German Company Bremer Toto und Lotto GmbH has official website at lotto-bremen.de – Complainant held Trademark jointly with 16 other Companies – Respondent purchased Domain for millions of dollar – Respondent operating a website since mid-2019 – Respondent provided evidence as to future plans of the Domain Name – Respondent has pending application as to Lottery Business – Complainant proved Trademark reight but failed to prove lack of legitimate interests on the part of Respondent – Three-member panel denied the Complainant
Bremer Toto und Lotto GmbH v. Birrell Nigel, Cavour Ltd. [Case No. D2019-2391]
1. The Parties
The Complainant is Bremer Toto und Lotto GmbH, Germany, represented by CBH Rechtsanwälte, Germany.
The Respondent is Birrell Nigel, Cavour Ltd., Isle of Man, represented by Dentons UKMEA LLP, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <lotto.com> is registered with EuroDNS S.A. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2019. On October 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 4, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 the Respondent of the Complaint, and the proceedings commenced on October 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 28, 2019. On October 28, 2019, the Respondent sent an email communication to the Center requesting an extension of the Response due date. An automatic extension of the Response due date was granted until November 1, 2019, under paragraph 5(b) of the Rules. The Response was filed with the Center on November 1, 2019.
The Center appointed Christopher J. Pibus, Thomas Hoeren, and Jane Lambert as panelists in this matter on December 10, 2019. The Panel finds that it was properly constituted. Each member of 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
There appears to be no dispute that the Complainant is one of 16 lottery companies that jointly own the trademarks listed at paragraph  A I of the Complaint, i.e. German trademark registration number 39638296 for LOTTO, registered on August 27, 1997, (“the Trademarks”) though the nature of their shared ownership and the right of the Complainant to bring proceedings on the basis of those marks are not admitted. It also appears to be common ground that the word “lotto” is synonymous with “lottery” in English and several other languages, including German, and that many lottery schemes around the world are simply called “lotto”.
Although the Complainant denies flatly that the Respondent has any rights or legitimate interests in the disputed domain name it acknowledges that he is an important figure in the gambling industry. Indeed, part of the Complainant’s case is that the Respondent, Nigel Birrell, is the Chief Executive Officer of Lottoland Limited which offers online gambling services from Gibraltar, that are unlawful in Germany.
5. Parties’ Contentions
The Complainant requests the transfer of the disputed domain name on the following grounds:
– The disputed domain name is identical or confusingly similar to the Trademarks of which the Complainant is a joint proprietor.
– The Respondent has no rights or legitimate interests in the disputed domain name.
– The Respondent registered and has used the disputed domain name in bad faith as it is being held in bad faith, see, Telstra Corporation Ltd v Nuclear Marshmallows , WIPO Case No. D2000-0003. Alternatively, it contends that the Respondent intends to use the disputed domain name for online gambling activities that would be unlawful in Germany.
In respect of the first ground, the Complainant says that the trademarks that it shares with the other lottery operators are strong and that they are used not just for gambling but also for payments, authentication and other financial services. As for the third ground, the Complainant points to the activities of Lottoland Limited.
The Respondent contends that the Complaint fails on all three grounds and should be dismissed. It disputes the Complainant’s title to the Trademarks and its entitlement to bring proceedings under any of them. It adds that the word “lotto” is entirely descriptive. It has already used the disputed domain name for well over a year as the URL for a website directed to consumers in the United States of America (“United States”). It purchased the disputed domain name for USD 2.68 million and has invested heavily in developing a website that will trade lawfully in the United States.
6. Discussion and Findings
The agreement to register the disputed domain name incorporates paragraph 4(a) of the Policy:
“You are required to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant’) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:-
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
In the administrative proceeding, the complainant must prove that each of these three elements are present.
A. Identical or Confusingly Similar
The Panel is satisfied that the first element is present.
The Complainant has evidenced that it holds rights in the Trademarks. Each of the Trademarks incorporates the word “lotto” either simpliciter or in combination with a stylized shamrock. Nothing could be closer to the disputed domain name than that.
Each of those Trademarks is registered with the German Patent and Trade Mark Office and translations of the entries on the register are annexed to the Complaint. In the case of each registration, the Complainant is listed as a proprietor. That is a “right” within the meaning of paragraph 4(a)(i) of the Policy.
Such right may or may not include the right to bring proceedings without the consent of the other proprietors, but that is beside the point. Paragraph 4(a)(i) of the Policy requires only that the disputed domain name should be identical or confusingly similar to a trade mark in which the Complainant has rights and that is undeniably the case.
B. Rights or Legitimate Interests
The second element is not present.
Section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) acknowledges that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. Consequently, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
The problem in this instance is that the Complainant has not made a prima facie case that the Respondent lacks rights or legitimate interests. It has flatly denied that the Respondent has any rights or legitimate interests in the disputed domain name but it has not explained why. Had it consulted the Wayback machine at “https://web.archive.org/” it would have found (as this Panel has just done) clear evidence that the Respondent was actually using the disputed domain name in association with an active website as recently as mid-2019.
The Panel also notes that the Respondent has provided tangible evidence relating to its business plans and associated activities undertaken to-date in association with the disputed domain name. The domain name in question has existed for many years, but was only recently acquired by the Respondent for a significant sum (USD 2.68 million) in furtherance of its plan to launch a new online lottery-related business in the United States. The Respondent has provided details of its plans, including certain developmental steps such as the initial investment in the disputed domain name itself, 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. These activities took place beginning in October 2017 and continuing into mid-2019. All of these points of evidence support the conclusion that the Respondent has engaged in the preparation of a bona fide offering of services in association with the disputed domain name.
These factors lead the Panel to find that the Complainant has failed to prove the absence of rights and legitimate interests on the part of the Respondent. Accordingly, the Panel finds that the Complainant has not satisfied the requirements under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The third element is not present.
Paragraph 4(b) of the Policy lists a number of circumstances which if found to be present shall be evidence of the registration and use of a domain name in bad faith: no evidence has been produced that any of those circumstances applies, nor has any evidence of circumstances that are ejusdem generis the circumstances in paragraph 4(b) of the Policy. The Complainant cannot rely on evidence of passive holding as in the above-referenced Telstra case because the disputed domain name has been put to use. Nor can the Complainant complain that the Respondent’s activities would be unlawful in Germany because they are not directed to Germany. Those activities are not unlawful in the Isle of Man where the Respondent is domiciled or in the United States where it intends to do business. Accordingly, the Complainant has not satisfied the requirements under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Date: December 24, 2019