WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Soci�t� des Bains de Mer et du Cercle des Etrangers � Monaco v. Britannia Finance et al.
Case No. D2000-1315
1. The Parties
The Complainant is Soci�t� des Bains de Mer et du Cercle des Etrangers � Monaco (Soci�t� des Bains de Mer), Place du Casino, Monte Carlo, MC 98000 Monaco, Principaut� de Monaco.
The Respondent is Britannia Finance, also named as monacocasinos, montecarlocasinos, thecasinomontecarlo, themontecarlocasino, domiciled at 2 old Brompton Road, London, SW7 3DQ, Great Britain.
2. The Domain Names and Registrar
The domain names in issue are , , ,
The registrar is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the complaint on October 4, 2000. The Center�s request for Registrar verification was sent on October 10, 2000. The answer was received on October 29, 2000. The Center issued the notification of complaint on October 30, 2000. The Center received a request for extension of deadline on November 2, 2000 and the response was received on November 19, 2000.
4. Factual Background
A. The Trademark
The complaint is based on the trademark Casino de Monte-Carlo. The complainant is the owner of the following registered trademark:
Monaco trademark N� 96.17407: Casino de Monte-Carlo, registered in 1996 covering goods and services in classes 3, 9, 12, 14, 16, 18, 28, 34, 35, 38, 39, 41 and 42.
B. The Complaint
The grounds for the complaint are:
- That the Casino de Monte-Carlo is a renowned trademark as the Principaut� de Monaco is inter-alia known worldwide for its casino.
- That the domain names are identical to the complainant�s trademark, as the first word of the trademark is identically used in all four domain names and as the terms Monte-Carlo are identically used in 3 of the domain names. In one domain name the term Monaco does not suppress this strong similarity, as it is very common to use one or the other term indifferently to designate the Principaut� and they are perfect synonyms.
- That the respondent has no rights or legitimate interests in respect of the
domain names.
- That the domain names should be considered as having been registered and used in bad faith by the respondent. This should be so as, given the strong reputation of the complainant�s mark and the ease for any Internet user to assess whether or not a registration or use of a domain name is likely to on third parties� rights, the respondent could not ignore that such a registration was made in fraud of the complainant�s rights.
- Further that by using the domain names for a site directly related to the gaming industry, the respondent is attempting to attract Internet users to his website for commercial gain, through the creation of a likelihood of confusion as to the source or affiliation of the site to the complainant.
- That, although the respondent did not directly contact the complainant in order to sell him those domain names, those domain names are for sale in a website specialized in the selling of domain names related to the gambling industry.
- Finally that the domain name is so obviously connected to the complainant and its products that the use by someone with no connection with the complainant suggests opportunistic bad faith.
C. The Respondent
In its response the respondent states:
- That the protection granted to marks by the ICANN Policy is to be broadly construed so as to include registered and common law trademarks and service marks and trade/business names, but does not extend to a complainant�s country of origin.
- That the complainant has no world mark and no trademark outside Monaco, which is a very small country.
- That the complainant has not been policing his mark and that therefore it is to be considered that the complainant has abandoned his mark or that the strength of said trademark is diminished, as if there are numerous products in the market place bearing the alleged mark, purchasers may learn to ignore the "mark" as a source of identification.
- That the term Monte-Carlo is used as a generic connotation of luxury and high living and has been diluted by continual use in commerce by third parties.
- That the respondent operates online gaming websites, which is a business in which the complainant is not engaged. The complainant operates a hotel and casino business, which is to be considered as a business altogether distinct from respondent�s.
- That there cannot be a risk of consumer confusion as complainant already has an online presence: and that therefore consumers are able to distinguish between complainant�s and respondent�s respective online presence.
- That respondent has acquired legitimate rights and interests in the domain names through a longstanding, bona fide, offering of services.
- That the domain names were not registered primarily for selling, renting or otherwise transferring the registration to the owner of the trademark or a competitor.
5. Discussion and Findings
A. Identical or Confusingly Similar Domain Names
The domain names , and are almost exact translations of the complainant�s trademark and as such, they are to be considered as confusingly similar. The domain name cannot be considered an exact translation of the complainant�s trademark. It should however be considered as being confusingly similar, as the use of the term Monaco does not weaken this strong similarity. Indeed it is very common to use one or the other term indifferently to refer to the Principaut� and thus, they are perfect synonyms. For example, see Paul Theroux, The Pillars of Hercules, page 110: "When Prince Charles III built a casino, he did it in much the same spirit that the Pequot Mashantucket Indians introduced gambling to Connecticut, because it was forbidden everywhere else (France and Italy had banned it). So Monaco got rich as the Pequots got rich".
B. Rights or Legitimate Interests of Respondent
The panel must make here a general statement. Any rights or legitimate interests in the terms Monte-Carlo, Monaco and Casino are to be examined in respect of those terms used together and not independently. The panel will not examine the protection to be granted to the terms Monte-Carlo alone. Furthermore, the complainant�s trademark protects the combination of Casino and Monte-Carlo together, and not these terms isolated.
