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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
La Société des Loteries du Québec v. RSA Software Inc.
Case No. D2002-0051
1. The Parties
The Complainant is La Société des Loteries du Québec, a Québec corporation with its principal place of business at Montreal, Québec, Canada. The Complainant is represented by Heenan Blaikie, Attorneys of Montreal, Québec, Canada.
The Respondent is RSA Software Inc., a United States corporation of Highgate Springs, VT, USA. The Respondent is represented by Randy Soule. In its Complaint, the Complainant cited as Respondent, ‘174386 Canada Inc, doing business as RSA Software Inc’. However, Registrar information confirms that the Registrant of the disputed domain name is RSA Software Inc. Accordingly, the Panel regards this entity as the proper Respondent.
2. The Domain Name and Registrar
The domain names at issue is <lotoquebec.com>. The domain name is registered with Tucows Inc. ("the Registrar").
3. Procedural History
The Complaint submitted by the Complainant was received on January 18, 2002 (electronic version) and January 21, 2002, (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").
On January 29, 2002, a request for Registrar verification was transmitted by the WIPO Center to the Registrar, requesting it to:
- Confirm that a copy of the Complaint had been sent to it by the Complainant as required by the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).
- Confirm that the domain name at issue is registered with the Registrar.
- Confirm that the person identified as the Respondent is the current registrant of the domain name.
- Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrar’s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact for the domain name.
- Confirm that the Uniform Domain Name Dispute Resolution Policy ("Policy") is in effect.
- Indicate the current status of the domain name.
- Indicate the specific language of the registration agreement.
- Indicate whether the registrant has submitted in its registration agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the domain name.
By email dated January 30, 2002, the Registrar advised WIPO Center as follows:
- It had received a copy of the Complaint from the Complainant.
- It is the Registrar of the domain name registration <lotoquebec.com>.
- RSA Software Inc. is shown as the "current registrant" of the domain name. Randy Soule is shown as the administrative, technical and billing contact.
- The Policy applies to the domain name.
- The domain name registration is currently on "hold"
- The language of the registration agreement is English.
- The agreement provided for appropriate court adjudication.
The Registrar has currently incorporated in its agreements the Policy adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").
The Registrar advised that the domain name in question is on "hold". The Respondent has not sought to terminate the agreement with the Registrar. Accordingly, the Respondent is bound by the provisions of the Policy. The Respondent has not challenged the jurisdiction of the Panel.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), the WIPO Center on February 6, 2002, transmitted by post-courier and by email a notification of the Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to the Registrar and ICANN.
The Complainant elected to have its Complaint resolved by a three-person panel. It has duly paid the amount required of it to the WIPO Center.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days of the commencement of the proceedings. The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. The Respondent filed a Response by email on February 26, 2002 and by hard copy on March 4, 2002.
The WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as Presiding Panelist in the case. It also invited Mr. J. G. Fogo of Ottawa, Canada and Mr. G. Gervaise Davis III of Monterey, CA, USA to be panelists. It transmitted to all Panelists a Statement of Acceptance and requested a Declaration of Impartiality and Independence.
All Panelists duly advised acceptance and forwarded to the WIPO Center an executed declaration of impartiality and independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
On April 9, 2002, WIPO Center forwarded to the Panel by courier the relevant submissions and the record. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel was required to forward its decision by April 23, 2002.
The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules. The Complainant on March 8, 2002, sought to file a supplemental submission. The Panel in the exercise of its discretion did not agree to consider this filing.
4. Factual Background
The Complainant is a statutory corporation owned by the Government of the Province of Québec, Canada. It was set up by enactments of the Québec National Assembly, first in 1969 and then in 1978. Under the 1978 Act its functions were stated as "… to conduct and administer lottery schemes and to operate businesses which are incidental to the operation of a state casino." The Act also gives statutory protection to the name "Loto-Québec" and declares the Complainant the only entity entitled to run lotteries under that name.
Since its inception, the Complainant has created a huge business in selling lottery tickets and conducting lotteries in the province of Québec. Its total annual sales have risen from $C51million in 1970 to $C1.7 billion in 1999/2000. Since 1993, it has also operated several casinos. Its annual ticket sales are in the many millions.
