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La Française des Jeux v. Mary Lin Telemarket Asia [2005] GENDND 1591 (28 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

La Française des Jeux v. Mary Lin Telemarket Asia

Case No. D2005-0734

1. The Parties

The Complainant is a French semi-public company called La Française des Jeux, with domicile in France.

The Respondent appears on the data published by the registrar as Mary Lin Telemarket Asia, with domicile in Hong Kong, SAR of China.

2. The Domain Name and Registrar

The disputed domain name is <3615loto.com>.

The registrar is Communigal Communications, Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2005. On July 12, 2005, the Center transmitted by email to Communigal Communications Ltd. a request for registrar verification in connection with the domain name at issue. On July 25, 2005, Communigal Communications Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 1, 2005. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 8, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 28, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 30, 2005.

The Center appointed José Carlos Erdozain as the sole panelist in this matter on September 9, 2005. 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 owner of a trademark registration for the name “LOTO” and with extension for the territory of France and overseas departments and territories. Accordingly, the Complainant has several trademarks which include the word LOTO (e.g. LOTO FOOT, LOTO SPORTIF, etc.).

The dates of registration of these trademarks are different for each mark, but trademark LOTO (number 1435425) was registered on April 22, 1983.

The Complainant offers a minitel service under the code 3615. By dialing this number anyone of the public can try to gamble with through the services of the Complainant provides. This number can be dialed not only in France but also in the overseas territory.

The Respondent registered the domain name on February 23, 2000. The Respondent’s web site has pornographic content and in the French language.

The Complainant has given no authorization to the Respondent to use any of the Complainant’s trademarks.

The Respondent has filed no evidence of retaining any right on the disputed name, nor has he given any reason why it registered that specific domain name.

5. Parties’ Contentions

A. Complainant

The Complainant contends:

That the domain name is confusingly similar to the LOTO trademarks owned by the Complainant.

That the Complainant offers a minitel service under the code 3615 LOTO.

That the minitel code 3615 is to be considered as a generic term and any user of the Internet will surely relate the domain name with the activities developed by the Complainant. Further, the Complainant sustains that the extension “.com” is irrelevant in determining the similarity of the domain name with a trademark and to avoid confusion.

That the Respondent has no rights, or legitimate interests with respect to the domain name.

That the activity of the Complainant is well known by the French public.

That the Complainant has not authorized the Respondent to use the domain name, or any of the Complainant’s trademarks.

That the Respondent uses the disputed domain name to redirect Internet users to a website with pornographic content.

That the domain name was registered and is being used in bad faith due to the pornographic content of such a website. Taking into consideration that LOTO is a well known trademark in France and overseas territories, not only the registration but also the use of the domain name must be considered to have been done in bad faith.

B. Respondent

The Respondent has filed no response whatsoever.

6. Discussion and Findings

In order for the Complainant to prevail and have the disputed domain name <3615loto.com> transferred to itself, Complainant must prove the following (the Policy, paragraph 4(a):

(i) the 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 right or legitimate interest in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

(a) The domain name is identical or confusingly similar to trademarks or service marks in which the complainant has rights

The Complainant has filed evidence of having registered several trademarks, all of which include, as a distinctive element, the word LOTO. The Complainant registered a trademark with the name LOTO for the first time in 1983.

The Complainant has also filed evidence that it has used the number 3615 in association with the trademark LOTO.

The key question is, and the Complainant has been successful in complying with the burden of proof in this respect, that the code 3615 together with the trademark LOTO has acquired significance enough as to be considered as a whole, a well-known trademark. Judicial decisions issued by French courts agree that it has.

The domain name is, when compared with the name used by the Complainant, virtually identical to this mark.

Therefore, the use of the disputed domain name may confuse Internet users, who will easily believe that the domain name is somehow connected to or affiliated with the activities of the Complainant. See, e.g., Capital Broadcasting v. Momm Amed la, WIPO Case No. D2000-1610 (January 24, 2001), General Electric Company v. Normina Anstalt a/k/a Igor Fyodorov, WIPO Case No. D2000-0452 (July 10, 2000), and Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415 (January 23, 2001).

The fact that the Complainant has not registered 3615 LOTO as a trademark cannot be taken into consideration as a reason to refuse the applicability of the Policy and the Rules, since the Complainant has registered the word LOTO as a trademark, and the Complainant uses the minitel code 3615 in connection with this trademark. Indeed, the combination of ‘3615’ and ‘LOTO’ has been continuously used by the Complainant, thus gaining distinctiveness. Several decisions of the Center have been issued based on this opinion. See, e.g., Jose Luis SamPedro Saez v. Galileo Asesores S.L., WIPO Case No. D2000-1650, (January 27, 2001), Rosa Montero Gallo v. Galileo Asesores SL, WIPO Case No. D2000-1649, (January 27, 2001).

In conclusion, the Panel finds that the requirement set forth in the Policy and the Rules, which gives title to this paragraph, is met.

(b) Respondent has no rights, nor any legitimate interests in the domain name

The Respondent has not filed any evidence which might have proved that the Respondent has any right or legitimate interests as to the disputed domain name.

The Respondent has likewise failed to give any reason why it has associated the name 3615LOTO with the pornographic content of the website linked to the domain name, a use which may cause a typical Internet user to associate the domain name and its pornographic content with the activities legitimately developed by the Complainant.

On the contrary, the Complainant has submitted evidence that it has rights in the name LOTO and use of the minitel code 3615 in combination with the trademark LOTO in the offering of services since 1998.

Also, it should be taken into account that the Complainant has never authorized the use of its trademarks to the Respondent.

In conclusion, this Panel considers that the requirement established in the Policy and in the Rules, which gives title to this paragraph, is met.

(c) The domain names was registered and is being used in bad faith by the respondent

The registration and use of the disputed domain name took place after the activities of the Complainant under the sign 3615loto had become commonly known by a large part of the French public and, also, on an international basis, due to the fact that the activities of the Complainant reach French overseas territories.

Given the facts of this case, the Panel finds that it is not coincidental that the Respondent chose the words “3615loto” in registering the disputed domain name. The Respondent most likely knew at the time of registration that such combination of numbers and letters was connected to a well known activity of the Complainant.

Also, the continuous use of the domain name in connection with pornographic images, despite the Complainant having sent a cease and desist letter to the Respondent, explaining the infringement of Complainant’s trademarks and the damage being caused to the Complainant’s image, is evidence that the Respondent is using the domain name in bad faith. See, e.g., MatchNet plc. V. MAC Trading, WIPO Case No. D2000-0205, (May 11, 2000), and Europay International S.A. v. Domaines and Cecilia Ng, WIPO Case No. D2000-0513, (July 31, 2000).

Therefore, this Panel finds that the third requirement as established in the Policy and the Rules is also met.

7. Decision

In the Complaint, the Complainant requested that in conformity with paragraph 4(i) of the Policy, the Panel issue a decision that the disputed domain name be transferred to the Complainant. The Complainant having proved each of the three elements set out in paragraph 4(a)(i)(ii) and (iii) of the Policy is entitled to the remedy requested. The Panel requires that the domain name <3615loto.com> be transferred to the Complainant.

Jose Carlos Erdozain
Sole Panelist

Date: September 28, 2005