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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> SLE (Service aux Loteries en Europe) v 4Names Ltd [2008] DRS 5568 (2 June 2008) URL: http://www.bailii.org/uk/cases/DRS/2008/5568.html Cite as: [2008] DRS 5568

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SLE (Service aux Loteries en Europe) -v- 4Names Limited Nominet UK Dispute Resolution Service DRS 05568 (1) SLE (Service aux Loteries en Europe) (2) 4Names Limited Complaint Reference Number 6081 Decision of Independent Expert
1. PARTIES:

Complainants: SLE (Service aux Loteries en Europe)

Belgium

Respondent: 4Names Limited

Great Britain

2. DOMAIN NAMES:

euromillion.co.uk and euro-million.co.uk ("the Domain Names").

3. PROCEDURAL BACKGROUND:

3.1. A hard copy of the Complaint was received in full by Nominet on 27 March 2008. Nominet validated the Complaint and notified the Respondent of the Complaint.

3.2. No Response has been received and therefore informal mediation was not possible.

3.3. On 19 May 2008, Nick Phillips, the undersigned ("the Expert"), confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as the Expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.

4. OUTSTANDING PROCEDURAL ISSUES

4.1 The Respondent has not submitted a response to Nominet in time (or at all) in compliance with paragraph 5(a) of the Procedure.

4.2 Paragraph 15(b) of the Procedure provides, inter alia, that "if, in the absence of exceptional circumstances, a party does not comply with any time periods laid down in the policy of this procedure, the Expert will proceed to a decision on the Complaint".

4.3 Nominet appears to have used all of the available contact details to try to bring the Complaint to the Respondent's attention and indeed for the reasons I explain below it is clear that the Respondent was aware of the Complaint but failed to file a Response. Consequently, there do not appear to me to be any exceptional circumstances involved and I will therefore proceed to a decision on the Complaint notwithstanding the absence of a Response.

5. THE FACTS

5.1 The Complainant is the registered proprietor of a number of registered trade marks which include the mark EUROMILLIONS. These include Community Trade Mark No. 002871283 filed on 30 September, 2002 in classes 9, 16, 18, 25, 28, 38, 41 for the mark EURO MILLIONS (stylised with device); Community Trade Mark No. 002987568 filed on 23 December, 2002 in classes 9, 16, 18, 25, 28, 38, 41 for the word mark EUROMILLIONS, and Community Trademark No. 003644564 filed on 27 January, 2004 in classes 9,16, 28, 35, 38, 41 for the mark EURO MILLIONS (stylised with device).

5.2 The Complainant is also the owner of a number of other trade marks across Europe for EUROMILLONES and EUROMILLIONS.

5.3 The Complainant owns the following domain name registrations:

euromillions.eu

euromillionen.eu

euro-millions.eu

euro-million.eu

euro-millones.eu

euromillones.eu

euro-milhao.eu

euromillions.mobi

euro-million.com

euromillion.com

1euromillion.com

euromillionen.com

euro-milhao.com

euromillion-gratuit.com

euromillions.ie

euro-millions.ie

euromillion.ie

euro-million.ie

euro-millions.es

euro-million.be

euro-million.lu

euro-millions.lu

euro-millions.pt

euromillions.pt

5.4 The Complainant launched a lottery game called EUROMILLIONS in or around February 2004 which gave people in the UK, Spain and France a chance to win very large sums of money.

5.5 The Domain Names were registered by Big Advertising Limited on 6 February 2004 and later transferred to the Respondent on 12 June 2007.

5.6 The Complainant's French trade mark agent, Inlex Conseil, informed Big Advertising Limited via a letter dated 6 March 2007 about the property rights held by the Complainant in the mark EUROMILLIONS and requested the immediate transfer of the Domain Names.

5.7 The Complainant sent several reminders to Big Advertising Limited but has never received a reply. The Complainant also tried contacting Big Advertising Limited via telephone and eventually learnt that the latter had transferred the Domain Names to the Respondent.

5.8 The Complainant then sent a cease and desist letter dated 25 April 2007 to the Respondent, but did not receive a response.

5.9 The Domain Names currently resolve to 'parking' webpages which advertise a range of gaming and gambling services.

6. THE PARTIES' CONTENTIONS

The parties' contentions can be summarised as follows:

Complainant

6.1 In its Complaint, the Complainant makes the following submissions:

6.1.1 The Complainant has Rights in a name or mark which is identical or similar to the Domain Names because:

(a) The Complainant is the registered proprietor of a number of registered trade marks, details of which are set out above, and which include a registration for the word mark EUROMILLIONS;

(b) The Complainant has run a successful and very well known weekly lottery game in the United Kingdom, Spain and France since February 2004 under the mark 'EUROMILLIONS' and has made significant promotional and commercial investments in the lottery games launched under that mark.

