In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a three-member Panel denied the transfer of the domain name (lotto.com) because the Complainant failed to prove the absence of rights and legitimate interests on the part of the Respondent.
The Complainant was Bremer Toto und Lotto GmbH, a German company. It was the co-owner of several trademarks including a German trademark in LOTTO registered in 1997, as well as both word marks and figurative trademarks incorporating the term LOTTO in conjunction with a stylized shamrock.
The Respondent was Nigel Birrell of Cavour Ltd., a company based in the Isle of Man. The Respondent was also the Chief Executive Officer of Lottoland Limited, a company involved in the gambling industry.
The disputed Domain Name was
To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements set out at paragraph 4(a):
(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Identity / similarity
As far as the first limb was concerned, the Panel found that the Complainant had evidenced rights in the trademark LOTTO and that the Domain Name was identical to its trademark. The Panel noted that the Complainant's trademarks were jointly owned, but found that the issue of whether or not the Complainant was entitled to file a complaint without the consent of its co-owners was not relevant under the first limb. Thus the Complainant satisfied the first element set out in paragraph 4(a) of the UDRP.
Rights / legitimate interests
Turning to the second limb and a respondent's rights or legitimate interests (or lack of them), according to section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), a complainant must prove that the respondent had no rights or legitimate interests in respect of the domain name in question. A complainant is normally required to make out a prima facie case and it is for the respondent to demonstrate otherwise. If the respondent fails to do so, then the complainant is deemed to satisfy paragraph 4(a)(ii) of the UDRP.
In the present case, the Complainant did not provide any explanation as to why the Respondent had no rights or legitimate interests in respect of the Domain Name. On the contrary, the Respondent argued that it had begun to use the Domain Name a year earlier by redirecting it to a website for United States consumers and that it had made significant investment in developing a business in the United States. The Panel noted that the Domain Name had existed for many years, but was only recently acquired by the Respondent for a significant sum in furtherance of its plan to launch a new online lottery-related business in the United States. In support of its contentions, the Respondent had provided tangible evidence relating to its business plans and associated activities undertaken to date in association with the Domain Name, including certain developmental steps such as the acquisition of the Domain Name, the operation of a short-form website from 2018 to mid-2019, the incorporation of two businesses in New Jersey, United States (including Lotto.com Inc.), and the filing of a lottery license application with the state regulator. It appeared that these activities started in October 2017 and continued into mid-2019. These findings were corroborated by the Panel’s independent research conducted in accordance with section 4.8 of the WIPO Overview 3.0, providing the Panel with the ability to carry out research should it consider that such information would be useful to assess the merits of the case and issue a decision. Indeed, by reference to the Wayback Machine found at “https://web.archive.org/”, it was clear to the Panel that the Respondent had actually been using the Domain Name in association with an active website as recently as mid-2019.
In light of this supporting evidence, the Panel concluded that the Respondent had engaged in the preparation of a bona fide offering of services in association with the Domain Name. The Complainant had therefore failed to prove that the Respondent had no rights or legitimate interests in respect of the Domain Name and the complaint failed.
As the three requirements of the UDRP are cumulative, the Panel did not need to go on to continue the third issue relating to bad faith registration and use, but did so anyway. Relying on the Telstra Corporation Ltd v Nuclear Marshmallows decision, WIPO Case No. D2000-0003, the Complainant alleged that the Domain Name was not being used and that this amounted to bad faith under the UDRP. In this regard the Complainant also argued that the Respondent intended to use the Domain Name for online gambling activities that would be unlawful in Germany.
In the Panel's view, the above-mentioned Telstra case did not apply to the case at hand as the Domain Name had been put to active use. The Panel also pointed out that the Complainant could not rely on the unlawfulness of the Respondent’s activities in Germany as such activities were not directed to Germany and were not unlawful in the Isle of Man where the Respondent was based, nor in the United States of America where it intended to do business. In light of this, the Panel considered that the Complainant had failed to establish bad faith in the Respondent’s registration and use of the Domain Name and the Complaint was denied.
This decision highlights the fact that simply holding a matching trademark is not sufficient for a complainant to succeed under the UDRP. A respondent may well have a legitimate interest in the disputed domain name, particularly where a trademark is also descriptive and there is publicly available evidence that the respondent has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of services.
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