that Respondent would use the Disputed Domain Names to provide information on a competitor's products without any intent for commercial gain.
In light of the arguments above, Complainants argue that Respondent does not have any rights to or legitimate interest in the Disputed Domain Names.
Complainants submit that Respondent registered and is using the Disputed Domain Names in bad faith.
Lottoland was established in May 2013. This is 20 years after Complainants registered the OZ LOTTO Mark, 19 years after Complainants registered the POWERBALL Mark and 14 years after Complainants registered the SET FOR LIFE Mark.
Complainants allege that the TATTS Marks are iconic in Australia, and have been promoted and used extensively and continuously since the 1990s. There is no legitimate reason why a commercial organization, which operates in competition with Complainants, would register domain names which incorporate Complainants' famous TATTS Marks. The very fact that Respondent has done so means that bad faith can be presumed.
Complainants further submit Respondent has used the Disputed Domain Names to intentionally attempt to attract, for commercial gain, Internet users to their Websites by creating a likelihood of confusion with the TATTS Marks as to the source, sponsorship, affiliation, or endorsement of the Websites or of the lottery services referred to on the Websites.
Complainants argue that there is no credible explanation for Respondent's choice to use the TATTS Marks in the Disputed Domain Names other than to trade off Complainants' reputation in those marks, or to create a false association with Complainants.
Complainants submit that Respondent registered and is using he Disputed Domain Names in bad faith.
Respondent confirmed that it is the owner of the Disputed Domain Name <setforlifelottery.org> registered with the privacy shield at the time of the Complaint filing. Respondent offers a lottery betting service through its website, located at "www.lottoland.com" (the "Lottoland Website"). Essentially users are able to place bets on the outcome of a number of worldwide lotteries using the Lottoland Website. The way this is done is by the user placing an online bet of a set of numbers drawn in the lottery, as they would with the relevant lottery provider, the jackpots offered by Respondent mirror those set by the relevant lottery provider, so the outcome of the bet is the same as the outcome of purchasing a lottery ticket. The Lottoland Website allows users to bet on the outcome of international lotteries in jurisdictions other than their home jurisdiction, where those users do not have the option to purchase tickets to those lotteries.
Respondent does not challenge Complainants' assertion that the Disputed Domain Names are identical or similar to Complainants' Australian registered TATTS Marks.
Respondent contests the assertion that it lacks rights and legitimate interests in the Disputed Domain Names. Respondent claims to be 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 TATTS Marks. The Websites hosted at the Disputed Domain Names were, until around February 2016, used by Respondent purely as an information service in relation to lotteries which were operated by Complainants. The Website provided information about Complainants' lotteries known under the TATTS Marks and their respective operation (including winning numbers, jackpots and draw dates), news and winners' stories, and rules and information of how to play the respective lotteries. Importantly, the Websites did not allow a user to buy lottery tickets of any kind, including by directing them to a third party website, such as those operated by Complainants for the purchase of lottery tickets, or Respondent for its lottery betting services.
Respondent contends that there was no mechanism available on the Websites for Respondent to make any commercial gain from their operation. The Websites did not include any mechanism for users to purchase lottery tickets from Complainants, utilize Respondent's lottery betting services, or be directed to such services on any other third party websites. The content hosted on the Websites made no reference whatsoever to Respondent or tarnish Complainants' TATTS Marks. It would have been necessary for there to be a mechanism to direct users to utilize Respondent's betting services, or at the very least a reference to the availability of Respondent's betting services being made. Respondent did not ever use the Websites in a commercial way, and instead it has acted in a purely informational capacity for Complainants' various lotteries. There was no offering or promotion of Respondent's various lotteries services on the Websites, which were in fact referring to Complainants' own lottery results.
Respondent submits that the use of trademarks in the Disputed Domain Names to provide information about the goods and services of the trademark proprietor has been upheld as a legitimate use of a domain name pursuant to paragraph 4(c)(iii) of the Policy. See Pfizer Inc. v. Van Robichaux, WIPO Case No. D2003-0399. This finding was reached despite the use of the trademark in question in the domain name being likely to create initial confusion about the origin of the respondent's website.
Respondent counters Complainants' assertion that the only possible intention of Respondent in providing such information about a competitor was to divert customers for a commercial purpose. Respondent argues that Complainants have provided no evidence of these allegations. The Websites operated in a purely informational capacity in relation to Complainants' various lotteries, and there was no mechanism for information available on the Websites for Respondent to commercially gain anything from their operation, not even so far as any mention of Respondent or its lottery betting services.
Respondent contests Complainants' allegations that users of the Websites were invited to provide their email address on the premise that lottery results would be sent to their email addresses, and as such an inference can be drawn that the Respondent was using the Websites to generate a mailing list for its business. Respondent strongly denies this allegation and the mailing list feature for the Websites have never been activated or used in that way.
Respondent argues that the respective deactivation and redirection of the Disputed Domain Names resulting from communications exchanged between the parties was simply a commercial decision by Respondent to attempt to avoid a protracted dispute with Complainants and done so entirely without admissions as explained in the correspondence. Respondent strongly rejects Complainants' assertion that the change in use of the Disputed Domain Names since being put on notice of a potential UDRP complaint from Complainants demonstrates its use of the Disputed Domain Names is not bona fide.