Complainant owns a Canadian design trademark for LOTO-QUÉBEC, with a distinctive circular logo registered on August 20, 1971, and renewed. The word "LOTO- QUÉBEC" was granted status as an official mark under Canadian law on June 30, 1993. The word mark is prominently displayed on lottery tickets. There are some 11,500 retail outlets and some 8,200 computerized terminals all for the sale of loto tickets. The logo and mark are clearly visible at all such outlets. The Complainant spends some $C20 million annually in advertising by way of signage, the media and its website (<loto-quebec.com>). It is heavily involved with sponsorship of sporting events, cultural activities and programmes to alleviate problem gambling.
The Complainant registered the name <loto-quebec.com> on July 28, 1995, and on November 30, 1998, and June 12, 2000, <loto-quebec.org> and <loto-quebec.net> respectively. On October 16, 2000, it registered <lotoquebec.ca> and <loto-quebec.qc.ca>.
The Respondent operates a website under <lotoquebec.com> which provides lottery results in English and French of the Complainant’s lotteries. It also provides results from lotteries conducted in other Canadian provinces, states in the United States and other countries including the United Kingdom, Germany and other European countries, Hong Kong and New Zealand. The website contains a disclaimer that <lotoquebec.com> is not Loto-Québec the Québec Lottery Agency which operates from <www.loto-quebec.qc.ca>. "This site is NOT associated, affiliated with or sponsored by ‘Loto-Québec.’" The disclaimer advises that the results it displays are unofficial and that the official list prevails.
‘Cease and desist’ letters were sent to Mr. Randy Soule of RSA Software Inc. on July 23, 1998, March 22, 2000 and July 17, 2001 on behalf of the Complainant. A reply of August, 1998, to the first of these letters referred to the disclaimer and stated that the Complainant’s logos had been removed from the website. A letter of April 12, 2000 expressed surprise at the delay in bringing further action and declined the Complainant’s request to ‘cease and desist’.
The Respondent operates from Highgate Springs, Vermont, which is close to the USA/Québec border.
5. Parties’ Contentions
The Complainant annexed to its Complaint not just relevant documents such as a copy of the registered mark, relevant correspondence and relevant decisions, but a plethora of material which was sent to each Panelist in a large carton. Included in the carton were such things as videos of Complainant’s television programmes, dozens of newspaper articles and sample advertisements in which the mark was featured.
In the Panel’s view, such an ‘overkill’ was unnecessary for an understanding of the Complainant’s case. The overwhelming evidence of the fame of the mark can be summarized as the Panel has endeavored to do succinctly above. It is quite oppressive to expect the Panel members to watch videos of promotions or to read through piles of newspaper articles – especially when one considers the time constraints imposed on Panelists by the Policy – not to mention their fairly modest emoluments. The Panel does not wish to dissuade parties from preparing their cases fully, but parties should attempt a little more discernment than was demonstrated here by the Complainant.
Essentially, the Complainant alleges the following.
The disputed domain name is identical to its registered mark – apart from the hyphen which is irrelevant. Alternatively, it is confusingly similar. The Respondent has no rights or legitimate interests in the disputed domain names. Complainant gave it none.
The Respondent is using the disputed domain name and associated website for providing lottery results. Visitors to the site are invited to become ‘members’ and lottery results can then be sent to them. On ‘surfing’ the site, various advertisements are available.
The site is aimed at Francophone visitors – such as Québecois because the English word ‘lottery’ is ‘loterie’ in French. Complainant operates solely in Québec which is the largest francophone jurisdiction in North America. If a user wishes to see results from the Complainant’s lotteries by using the Respondent’s website, he/she is hyper-linked to the Complainant’s website <loto-quebec.com>.
A visitor to the Respondent’s site could easily be misled into thinking that that site is the Complainant’s official site. Had Respondent wanted to provide a service for lottery results from all over, it should not have appropriated Complainant’s trademark and name.
Respondent registered and used the name in bad faith. It refused to transfer the name. It must have known of the fame of the mark at the time of registration, given that it operates from just outside the Québec border. Complainant is not interested in providing lotto results from other jurisdictions and has no wish to be involved in ‘peripheral advertising’. For the one million persons in the Ottawa/Gatineau area (which straddles the Ontario/Québec border), Respondent’s activities promote the activities of a competitor – the Ontario Lottery Corporation – the corresponding provincial lottery.
The disclaimer on Respondent’s website is insufficient to dispel the likelihood of confusion.
The Respondent alleges the following.
