Owner of LOTO marks wins in web trademark spat
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In La Française des Jeux v Darmon (Case DFR2008-0015, August 4 2008), a World Intellectual Property Organization (WIPO) panel has ordered the transfer of no less than 27 '.fr' domain names to French company La Française des Jeux.
La Française des Jeux has a 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, including LOTO, LOTOPHONE and SUPERLOTO.
The 27 domain names were registered between October and November 2007 by André Darmon, a French citizen, under France's '.fr' country-code top-level domain. They 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. 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 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).
In its complaint, La Française des Jeux argued that Darmon’s registration of the domain names infringed its registered trademarks. La Française des Jeux also pointed out that Darmon did not own rights in the term 'loto' and had not been using this term as his corporate name or sign. La Française des Jeux also alleged that LOTO was a well-known trademark which Darmon knew, especially since he had concluded transactions with La Française des Jeux in the past. Finally, La Française des Jeux contended that Darmon had no legitimate interest in the domain names since he was not using them.
In response, Darmon argued that the word 'loto' was highly descriptive and that there was no risk of confusion between the disputed domain names and the LOTO marks. He also alleged that he had not registered the disputed domain names in bad faith. Finally, he indicated that he might have used the disputed domain names to advertise sweepstakes offered by him, without encroaching on the territory of La Française des Jeux.
The panel first held that La Française des Jeux had rights in the trademark LOTO and a number of variations thereof. The panel also found that there was an actual risk of confusion between the 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 the mark was well known and was placed at the beginning of each of the disputed domain names. Moreover, La Française des Jeux often combined its LOTO mark with another term, just as Darmon had done in the disputed domain names.
Finally, the panel found that Darmon had tried to free-ride on the fame of the LOTO marks 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.
David Taylor, Lovells LLP, Paris
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