Facts
Arguments
Decision


Facts

A World Intellectual Property Organization (WIPO) panel recently ordered the transfer of no less than 27 '.fr' domain names to French company La Française des Jeux. This company has the state monopoly on the organization of sweepstakes in France, the most famous of which is the French Loto. La Française des Jeux owns a number of trademarks in connection with its business, such as LOTO, LOTOPHONE and SUPERLOTO.

The 27 domain names were registered by André Darmon, a French citizen of Aix-en-Provence, between October and November 2007 under France's '.fr' country-code top-level domain, and included domain names such as 'lotomobile.fr', 'lotobut.fr', 'lotolove.fr', 'lotosport.fr' and 'lototal.fr'.  La Française des Jeux subsequently contacted Darmon to request the transfer of these domain names but Darmon refused, believing that he was the rightful owner. He also indicated that he was not planning to develop an activity competing with that of La Française des Jeux. Seeing that the matter could not be resolved amicably, La Française des Jeux decided to file a complaint with WIPO in an attempt to recover the domain names.

The complaint was filed with WIPO under the alternative dispute resolution procedure for '.fr' domain names - the Procédure Alternative de Résolution des Litiges (PARL). Whereas complaints under the Uniform Domain Name Dispute Resolution Procedure must be based on a trademark or service mark, complaints under the .FR procedure may be based on a much wider array of rights. A '.fr' complaint must set out the reasons why the registration or the use of a domain name causes the infringement of third-party rights protected in France, particularly IP rights, competition law rights and rights in names (whether first names, surnames or pseudonyms).

Arguments

In its complaint La Française des Jeux referred to its registered trademarks and argued that the respondent's registration of the domain names infringed these rights. The complainant also pointed out that the respondent did not own a trademark in the term 'loto' and had not been using this term as his corporate name or sign. The complainant also alleged that LOTO was a very well-known trademark which the respondent knew, especially since he had concluded transactions with the complainant in the past. Finally, the complainant contended that the respondent had no legitimate interest in the domain names since he was not using them. 

The respondent argued that the word 'loto' was highly descriptive and that there was no risk of confusion between the disputed domain names and the complainant's trademarks. He also alleged that he did not register the disputed domain names in bad faith. Without encroaching on the territory of the complainant, he indicated that he might have used the disputed domain names to advertise sweepstakes offered by him. 

Decision

The panel first considered that the complainant had trademark rights in LOTO and a number of variations thereof. The panel also found that there was an actual risk of confusion between the complainant's trademarks and the disputed domain names. According to the panel, the risk of confusion between the LOTO trademark and the disputed domain names was very real because this trademark was well known and was placed at the beginning of each of the disputed domain names. Moreover, the complainant also often combined its LOTO trademark with another term, just as the respondent had done in the disputed domain names. 

The panel also found that the respondent tried to 'free ride' on the fame of the complainant's trademarks and had registered the disputed domain names regardless of competition rules and proper business conduct. As a result, the panel ordered the transfer of the 27 domain names at issue.

For further information on this topic please contact David Taylor at Lovells by telephone (+33 1 53 67 47 47) or by fax (+33 1 53 67 47 48) or by email ([email protected]).