The sole purpose of the website is to disseminate free to the internet public a wide variety of lottery results. Respondent has spent time and money in developing the website as a public service without recompense. Although the disputed domain name is similar to the Complainant’s registered mark, that fact is insufficient to meet the criteria under the Policy.
Respondent comes within paragraph 4(c)(iii) of the Policy because it "is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark".
Respondent has never intended to confuse visitors as to the identity of the operator of the site and does not use Complainant’s marks or symbols. As to hyper-linking, Respondent merely includes a list of official lottery corporations in each country for which Respondent provides informational coverage.
At the date of registration, Respondent was unaware of the Complainant’s registered trademark.
As to bad faith use, there is the express disclaimer and Respondent’s website has not caused a decrease in visitors to Complainant’s site.
Complainant, being a statutory monopoly which can sell only in Québec, has no competitors. Complainant has tolerated Respondent for years – as is shown by the delays attending the ‘cease and desist’ letters.
All the advertisements on Respondent’s website are part of a ‘Link Exchange Program’ and Respondent derives no monetary benefit. The link exchange merely promotes traffic to the website.
The Complainant’s delays make it unconscionable for the Complaint to be granted.
The Respondent asks the Panel to make a finding of reverse domain name hijacking against the Complainant, but provided no submissions in direct support of that claim.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to:
"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
- That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
- That the Respondent has no rights or legitimate interests in respect of the domain name; and
- The domain name has been registered and used in bad faith.
The Panel considers that the disputed domain name is identical to the Complainant’s registered marks and to the Complainant’s common law mark cultivated by its years of successful operations. The hyphen is of no legal significance and cannot be invoked as a distinguishing feature. Even if it could be, then the domain name would be confusingly similar to the Complainant’s mark. The first criterion is established.
With regard to the second criterion, Complainant gave Respondent no rights. As a means of rebutting the inference of illegality thus created, Respondent relies upon paragraph 4(c)(iii) of the Policy quoted above. In the absence of evidence of some probative weight and not just the bald assertion of the Respondent, the Panel finds it hard to credit that anyone would go to the trouble of assembling lotto results from a broad range of jurisdictions and maintain a website for them for purely altruistic reasons. Such a proposition makes no commercial sense at all. Without some fairly compelling evidence, the Panel cannot find non-commercial use.
Nor can it find a fair use of the name. If the Respondent’s aim is to provide Lotto results from a multitude of states and nations, then why should it be necessary for it to use the francophone name of only one of the many lotteries on which Respondent provides information? Respondent’s use of a French domain name identical with the Complainant’s, except for the hyphen, inclines the Panel to the view that Respondent is targeting residents of Québec. Moreover, there should be better evidence than the Respondent’s bald assertion that there is no commercial gain (even indirect) from the advertising linkage on its website. Accordingly, the second criterion is established.
With regard to the third criterion, the Panel can quite readily infer that the Respondent must have known of the Complainant’s mark at the date of registration. Respondent may not have known of the registered marks but there is overwhelming evidence of a common law mark generated by the Complainant’s all pervasive operations throughout Québec for many years.
As to bad faith use, there is no escape from the inference that internet users seeking knowledge of Complainant’s activities – not just of lottery results would be drawn to the Respondent’s website. The disclaimer is not sufficient to dispel a finding of bad faith. It may be ignored or misunderstood by internet users and it does not dispel initial internet confusion inevitable from the Respondent’s actions. See Madonna Ciccone v Parisi and Madonna.com, WIPO Case No. D2000-0847.
Respondent’s replies to ‘cease and desist’ letters do nothing to suggest that it has any legitimate reason for using a virtually-identical domain name to Complainants. Despite the disclaimer, the link to the Complainant’s site for results cannot but give many users the impression that Respondent has some affiliation with the Complainant.
The Panel accordingly finds the third criterion proved.
It rejects the rather frivolous claim by the Respondent of reverse domain-name hijacking. No submissions were made in support of this claim.
For the foregoing reasons, the Panel decides that:
(a) The domain name registered by the Respondent is identical or confusingly similar to the trademark to which the Complainant has rights;
(b) The Respondent has no rights or legitimate interests in respect of the domain name; and
(c) The Respondent’s domain name has been registered and is being used in bad faith.
(d) No declaration of reverse domain name hijacking should be made.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <lotoquebec.com> be transferred to the Complainant.
Hon. Sir Ian Barker QC
Mr. G Gervaise Davis III
Mr. J G Fogo
Dated: April 22, 2002