Respondent argues that the redirection of the Disputed Domain Name <powerball.org> to <powerball.info> is bona fide because the website under the domain name <powerball.info> provides the same informational service as the Website under the Disputed Domain Name <powerball.org> previously did, but in relation to Powerball lottery operations in the United States of America, of which Complainants have no commercial association whatsoever or relevant trademark rights. There are no references made to Respondent or its lottery betting services on the website under the domain name <powerball.info> in order for Respondent to commercially gain from the operation of this website notwithstanding a lack of connection with Complainants.
Respondent's Websites provided purely informational services without a mechanism for Respondent to commercially gain from their operation in any way. Respondent submits that its ownership of the Disputed Domain Names satisfies paragraph 4(c)(ii) of the Policy. The recent parking of the Websites under the Disputed Domain Names <ozlotto.co> and <setforlifelottery.org> and redirection of the Disputed Domain Name <powerball.org> do not impair Respondent's ability to establish that these acts were done on an entirely without admission basis to avoid a dispute with Complainants.
Respondent asserts that the Disputed Domain Names were registered or acquired in order to provide an informational service about the relevant lotteries operated by Complainants. Whilst it is accurate to state that Respondent's services could compete with Complainants' services (notwithstanding the services offered are not identical), the Websites provided absolutely no mechanism to direct or compel consumers to use Respondent's services over the Complainants' services. In fact by not having any reference to Respondent or its lottery betting services on the Websites and prominent use of the TATTS Marks, it would be reasonable to suggest that the Websites in fact acted to promote Complainants' lotteries, given that the content of Websites was purely informational in relation to those lotteries. If there was a bad faith basis for registration of the Disputed Domain Names as alleged by Complainants, there would need to be a link on the Website with Respondent in some way or form which would be recognized by visitors, otherwise they do not forward Respondent's commercial cause at all.
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
i) that the Disputed Domain Names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainants have rights; and,
ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and,
iii) that the Disputed Domain Names have been registered and are being used in bad faith.
Complainants contend that they own a number of Australian registered trademarks for OZ LOTTO, POWERBALL and SET FOR LIFE (defined above collectively as the "TATTS Marks"), in word and logo form, which are registered in respect of the operation of lotteries and related goods and services. The TATTS Marks are long-standing and well-known in Australia with registration dates as early as 1993.
Complainants further contend that the Disputed Domain Names <ozlotto.co> and <powerball.org> are identical to the OZ LOTTO Mark and POWERBALL Mark. The Disputed Domain Names wholly incorporate those marks and do not add any further terms.
Complainants further contend that the Disputed Domain Name <setforlifelottery.org> is confusingly similar to the Complainants' SET FOR LIFE Mark. The Disputed Domain Name wholly incorporates the SET FOR LIFE Mark and adds the descriptive term "lottery." This addition only serves to increase the confusing similarity, as this term is descriptive of the services provided by the Complainants under the TATTS Marks.
Respondent concedes that the Disputed Domain Names are either identical with or confusingly similar to the TATTS Marks. Therefore, the Panel finds that Complainants have met the requirements of paragraph 4(a)(i) of the Policy.
Complainants submit that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names pursuant to paragraph 4(a)(ii) of the Policy.
The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Names:
(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.
Once Complainants are able to demonstrate a prima facie case, the evidentiary burden shifts to Respondent to rebut the presumption of an absence of rights or legitimate interests (see WIPO Overview 2.0, Paragraph 2.1).
Complainants allege that, before any notice to Respondent of the dispute, Respondent was not using the Disputed Domain Names in connection with a bona fide offering of goods or services. Respondent is a bookmaker who operates an online gambling business which allows Internet users to bet on the outcome of lottery games. Respondent's primary websites for taking such bets are at <lottoland.com> and <lottoland.com.au> and Respondent is a competitor of Complainants within the gambling industry.
Complainants continue to allege that before Respondent had any notice of the dispute, the Websites at the Disputed Domain Names were each targeted at one of Complainants' lottery products, any offering of good or services via the Websites at the Disputed Domain Names could not have been bona fide while Respondent was trading off Complainants' reputation and goodwill in the TATTS Marks.
Complainants suggest that an inference can be drawn that the Websites were set up in preparation for allowing Respondent to take bets on the outcome of Complainants' lotteries online.
Complainants submit that it appears that Respondent was using the Website at <powerball.org> and <setforlifelottery.org> to harvest email addresses from Internet users who were looking for Complainants' lottery services, also in furtherance of their lottery betting business. Internet users visiting the Websites were invited to provide their email addresses on the premise that lottery result would be sent to their email. The inference can be drawn that Respondent was using the Websites to generate mailing lists for their Lottoland business.
Complainants allege that these activities do not constitute the bona fide sale of goods or services.
