WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Internet Billions Domains Inc.
Case No. D2003-0985
1. The Parties
The Complainant is Société des Bains de Mer et du Cercle des Etrangers à Monaco, Monte Carlo, of Monaco, represented by De Gaulle Fleurance & Associés, France.
The Respondent is Internet Billions Domains Inc., Pavas, of Costa Rica.
2. The Domain Names and Registrars
The disputed domain names , , , , , , , , , are registered with Domain Bank, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 11, 2003. On December 12, 2003, the Center transmitted by email to Domain Bank, Inc. a request for registrar verification in connection with the domain names at issue. On December 30, 2003, Domain Bank, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 7, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2004. The Response was filed with the Center on January 27, 2004.
The Center appointed Luca Barbero as the sole panelist in this matter on February 4, 2004. The Panel finds that it was properly constituted. 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.
On February 16, 2004, the Panel decided to consider the Supplemental filing put forward by the Complainant on February 4, 2004, and indicated that the Respondent was permitted to file a further Response to the Supplemental filing, confined to the issues and facts raised in the Complainant�s supplemental filing by February 21, 2004.
On February 24, 2004, a second Panel Order was issued acknowledging that the Supplemental Response filed by Respondent pursuant to the procedural order issued on February 16, 2004, was received by the Centre at 6.52 a.m., Geneva time on February 22, 2004. The Panel, pursuant to paragraph 10(b) of the Rules for Uniform Domain Name Dispute Resolution Policy decides to consider anyway such supplemental Response.
In light of paragraph 10 (a) and (c) and the significant amount of statements, prior decisions and documents already submitted by both Parties, the Panel further decided not to admit any further supplemental filing and proceed to issue the decision.
4. Factual Background
The Complainant is the owner of the trademark CASINO DE MONTE-CARLO filed on August 13, 1996, and registered on October 30, 1996, with the number 96. 17407 in classes 3, 9, 12, 14, 16, 18 , 28, 34, 35, 38, 39, 41, 42 in the Principauté de Monaco.
The Respondent registered the contested domain names on August 18, 2003, (, , , , , , ), August 24, 2003, (, ), September 3, 2003, () with Domain Bank Inc.
5. Parties� Contentions
A. Complainant
The Complainant is Société des Bains de Mer founder and manager of the Casino of Monte-Carlo. Since April 2, 1863, Complainant was granted by the authorities of the Principauté de Monaco a monopoly for casino and gambling industries for the territory of the Principauté de Monaco, and is therefore the sole company that can organize games and gambling in Monaco.
The Complainant highlights that has been operating a casino under the name "Casino de Monte-Carlo" for more than 140 years. The Casino de Monte-Carlo has become famous worldwide as one of the most significant symbols of the Principauté de Monaco. It attracts a clientele that comes from numerous European and non-European countries.
The Complainant states that the Domain Names are identical and confusingly similar to wordmark "CASINO DE MONTE-CARLO", filed in August 13, 1996, with the Monaco Trademark Office as well as to two US trademark applications for "CASINO DE MONTE-CARLO". The first one was filed on May 2, 2002. The second one was filed December 3, 2002. The panel is also informed that the rights of the Complainant in and to the domain names at stake have already been recognized by several decisions of the WIPO Arbitration and Mediation Center, quoting a number of decisions.
The Complainant quotes that the United States Court of Appeals for the Fourth Circuit affirmed, on May 19, 2003, the United States District Court for the Eastern District of Virginia�s judgment. This judgment rendered on March 25, 2002, had ruled in favor of the Complainant on its infringement and cybersquatting claims against the then registrants of the disputed domain names, awarding the Complainant statutory damages and ordering the transfer of 43 domain names including the domain names which are the subject matters of this complaint, providing to the Panel copies of both decisions.
The Complainant explains that, although transferred to the Complainant pursuant to the above mentioned WIPO and US Courts decisions, the domain names at stake have inadvertently been made available to registration because they have not been renewed in due time, indicating that the Complainant�s omission to renew the registration for these domain names is purely accidental and results from an internal misunderstanding between Complainant�s internal services.
According to the Complainant the domain names are, beyond any doubt, identical to the Complainant's prior trademark "CASINO DE MONTE-CARLO" since in all of them the trademark is completely reproduced and the adjunction of the term "sexy" to four of the ten domain names does not erase the strong similarity that exists with the Complainant's trademark and it is only a "catch term".