The respondent claims that the complainant has no world mark and no trademark outside Monaco, which is a very small country. Article 16.2 of the TRIPS agreement states: "Article 6 bis of the Paris Convention (1967) shall apply mutatis mutandis to services. In determining whether a trademark is well known, members shall take into account the knowledge of the trademark in the relevant sector of the public, including knowledge in the member concerned which has been obtained as a result of the promotion of the trademark." In the light of this provision it can only be considered that the Casino de Monte-Carlo trademark is well known over the world and is protected as such. It is also important to note that the size of a country of origin is not to be considered as relevant, and particularly so in matters regarding Internet and domain names.
The respondent claims that the complainant has not been policing his mark and that therefore it is to be considered that the complainant has abandoned his mark. The respondent points out that there exist an important number of marks using the terms Monte-Carlo; for example, General Motors and Lancia both sold a Monte Carlo model amongst numerous other ones. The panel deems this to be irrelevant as it refers to Monte-Carlo and not to Casino de Monte-Carlo.
The respondent stresses in particular that the complainant permitted the Las Vegas-based Monte Carlo Resort and Casino to operate under this name with impunity. The panel deems that it cannot rely on this isolated fact as having estopped the complainant from proceeding against respondent in the present case, for the abandonment of mark is the result of a willing and constant behavior during some years.
The respondent claims that the term Monte-Carlo is used as a generic connotation of luxury and high living and has been diluted by continual use in commerce by third parties. The panel deems this to be also irrelevant as the respondent�s claim refers to Monte-Carlo generally and not to Casino de Monte-Carlo.
The respondent claims that it has acquired rights or legitimate interests to the domain name through commercial use of the domains. Yet when registering the domain name, the respondent must have been aware of the possibility that the claimant would file administrative or judiciary proceedings for cyber squatting. This is so amongst other things, as given the strong reputation of the complainant�s mark, the respondent could not ignore that such a registration was made in fraud of the complainant�s rights. Furthermore, the claims that respondent derives from the very recent incorporation of its Panama and Dutch-Antilles corporations cannot be recognized, for it is well known that many such corporations are often devoid of any important assets and are used as tax vehicles and/or offshore activities not covered by legal protection in the jurisdictions they precisely intend to avoid, even when they are lawfully organized under the corresponding offshore laws. Therefore the panel cannot find any legitimate right or interest in favor of the respondent.
C. Domain Name Registered and Used In Bad Faith
The respondent claims that the domain names are used in connection with an online gaming business rather than an actual casino and that the complainant does not provide online gaming/casino services. The respondent fails to see that a website is in itself an actual undertaking. The distribution of goods or services through the Internet is similar to the distribution of the same goods or services through other means. In particular it cannot be considered so different that it should be deemed a different branch of the industry or a different market in terms of unfair competition law.
The respondent claims that there is no risk of consumers� confusion as complainant already has an online presence: and that therefore the consumers are able to distinguish between the complainant and the respondent online presence. Nonetheless, it is highly unlikely that the average Internet user would be able to distinguish two similar lower domain names by their generic/country code top level domain.
The complainant claims that the domain names should be considered as having been registered and used in bad faith by the respondent. This should be so as, given the strong reputation of the complainant�s mark and the ease for any Internet user to assess whether or not a registration or use of a domain name is likely to encroach on another�s rights, the respondent could not ignore that such a registration was made in fraud of the complainant�s rights. Further that by using the domain name for a site directly related to the gaming industry the respondent is attempting to attract Internet users to his website for commercial gain, through the creation of a likelihood of confusion as to the source or affiliation of the site to the complainant. Finally, that the domain name is so obviously connected to the complainant and its products that its very use by someone with no connection with the complainant suggests opportunistic bad faith. These claims are correct, as the respondent has not been able to establish a legitimate right or interest in the domain names and is therefore effectively encroaching on the complainant�s rights, as the likelihood of confusion between the domain names and the complainant�s trademark is established and as the complainant�s and respondent�s business are not to be deemed different.
Finally the panel notes that to the extent that Claude Levy�s (an officer of respondent) deposition is to be taken into account when saying that the sole purpose of putting the domain names for sale was to get an evaluation of one of the respondent�s assets, this purpose was not apparent to third parties who could actually bid for those domain names. It is therefore not excluded that the respondent could derive a benefit from the misappropriation of the claimant�s trademark. It is also important to note that the respondents in this case and in other cases appear to actually belong to the same entity. In fact the address is the same, they are affiliated with the same companies and their Director, Treasurer and Secretary is the same person, namely Claude Levy. This entity is respondent in other ICANN proceedings (notably in case D-2000-1323 ; D-2000-1327; [ also cases D-2000-1328 and D-2000-1326, although here respondent appears at different addresses] ) in respect of domain names referring to the Casino de Monte-Carlo. The litigious domain names in that proceedings were also for sale at . Thus, there appears to be a pattern of behavior of respondent in registering sites referring to complainant�s trademark and selling them. Further respondent claims that the selling of sites is part of its business operations, which consist of acquiring domain names, launching sites and then selling them; yet only few of the litigious domain names in those cases were actually used to launch an active website.
6. Decision
The panel decides that the domain names are confusingly similar to the complainant�s trademark, that the respondent has no rights or legitimate interests in respect of the domain names and that the domain names were registered and are being used in bad faith.
Accordingly, the panel requires that the registration of the domain names , , and be transferred to the complainant.
François Dessemontet
Sole Panelist
January 8, 2001
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