(c) As a result of all this the Complainant has Rights in the word or mark EUROMILLIONS which is similar to the Domain Names.

6.1.2 The Registration is an Abusive Registration for a number of reasons including the following;

The Complainant contends that circumstances indicate that use of the Domain Names was also designed to confuse people into believing that the Domain Names were registered to, or otherwise associated with, the Complainants and their own services.

The Domain Names are quasi identical to the Complainant's trade marks visually, phonetically and conceptually. The Complainant contends that this is a case of typo squatting, where the Respondent by a slight typographical variation in the Domain Names attempts to attract internet users to i's website. The Complainant contends that the omission of the letter 's' is not sufficient to sufficiently differentiate between the two. The Complainant also contends that the adjunction of the hyphen in does not prevent confusion with the Complainant's trademarks, nor does the addition of '.co.uk'.

The Domain Names direct to websites which provide similar lottery services to those commercialized under the Complainant's trademarks. Therefore users may wrongly believe that the services provided on the Domain Names are associated with the Complainant.

This means that the Respondent has been and is using the Domain Names to benefit, or attempt to benefit, from the Domain Names' close association with the Complainant and its EUROMILLIONS trade mark.

There is no legitimate reason for the Respondent to possess the domain names and and then to direct them to competing websites is clearly done so in an attempt to profit from the Domain Names' clear association with the business and Rights of the Complainant. The Complainant contends that such use amounts to an Abusive Registration.

The Complainant believes that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names which correspond to well known names or trade marks in which the Respondent has no apparent rights, and that the Domain Names are part of that pattern.

The Respondent has previously been party to a domain name dispute under the Nominet UK Dispute Resolution Service (DRS No. 04513 Zehnder Verkaufs-Und Verwaultungs AG v 4Names Limited) resulting in the transfer of the domain name in question to the complainant.

THE RESPONSE

Respondent

The Respondent has not provided a Response so there are no submissions to consider.

7. DISCUSSIONS AND FINDINGS

General

7.1 Under paragraph 2 of the Dispute Resolution Service Policy ("the Policy") the Complainant is required to show, on the balance of probabilities, that;

(1) it has rights in respect of a name or mark which is identical or similar to the Domain Names; and

(2) the Domain Names in the hands of the Respondent are an Abusive Registration.

Complainant's Rights

7.2 The first question I must answer is therefore whether the Complainant has proved on the balance of probabilities that it owns Rights in a name or mark that is identical or similar to the Domain Names.

7.3 The Policy defines rights as including but not limited to "…rights enforceable under English laws." This has always been treated in decisions under Nominet DRS as a test with a low threshold to overcome and I think that that must be the correct approach.

7.4 The Complainant has a number of trade mark registrations for the mark EUROMILLIONS. It has also provided some evidence of its use of the mark EUROMILLIONS and it has registered and made use of a number of domain names including the domain names euro-million.com, euromillion.com euromillions.eu, euro-millions.eu and euro-million.eu.

7.5 In the circumstances I have no difficulty in finding that the Complainant has Rights in the name or mark EUROMILLIONS.

7.6 I must now decide whether the name in which the Complainant has Rights is identical or similar to the Domain Names. On this issue, ignoring as I must do the first and second level suffixes, the Domain Names differ only by the omission of the "s" in EUROMILLIONS and by the addition of a hyphen between EURO and MILLION. Neither of these changes do anything to change the distinctive character of the name or mark in which the Complainant has Rights and the similarities are obvious. I therefore find that, on the balance of probabilities, the Domain Names are identical or similar to a name or mark in which the Complainant has Rights.

Abusive Registration

7.7 Having concluded that the Complainant has Rights in a name which is identical or similar to the Domain Name, I must consider whether the Domain Name constitutes an Abusive Registration. Abusive Registration is defined in the Policy as

"… a domain name which either

(a) was registered or otherwise acquired in the manner which, at the time when the registration or acquisition took place took unfair advantage of or was unfairly detrimental to the Complainant's Rights; OR

(b) has been used in a manner which took unfair advantage of, was unfairly detrimental to the Complainant's Rights."