With reference to the rights or legitimate interest the Complainant underlines that the Respondent did not file or register any trademark concerning these signs, that the Respondent�s registered name itself, Internet Billions Domains Inc., suggests that it conducts an activity in relation with massive domain names reservation, more than a casino and gambling activity.
Furthermore, to the best of Complainant�s knowledge, Respondent is not using the disputed domain names in connection with the bona fide offering of any product or service both in the gambling business (as suggested by the word "casino" which is present in all the disputed domain names) and in any other business. In this respect, it should be noted that, although the registrations of the ten domain names were made in August 2003 and September 2003, Respondent has not used any of them yet, as these domain names do not lead to any active website.
The Complainant underlines that he has never authorized the Respondent to use its 140-year old famous mark "CASINO DE MONTE-CARLO", nor to register and use the disputed domain names, and does not have any business relationship with Respondent. Furthermore, the Respondent is a company formed in Costa Rica, that is to say it has no link with the Principauté de Monaco and has not received any license or authorization from the authorities of the Principauté de Monaco to operate a casino in Monaco.
With reference to the registration and use in bad faith, the Complainant asserts that the registration and use of the terms "Casino" and "Monte-Carlo" in the disputed domain names by Respondent is likely to confuse the public as to whether the websites that might be made available under these domain names are operated by the sole and true owner of the Casino de Monte-Carlo, the Complainant, or as to whether the Respondent has been authorized by the authorities of the Principauté de Monaco or the Respondent to operate websites under these domain names. The registration and use of these domain names by Respondent is therefore likely to deceive the general public as to the origin of these domain names and of the websites that might be made available to the public under these domain names.
According to the Complainant, the disputed domain names are so obviously connected with the famous casino that their very use by someone with no connection with the Complainant suggests opportunistic bad faith.
Furthermore the Complainant states that given the strong notoriety of the Complainant's mark the Respondent could not ignore that such registrations were made in violation of the Complainant�s rights.
The Complainant informs the Panel that the Respondent has already been involved as a respondent in several other similar WIPO proceedings, in particular in WIPO Case Nos. D2001-0678 Venetian Casino Resort LLC v. International Services Incorporated and Internet Billions Domains Inc (September 14, 2001) (where the Respondent was found to have registered and used in bad faith the and domain names), D2003-0270 Rolls-Royce plc v. Internet Billions Domains Inc. (June 25, 2003) (where the Respondent was found to have registered and used in bad faith the and domain names), and NAF-114663 Gruner + Jahr & Publishing Co. v. Internet Billions Domains Inc (September 3, 2002) another factor pointing Respondent�s bad faith.
The Complainant indicates that has reasons to believe that Respondent has closed links with the Respondents who were involved in the WIPO Case No. D2000-1315, Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Britannia Finance et al. (January 8, 2001), WIPO No. D2000-1327, Société des Bains de Mer et du Cercle des Etrangers à Monaco v. International Lotteries et al. (January 8, 2001), and WIPO Case No. D2000-1328, Société des Bains de Mer et du Cercle des Etrangers à Monaco v. International Services Inc. et al. (January 8, 2001). The Complainant highlights that Britannia Finance, International Lotteries and International Services Inc. have already been ordered to transfer the disputed domain names to SBM by the WIPO panel and by two US federal courts and all of them are companies owned, operated and/or directed by a French individual residing in Belgium, Mr. Claude Levy.
According to the Complainant, it is therefore clear that Mr. Claude Levy has knowingly caused to register, through his company Internet Billions Domains Inc., the very same domain names that several other companies he owns, operates and/or directs had been ordered to transfer to SBM. This clearly establishes that the registration of the disputed domain names by Respondent was made in the most utmost bad faith.
In the supplemental filing, the Complainant provides the Panel with some explanations as to the email addresses adopted for the notification of the Complaint, denies the allegations of the Respondent about the "abandonment" of the domain names and expresses its views about the relationship between the Respondent in the instant procedure as opposed to the parties in the procedures in the United States.
The Complainant also explains in some details its rationale for not concurring with the argument of the Respondent about a good faith registration to preserve rights before the final decision of the Supreme Court. With reference to the domain name the Complaint asserts that the fact that another third party has registered a domain name in violation of Complainant�s rights does not entitle the Respondent to register other domain names to infringe the Complainant�s rights.
