DRS Reference: 1220
New Zealand Lotteries Commission v Zhang San
Domain Name: nz-lotto.nz Similar Trade Mark - Rights - Unfair Registration - likely to confuse mislead or deceive.
New Zealand Lotteries Commission
PO Box 8929
2. Domain Name/s
3. Procedural history
3.1 The Complaint was lodged on 6 April 2017 and Domain Name Commission (DNC), notified the Respondent of the validated Complaint on 10 April 2017. The domain/s were locked on 7 April 2017, preventing any changes to the record until the conclusion of these proceedings.
3.2 No response was received.
3.3 Andrew Brown QC, the undersigned (the Expert) confirmed to the DNC on 9 June 2017 that he knew of no reason why he could not properly accept the invitation to act as expert in this case and 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/her independence and/or impartiality.
4. Factual background
4.1 The Complainant is the New Zealand Lotteries Commission (the Complainant). The Complainant operates as Lotto New Zealand. The Complainant operates a website at mylotto.co.nz which records that the organisation "exists to provide safe gaming that allows New Zealanders to play and win while contributing money back to New Zealand communities". Users of that website can purchase and use the Complainant's lottery products. The website promotes the Complainants products Lotto Powerball Strike, Keno, Bullseye, Play 3 and Instant Kiwi.
4.2 The Complainant is the owner of trade mark registration 979403 "LOTTO NZ; LOTTO NEW ZEALAND" in classes 9, 16, 28, 36 and 41 (the Mark). The Mark has been registered since 24 December 2013. The specification for the Mark in class 41 includes "operating and conducting games of chance, lotteries, raffles, sweepstakes, instant games and prize competitions; interactive real time online games, gaming and gambling via the internet and other forms of telecommunication services".
4.3 The Respondent is Zhang San (the Respondent). He is the registrant of the domain name nz-lotto.nz (the Disputed Domain Name). That domain was registered on 4 November 2016 (the Relevant Date).
4.4 The Complainant has provided evidence of the appearance of the website displayed at the Disputed Domain Name as at 29 March 2017, as well as of the appearance of its own website mylotto.co.nz as at 27 March 2017. The website displayed at the Disputed Domain Name is virtually identical to that found on the Complainant's website. The website at the Disputed Domain Name uses the same headings, graphical background and visual imagery as that found at the Complainant's website. In particular it was the identical lottery products (and logos) as found on the Complainants website ie Lotto Powerball, Keno, Bullseye, Play 3 and Instant Kiwi.
4.5 The only distinguishing feature between the two sites appears to be that the website at the Disputed Domain Name describes itself as "NZ Lotto" in the top right hand corner, whereas the Complainant's website describes itself as "My Lotto". The identical font and closely similar placement of graphics and logos is used for both sites.
5. Parties' contentions
5.1 The Complainant has submitted in its Complaint that "nz-lotto.nz passes itself off as our MyLotto website (mylotto.co.nz) by replicating the content from MyLotto. It appears to be a phishing site that attempts to maliciously capture our users' login details". No other submissions were made.
5.2 No response was received.
6. Discussion and findings
6.1 The Complainant is required to satisfy the Expert on the balance of probabilities that it has met the requirements of paragraph 4 of the Policy, namely that:
"4.1.1 The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
4.1.2 The Domain Name, in the hands of the Respondent, is an Unfair Registration."
6.2 The term "Rights" is defined in paragraph 3 of the Policy as follows:
"Rights includes, but is not limited to, rights enforceable under New Zealand law. However a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business."
6.4 In the present case, the Expert is satisfied that the Complainant has Rights enforceable under New Zealand law, being the Mark registered in classes 9, 16, 28, 36 and 41 described above. The Mark was registered with effect from 21 December 2013 almost three years before the Disputed Domain Name was registered. Part of the Mark, "LOTTO NZ" is encompassed within the Disputed Domain Name. Although not identical, the Disputed Domain Name "nz-lotto" is clearly very similar to "LOTTO NZ". Accordingly, the Expert finds that paragraph 4.1.1 of the Policy is satisfied in favour of the Complainant.
b. Unfair Registration
6.5 Unfair Registration is defined in paragraph 3 of the Policy as follows:
- "Unfair Registration means a Domain Name which either:
(i) was registered or otherwise acquired in a 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
(ii) has been, or is likely to be, used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights."
6.6 Paragraph 5.1 of the Policy provides a non-exhaustive list of factors which may be evidence that the Domain Name is an Unfair Registration. Relevantly, paragraphs 5.1.1 and 5.1.2 provide as circumstances indicating Unfair Registration as follows:
- "5.1.1. 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; or
5.1.2. Circumstances demonstrating that the Respondent is using the Domain Name in a way which is likely to confuse, mislead or deceive people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant …"
6.7 The first question is whether under para 3(i) of the Policy the Complainant can show Unfair Registration at the time registration took place.
6.8 Plainly the specific choice of "nz" in the Disputed Domain Name as well as the use of the .nz suffix indicates that the Respondent intended the website to denote a connection with New Zealand and to be directed to a New Zealand audience.
6.9 The Complainant is well known in New Zealand as the provider and regulator of the lottery and gaming products listed on its website and in particular LOTTO. The Expert finds that the Disputed Domain Name was an Unfair Registration at the time of registration because it took advantage of and was unfairly detrimental to the Complainant's Rights in its LOTTO NZ trade mark. Even the most cursory internet and trade mark search by the Respondent before registration would have revealed the Complainant's LOTTO NZ trade mark.
6.10 The fact that the Respondent has provided at the Disputed Domain Name a replica of the Complainant's website and lottery products complete with all the Complainant's trade marks and logos including LOTTO, is clear evidence of an intent to create a phishing site which would lead unsuspecting internet users to consider that they had arrived at the Complainant's website or a site operated by the Complainant (when it is not). This further demonstrates that the decision to use the NZ LOTTO trade mark in the Disputed Domain Name was a deliberate attempt to adopt the Complainant's Mark.
6.11 Accordingly, the Expert finds that paragraph 4.1.2 is satisfied in favour of the Complainant on the ground of both unfair advantage and unfair detriment to the Complainant's Rights (namely its LOTTO NZ Mark) at the time of registration.
6.12 The second question is whether the Complainant can show Unfair Registration through use in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's rights.
6.13 As already described the screenshot of the website being operated as the Disputed Domain Name shows a website bearing a close resemblance to that found on the mylotto.co.nz website, as shown in the screenshot of that site dated 27 March 2017. It would appear that the nz-lotto-nz site featured design elements found on the Complainant's website.
6.14 The screenshot (already described) of the website operating at the Disputed Domain Name also demonstrates (in terms of paragraph 5.1.2 of the Policy) that the Respondent has been using the Disputed Domain Name in a way which is 'likely to confuse, mislead or deceive people or businesses into believe in that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant". The average internet user would not be able to tell the difference between the sites. The Expert accepts the Complainant's submission that the site is a phishing site that attempts to maliciously capture the Complainant's users login details.
6.15 Accordingly the Expert is satisfied that paragraph 4.1.2 of the Policy is satisfied in favour of the Complainant in that the Disputed Domain Name is an Unfair Registration under both limbs in the definition of Unfair Registration.
6.16 Accordingly, the Expert is satisfied that paragraph 4.1.2 is satisfied in favour of the Complainant on the ground of both unfair advantage and unfair detriment to the Complainant's rights through use.
7.1 For the foregoing reasons, the Expert orders the transfer of the domain name nz-lotto.nz to the Complainant.
Place of decision Auckland
Date 30 June 2017
Expert Name Andrew Brown QC