This definition allows me to consider whether the Domain Names constitute Abusive Registrations at any time and not, for example, just the time of registration/acquisition.

7.8 Paragraph 3 of the Policy provides a non-exhaustive list of the factors which may evidence that a domain name is an Abusive Registration. It is worthwhile setting out paragraph 3 of the Policy in full:

"3. Evidence of Abusive Registration

a. A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is as follows:

i. Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

A for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;

B as a blocking registration against a name or mark in which the Complainant has Rights; or

C for the purpose of unfairly disrupting the business of the Complainant;

ii. Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant;

iii. The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern;

iv. It is independently verified that the Respondent has given false contact details to us; or

v. The domain name was registered as a result of a relationship between the Complainant and the Respondent, and the Complainant:

A has been using the domain name registration exclusively; and

B paid for the registration and / or renewal of the domain name registration.

b. Failure on the Respondent's part to use the Domain Name for the purposes of e-mail or a website is not in itself evidence that the Domain Name is an Abusive Registration.

c. There shall be a presumption of Abusive Registration if the complainant proves that Respondent has been found to have made an Abusive Registration in three (3) or more Dispute Resolution Service cases in the two (2) years before the complaint was filed. This presumption can be rebutted."

7.9 Paragraph 3a of the Policy is a list of non-exhaustive factors which may be evidence that the Domain Names are an Abusive Registration. It is however also relevant to consider in broader terms whether the Domain Names constitute Abusive Registrations within the definition set out in the Policy.

7.10 In doing this, I have adopted the reasoning of the Appeal Panel in the case of Thomas Cook UK Limited v. WhitleyBayUncovered (DRS00583). The relevant part of that decision is produced below.

"It seems to the Panel that, given the extent and renown of the Complainant's trade mark, it is stretching credulity beyond breaking point to suggest that the Respondent did not know of the trade mark in question when it sought registration of the Domain Names. Indeed, it is perhaps instructive that there is no suggestion in the communications from the Respondent that it was in fact, unaware of the reputation of the Complainant's trade mark CLUB18-30. Although the Respondent is careful to suggest that the Complainant's proposed use of the Domain Names is open to question (referring to "our concept of the uncovered names") there is no suggestion that the club18-30 part of the Domain Names was chosen by it for any other reason than it was the Complainant's trade mark.

The Panel, therefore, finds that upon the balance of probabilities the Respondent was aware of the Complainant's trade mark at the time of registration of the Domain Names, and consciously chose to use that trade mark."

7.11 As in the Whitley Bay case, it seems to me that the mark, "EUROMILLIONS" is so well known that it is almost inconceivable that the Respondent did not know of the Complainant's Rights generally when it acquired the Domain Names from Big Advertising Limited in June 2007.

7.12 Further, it seems clear that and in the absence of any explanation to the contrary from the Respondent, that the only possible reason for the Respondent acquiring the Domain Names could be to take advantage of the substantial goodwill and reputation in the mark, "EUROMILLIONS".

7.13 This finding is supported by the Respondent's use of the Domain Names to link to a parking page which advertises a range of gambling and gaming services many of which are nothing at all to do with the Respondent and which therefore appear calculated to take unfair advantage of the Complainant's Rights by using the reputation and goodwill which the Complainant has accrued in its lottery games under the name EUROMILLIONS to attract users to the Domain Names.

7.14 It follows from this, that I find that, on the balance of probabilities, the Respondent must have intended to gain an advantage of some kind by using the Domain Names in such a way and it must follow that this advantage was, "unfair".

7.15 The Complainant has therefore established a prima facie case of Abusive Registration and on that basis I will not, at this stage, go on to consider further points which the Complainant makes.

7.16 This is not of course the end of the story. Having found that the Complainant has, on the balance of probabilities, established a prima facie case of Abusive Registration it is now open to the Respondent to rebut this finding by, for example, establishing any of the non-exhaustive factors found under paragraph 4 of the Policy. However, as no Response has been made by the Respondent, such consideration is not possible.

7.17 I therefore find that the Complainant has proved on the balance of probabilities that the Domain Name is an Abusive Registration.

8. DECISION

For the reasons set out above, I find, on the balance of probabilities, that the Complainant has Rights in a name or mark which is identical or similar to the Domain Names, and that the Domain Names in the hands of the Respondent are Abusive Registrations. I therefore direct that the Domain Names be transferred to the Complainant.

……………………………..

NICK PHILLIPS

2^nd June 2008