B. Respondent
With reference to the issue of whether the domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights, the Respondent indicates that in light of the space available within a response "there is no need to enter into a long discussion, because all these issues have already been discussed in the litigation in front of the American courts". But in its Response to the supplemental filing by the Complainants, the Respondent provides the Panel with over twenty five pages outcome of precedents in US courts referring to geographical words, descriptive and generic words concluding that the Complainant trademark registration is not valid.
The Respondent also asserts that "the panel should not allow Monaco, which is one of the smallest countries in the entire world, to use its abusive �Mickey Mouse� alleged trademark registration that is totally descriptive, generic and geographical, to control domain names using these words in the entire world, when their casino activities are strictly restricted to Monte Carlo".
With reference to rights and legitimate interest the Respondent points out that at the time of registration there was still a pending litigation about these domain names in front of the American courts, and no final decision was taken. Therefore, according to the Respondent the registration were done in good faith.
The Respondent indicates that the Complainant have "abandoned the domain names in question, before the case is over, and 5 long months before the final court decision was taken � by refusing to pay for them", commenting that it was difficult to believe that the Complainant forgot the pay the renewal fees since "the complainant hired the best team of lawyers money could buy in the United States, and they also had their French and Monaco lawyers following closely this case".
In the supplemental filing the Respondent reiterates the assertion that at the time of registration the parties still had pending litigation about these domain names in front of the American courts and no final decision was taken. The Respondent indicates that the domain names were re-registered in August 2003, and the final decision from the Supreme Court of the United States was only announced on January 12, 2004, which is 5 months later.
The Respondent also confirms that the parties to the American proceeding were affiliated companies or companies controlled by the same interests and therefore the Respondent in the current procedure had legitimate rights in protecting the interest of all the related companies.
The same rationale of being a related company and of the pending litigation in front of the Supreme Court of the United States, is also adopted by the Respondent to indicate that the domain names were registered in good faith, for the simple reason that at the time of registration in August 2003, we still had pending litigation in front of the Supreme Court of the United States, and no decision was taken until much later, 5 months later, on the January 12, 2004.
The Respondent makes reference in details to a dissenting opinion of a judge in the Appeals court in Virginia which was in favor of the Respondent speculating that therefore the Respondent would have had a major chance to win this case in the Supreme Court of the United States. The Respondent informs the Panel that its petition was denied but "only because the Supreme Court was flooded with cases that particular week".
The Respondent informs the Panel that have attempted to contact the Complainant indicating the intention to transfer the present domain names back to the complainant after the final decision from the Supreme Court would be decided but the Complainant refused the offer to transfer the domain names back in exchange of the case being dropped at WIPO and according to the Respondent it is an indication of the bad faith of the Complainant.
The Respondent points out that the domain names have not been used to date and therefore, according to the Respondent it�s impossible to say that there is bad faith on its part and they were registered only to preserve the Respondent�s rights and interests in the domain names before the final decision of the Supreme Court.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: "A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and,
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and,
(iii) that the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of trademark registration for CASINO DE MONTE-CARLO filed on August 13, 1996, and registered on October 30, 1996, with the number 96. 17407 in classes 3, 9, 12, 14, 16, 18 , 28, 34, 35, 38, 39, 41, 42 in the Principauté de Monaco.
The Panel has duly examined the over 25 pages of US jurisprudence about the alleged generic and geographic nature provided by the Respondent but notes that it is not within the scope of an UDRP procedure to elaborate on the characteristic or validity of any registered trademark in any country of whatever size of the world.
Article 16.2 of the TRIPs agreement states that "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". The Panel finds that in light of this provision, the trademark CASINO DE MONTE-CARLO is to be considered well known and should therefore receive the consequent protection; the Panel furthermore notes that the instant trademark consists in the combination of the two words and as such will be considered for the purpose of the present decision.
The Panel notes that also all the domain names herein consist in or include the combination of the terms "Casino" and "Monte Carlo" that were duly registered by the Complainant. The addition of articles like "le" and "the" or prefix like word "e - " is not sufficient to exclude the confusing similarity with the registered trademark.
Furthermore, the Panel concurs with the view espressed in WIPO Case No. D2000-1328, Société des Bains de Mer et du Cercle des Etrangers à Monaco v. International Services Inc. et al. stating "the addition of the term �sexy� at the beginning of the domain name does not suppress a strong similarity with the complainant�s trademark".