Complainants submit that Respondent is a business with the registered name "Lottoland Gibraltar Limited," which operates in Australia via a subsidiary with the registered name "Lottoland Australia Pty Ltd." Respondent operates websites associated with their gambling business at the domain name <lottoland.com> and, in Australia, <lottoland.com.au>. Complainants are not aware of any facts which would indicate Respondent trades under names which are the same as or similar to the Disputed Domain Names.
Complainants conclude that Respondent is not commonly known by the Disputed Domain Names.
Complainants argue that it is inconceivable that a commercial organization such as Lottoland would establish websites for the sole purpose of advertising or providing information about its competitors' products or services. The only possible reason that Respondent could have created such Websites, and incorporated the TATTS Marks into the Disputed Domain Names, is for commercial purposes to further their lottery betting business and to drive consumers seeking Complainants' lottery products away from Complainants.
Complainants submit that Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names. The Disputed Domain Names were previously (and in the case of <powerball.org> still) being used for commercial purposes. Respondent is a competitor of Complainants and has no motivation to use the Disputed Domain Names to provide information on a competitor's products without any intent for commercial gain. The ability to harvest consumer data in the form of email addresses is an indication of such intent.
The Panel finds that Complainants have made their prima facie case under paragraph 4(a)(ii) of the Policy and that Respondent now has the burden of refuting these allegations.
Respondent argues under paragraph 4(c)(iii) of the Policy that it is making a noncommercial use of the Disputed Domain Names.
Respondent contends that there was no mechanism available on the Websites for Respondent to make any commercial gain from their operation. The Websites did not include any mechanism for users to purchase lottery tickets from Complainants, utilize the Respondent's lottery betting services, or be directed to such services on any other third party websites. Respondent did not ever use the Websites in a commercial way, and instead they have acted in a purely informational capacity for Complainants' various lotteries. There was no offering or promotion of Respondent's various lotteries services on the Websites, which were in fact referring to Complainants' own lottery results.
Respondent contests Complainants' allegations that users of the Websites were invited to provide their email address on the premise that lottery results would be sent to their email addresses, and as such an inference can be drawn that Respondent was using the Websites to generate a mailing list for its business. Respondent denies this allegation and the mailing list feature for the Websites had never been activated or used in that way.
The Panel finds that Complainants and Respondent are competitors and that Respondent is a commercial enterprise in the gambling industry. The Panel further finds unpersuasive Respondent's argument that it incurred the time and expense of creating websites related to the Disputed Domain Names merely to publicize information of a competitor for noncommercial purposes. The Websites were set up with the capacity to harvest information regarding Internet gamblers which shows a commercial intent. The allegation that this capacity was never used does not change the original intent.
Therefore, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Names pursuant to the Policy, paragraph 4(a)(ii).
Complainants submit that Respondent registered and is using the Disputed Domain Names in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Complainants charge that there is no legitimate reason why a commercial organization such as Respondent, which operates in competition with Complainants, would register the Disputed Domain Names which incorporate the Complainants' famous TATTS Marks. The very fact that Respondent has done so means that bad faith can be presumed.
Complainants argue that there is no credible explanation for Respondent's choice to use the TATTS Marks in the Disputed Domain Names other than to trade off Complainants' reputation in those marks, or to create a false association with Complainants.
Complainants further submit Respondent has used the Disputed Domain Names to intentionally attempt to attract, for commercial gain, Internet users to its Websites by creating a likelihood of confusion with the TATTS Marks as to the source, sponsorship, affiliation, or endorsement of the Websites or of the lottery services referred to on the Websites. These criteria are found in paragraph 4(b)(iv) of the Policy and potentially support a finding of bad faith.
Respondent asserts that the Disputed Domain Names were registered or acquired in order to provide an informational service about the relevant lotteries operated by Complainants. Whilst it is accurate to state that Respondent's services could compete with Complainants' services (notwithstanding the services offered are not identical), the Websites provided absolutely no mechanism to direct or compel consumers to use Respondent's services over the Complainants' services. In fact by not having any reference to Respondent or its lottery betting services on the Websites and prominent use of the TATTS Marks, it would be reasonable to suggest that the Websites in fact acted to promote Complainants' lotteries, given that the content of the Websites was purely informational in relation to those lotteries. If there was a bad faith basis for registration of the Disputed Domain Names as alleged by Complainants, there would need to be a link on the Websites with Respondent in some way or form which would be recognized by visitors, otherwise they do not forward Respondent's commercial cause at all.
However, the Panel has found Respondent's argument that it ran purely informational Websites to be unpersuasive. In addition, the Panel rejects Respondent's argument that a finding of bad faith requires a link on the Websites with Respondent in some way or form which would be recognized by visitors, otherwise they do not forward Respondent's commercial cause at all. A visual link on the Websites is not the only way to collect useful commercial information from a website.
The Panel finds that this evidence is sufficient to establish the necessary elements of bad faith under the Policy paragraph 4(b)(iv) and under the additional criterion of intentional trading off the TATTS Marks. Therefore, the Panel finds that Respondent registered and used the Disputed Domain Names in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
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, <ozlotto.co>, <powerball.org> and <setforlifelottery.org>, be transferred to Complainant Golden Casket Lottery Corporation Limited.
Richard W. Page
Sole Panelist
Date: May 16, 2016