Country/Territory
Registration No.
Mark
Classes
Date of Registration
Germany
30604874
028, among others
January 26, 2006
Germany
302011050742
028, among others
September 14, 2011
Complainant is Westdeutsche Lotterie GmbH & Co. OHG of Münster, Germany, represented by Cornelius, Bartenbach, Haesemann & Partner Partnerschaft von Rechtsanwälten mbB, Germany.
Respondent is WhoIs Privacy Corp. of Nassau, Commonwealth of the Bahamas.
The disputed domain name <westlotto.xyz> is registered with TLD Registrar Solutions Ltd. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 1, 2016. On September 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 2, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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, Complainant filed an amendment to the Complaint on September 15, 2016.
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 September 16, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 7, 2016.
The Center appointed Gary J. Nelson as the sole panelist in this matter on October 13, 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.
Complainant is the owner of at least two German Registrations for trademarks containing the term WESTLOTTO. Complainant uses its WESTLOTTO trademark in connection with lottery and gambling related services. Specifically, Complainant owns at least the following trademark registrations:
|
Country/Territory |
Registration No. |
Mark |
Classes |
Date of Registration |
|
Germany |
30604874 |
|
028, among others |
January 26, 2006 |
|
Germany |
302011050742 |
|
028, among others |
September 14, 2011 |
The disputed domain name, <westlotto.xyz>, appears to have been registered on June 3, 2016. The disputed domain name is not linked to a functioning website.
Complainant organizes and procures lottery and gambling games in Germany.
Complainant uses its WESTLOTTO trademark as a brand for lottery and gambling related services. Complainant's WESTLOTTO trademark is a famous brand for lottery and gambling related goods and services in Germany.
The disputed domain name is identical or confusingly similar to Complainant's WESTLOTTO trademark.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and is using the disputed domain name in bad faith.
Respondent did not reply to Complainant's contentions.
Paragraph 15(a) of the Rules instructs the Panel to "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."
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed 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 the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Complainant has established that it owns prior rights in the WESTLOTTO trademark and the disputed domain name is identical or confusingly similar to Complainant's WESTLOTTO trademark.
Complainant owns at least two German registrations for trademarks containing the term "West Lotto" combined with a design element. Specifically, Complainant owns German Trademark Registration Nos. 30604874 and 302011050742.
Accordingly, Complainant has established rights in its WESTLOTTO trademark pursuant to Policy, paragraph 4(a)(i). See Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. The respondent has the burden of refuting this presumption).
The disputed domain name is confusingly similar to Complainant's WESTLOTTO trademark because the disputed domain name incorporates the entirety of the dominant word portion of Complainant's WESTLOTTO Design trademark and merely deletes the design element along with the spaces separating the words "west" and "lotto," and adds the generic Top-Level Domain ("gTLD") ".xyz" domain suffix.
Neither the deletion of a design element from a trademark that captures the entirety of the dominant word portion of that same trademark, nor the addition of a gTLD suffix is typically sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity.
In this case, the addition of the gTLD ".xyz" domain suffix directly behind Complainant's WESTLOTTO trademark is insufficient to avoid a finding of confusing similarity.
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(i).
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent has failed to file a Response, which can suggest, in appropriate circumstances, that a respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse., WIPO Case No. D2000-1221 (finding that a respondent's failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name).
By not filing a Response, Respondent has not provided any evidence that it is commonly known by the disputed domain name, or that it is commonly known by any name consisting of, or incorporating the terms "west", "lotto", or any combination of these words. In Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where (1) the respondent is not a licensee of the complainant; (2) the complainant's rights in its related trademarks precede the respondent's registration of the domain name; and (3) the respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a Response, Respondent also failed to provide any evidence that it may be a licensee of Complainant or that its registration of the disputed domain name predates the establishment of Complainant's rights in its WESTLOTTO trademark.
The Panel finds that Respondent is maintaining an undeveloped website associated with the disputed domain name. In this case, Respondent's failure to develop a website associated with the disputed domain name is evidence supporting the conclusion that Respondent has no rights or legitimate interests in the disputed domain name. See Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273 (finding no rights or legitimate interests where respondent failed to submit a response to the complaint and made no use of the domain name in question); see also Melbourne IT Limited. v. Grant Matthew Stafford, WIPO Case No. D2000-1167 (finding no rights or legitimate interests in the disputed domain name where there is no proof that respondent made preparations to use the disputed domain name in connection with a bona fide offering of goods and services before notice of the domain name dispute, the disputed domain name did not resolve to a website and respondent is not commonly known by the disputed domain name).
Accordingly, the Panel concludes Respondent is not using the disputed domain name <westlotto.xyz> in association with a bona fide offering of goods and services pursuant to Policy, paragraph 4(c)(iii). See America. Online, Inc. v. Xiangfeng Fu, WIPO Case No. D2000-1374 ("it would be unconscionable to find […] a bona fide offering of services in a respondent's operation of [a] web-site using a domain name which is confusingly similar to the complainant's mark and for the same business").
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(ii).
The Panel finds that Respondent registered and is using the disputed domain name in bad faith.
The Panel finds that Respondent likely chose the disputed domain name with full knowledge of Complainant's rights in the WESTLOTTO trademark.
Respondent's awareness of the WESTLOTTO trademark can be inferred because Complainant's WESTLOTTO trademark is famous in Germany. See Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide, WIPO Case No. D2000-0911 ("the fact that Respondent [chose] to register a well-known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue").
Also, the Panel holds that Respondent is merely housing the disputed domain name and has not associated the disputed domain name with an active website. The lack of so-called active use does not prevent a finding of bad faith in the circumstances of this case. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(iii).
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, <westlotto.xyz>, be transferred to the Complainant.
Gary J. Nelson
Sole Panelist
Date: October 18, 2016