In view of the above, the Panel finds that the Complainant has proved that the Domain Names are identical and confusingly similar to the trademarks of the Complainant, according to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy that:
(a) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Respondent was never authorized to use the famous mark "CASINO DE MONTE-CARLO", nor to register and use the disputed domain names and does not have any business relationship with the Complainant. Furthermore, the Respondent is apparently a company formed and based in Costa Rica and therefore does not have any prima facie link with the Principauté de Monaco and has not received any license or authorization from the authorities of the Principauté de Monaco to operate a casino in Monaco or indeed any other country.
The Panel finds that the Complainant�s accidental failure to renew its registrations of domain name which are identical to or confusingly similar to its trademark registration does not create any legitimate rights on these domain names for any third party, including the Respondent.
Along the same lines, the mere fact that the Respondent filed an action on October 21, 2003, against the final US Court decision decided on May 19, 2003, to transfer the same domain names, does not confer in view of the Panel a legitimate interest, especially if the domain names were already registered in August and September even in the name of a different, albeit related, company.
The Respondent did not provide the Panel with any other convincing evidence as to any rights or legitimate interests.
The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the domain names, according to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder�s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder�s website or other online location, by creating a likelihood of confusion with the Complainant�s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holder�s website or location.
With reference to the bad faith at the time of registration, it is certain that the Respondent was well aware of the ownership of such domain as another WIPO decision on the very same domain names was issued on January 8, 2001. Furthermore, the Respondent had already to transfer the very same domain names pursuant to the decision by United States Court of Appeals for the Fourth Circuit which confirmed, on May 19, 2003, the United States District Court for the Eastern District of Virginia�s judgment rendered on March 25, 2002; in the latter procedure, the Judge has held in favor of the Complainant on its infringement and cybersquatting claims against the then registrants of the disputed domain names, awarding the Complainant also statutory damages.
The Panel finds the paragraph 4(a)(ii) applicable in the present case since the Respondent is preventing the rightful owner of a trademark from reflecting the mark in a corresponding domain. Respondent is to be considered clearly as engaged in a pattern of such a conduct as it has registered a considerable number of other infringing domain names including i.a. , , , , , , .
The Respondent�s actions of registering � even twice - a number of domain names all of which containing the Complainant�s trademark, is another significant circumstance evidencing bad faith. See Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; see also The Price Company v. Price Club, also known as Tsung-Pei Chang, WIPO Case No. D2000-0664 ("The selection of three domain names that are virtually identical to complainant�s famous mark demonstrates that these were abusive registrations contrary to the policy").
Furthermore, the Panel finds that the disputed domain names are so obviously connected with the Complainant and its famous casino that their very actual use by someone with no connection with the Complainant suggests opportunistic bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and C, WIPO Case No. D2000-0226; Veuve Cliquot Ponsardin, Maison Fondé en 1772 v. The Polygenic Group Co., WIPO Case No. D2000-0163; Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403 ; and Rémy Martin & Cie, Cointreau SA et la Compagnie Rémy Cointreau v. Stéphane Obadia, WIPO Case No. D2001-1263).
An additional circumstance evidencing bad faith of the Respondent is the fact that the domain names were registered on August and September 2003 - even in the name of a different company - while the writ of certiorari related to the alleged pending action was filed on October 21, 2003, against the final US Court decision of May 19, 2003, transferring the instant same domain names, and others, to the Complainant.
Moreover, in light of the fact that trademark CASINO DE MONTE-CARLO is well-known in many countries, it is not possible for the Panel to conceive any legitimate, actual or contemplated, active use by Respondent of the domain names that would not constitute an infringement of Complainant�s rights in Complainant�s Marks. See along the lines Veuve Clicquot Ponsardin v. The Polygenix Group Co., WIPO Case No. D2000-0163.
In view of the above, the Panel finds that the Respondent registered and used the domain name in bad faith, according to paragraph 4(a)(iii) of the Policy.
7. Decision
In light of the foregoing, the Panel decides that the domain names registered by the Respondent are confusingly similar to the Complainant�s trademark, the Respondent has no rights or legitimate interests in respect of the domain names and the Complainant has established that the domain names have been registered and are being used in bad faith. In light of the foregoing findings, the Panel directs that the disputed Domain Names be transferred to the Complainant.
Luca Barbero
Sole Panelist
Dated: March 20, 2004
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