WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Soci�t� des Bains de Mer et du Cercle des Etrangers � Monaco v. Lucan Toh and Max Wright
Case No.�D2007-0249
1. The Parties
The Complainant is Soci�t� des Bains de Mer et du Cercle des �trangers � Monaco of Monte Carlo, Monaco, represented by De Gaulle Fleurance & Associ�s, France.
The Respondents are Lucan Toh and Max Wright of London, United�Kingdom of Great�Britain and Northern�Ireland, represented by Hamilton Downing Quinn Solicitors, United�Kingdom of Great�Britain and Northern�Ireland.
2. The Domain Names and Registrar
The disputed domain names
are registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on February�20,�2007. On February�23,�2007, the Center first transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On March�15,�2007, Go Daddy Software transmitted by fax to the Center its verification response confirming that the Respondent Lucan Toh is listed for eleven of the domain names as the registrant and providing the contact details for the administrative and technical contact, while stating that the balance of the domain names is registered to the Respondent Max Wright, also providing the contact details for the administrative and technical contact. Go�Daddy Software further stated that the domain name registrants have submitted in their Registration Agreements 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 names.
In response to a notification by the Center dated March�19,�2007 that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March�21,�2007. The Center verified that the Complaint together with the amendment to 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 paragraphs�2(a) and 4(a) of the Rules, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on March�26,�2007. In accordance with paragraph�5(a) of the Rules, the original due date for Response was April�15,�2007. The due date was later on extended to May�1,�2007, with the consent of the Complainant. The Response as well as a statement by the Respondent Max Wright were filed with the Center on April�27,�2007.
The Center appointed Brigitte Joppich as the sole panelist in this matter on May�11,�2007. 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 paragraph�7 of the Rules.
On May�11,�2007, the Complainant filed a supplemental communication with the Center (the�“Reply”). On May�14,�2007, the Respondents objected to the submission of the Reply and supporting documents. The Complainant replied by arguing why its supplemental submission should be accepted on May�15,�2007, and the Respondents replied by sending two e-mails on May�16,�2007.
4. Factual Background
The Complainant has been operating a casino under the name “Casino de Monte-Carlo” in Monaco for more than 140 years. It is the founder and manager of the Casino of Monte-Carlo. Since April�2,�1863, it has been granted a monopoly for casino and gambling industries for the territory of the Principaut� de Monaco by the authorities of the Principaut� de Monaco.
The Complainant is the owner amongst others of the international mark CASINO DE MONACO registered on December�19,�2002, filed originally with the Monaco Trademark Office and enjoying a priority of July�1,�2002. The Complainant also owns the mark CASINO DE MONTE-CARLO which is well- known and enjoys a substantial reputation.
The Respondents and their businesses offer online gambling services. The disputed domain names were registered by the Respondents’ predecessor in interest between October�23,�2004 and August�23,�2006. The Respondents’ company, PlayS PLC, acquired these domain names as part of an established business with effect from November�1,�2006. The disputed domain name had been adopted and used for online gambling purposes by a third party as early as 2000.
5. Parties’ Contentions
A. Complainant
The Complainant contends that each of the three elements specified in paragraph�4(a) of the Policy are given in the present case:
(i) The domain names are confusingly similar to the Complainant’s mark CASINO DE MONACO as they all contain the terms “Grand” and “Monaco” and many of them include an additional term. The Complainant groups the disputed domain names according to their composition as follows, leaving aside the top level domain name in each case:
- The confusing similarity of the domain names composed of the terms “Grand”, “Monaco” and “Casino” results from the fact that they incorporate both nouns “Monaco” and “Casino” of the Complainant’s trademarks, while the addition of the generic term “grand”, frequently associated with the casino business, does not detract from such similarity.
- The confusing similarity of the domain names composed of the terms “Grand”, “Monaco”, “Casino” and the generic terms “club” or “online” is based on the same line of arguments, strengthened by such additional generic terms that can easily be associated with the Complainant’s activities.
- The domain names composed of the terms “Grand” and “Monaco” also point to the Casino in Monte-Carlo and, as a result, to the Complainant. They are therefore confusingly similar to the Complainant’s mark CASINO DE MONACO.
- The domain names composed of the terms “Grand” and “Monaco” and a generic term related to the casino business as “bingo”, “poker”, “craps”, “games”, “lottery”, “rewards”, “slots”, “millions” or other, which strengthens the association with the Complainant’s famous casino, are to be considered confusingly similar as well. This also applies to the domain names in this category containing the generic terms “sports” or “sportsbook”.
- The domain names composed of the terms “Grand”, “Monaco” and a generic term unrelated to the casino business as “host”, “club”, “promotions”, “store” or other are to be judged like the domain names composed only of the terms “Grand” and “Monaco” as such additional generic terms have no distinctive value. They are confusingly similar to the Complainant’s marks as well.
- This also accounts for the domain name , pointing to a German-language casino website, as “deutsches” simply means “German” in German language.
(ii) The Complainant further contends that the Respondents have no rights or legitimate interests in respect of the domain names as they do not enjoy rights in trademarks including the words “Grand” and “Monaco”, have no geographical link with the Principaut� de Monaco, have not been licensed or authorized by the Complainant and are not allowed to operate a casino in Monaco.
(iii) The Complainant finally contends that the domain names were registered and are being used in bad faith as the Respondents are professionals in the gambling business as managers of gaming companies within the PlayShare Group, which is seeking to become one of the top five gaming companies worldwide in the near future. The strong notoriety and world renown of the Complainant’s marks can therefore not have gone unknown by the Respondents. This impression is supported by the disclaimer inserted at the bottom of each page under the disputed domain names, pointing out that such site is not related to the Principality of Monaco or any of the land-based casino operations located there. Furthermore, the Respondents are supposed to pass off on the Complainant’s trademarks and renown in order to attract Internet users for commercial gain, thus creating a risk of confusion, which is evidence of bad faith registration and use. Most of the disputed domain names point to the same casino website. To the extent that they are inactive, the Respondents must have acquired them to prevent the Complainant from using them – such passive use is also supposed to demonstrate bad faith use and registration under the Policy as use in a legitimate manner cannot be imagined.
The Complainant designates the courts of the United States of America where the Registrar is located as courts of Mutual Jurisdiction under paragraph�3(b)(xiii) of the Rules. The location of the Registrar is Scottsdale, Arizona, United Sates of America.
B. Respondent
As the Statement by the Respondent Maxwell G. Wright was filed with the Center together with the Response and is referred to therein, the Panel will treat it as part of the Response.
The Respondents contend that none of the three elements specified in paragraph�4(a) of the Policy are given in the present case:
(i) The domain names are neither confusingly similar to the Complainant’s mark CASINO DE MONTE-CARLO nor to the Complainant’s mark CASINO DE MONACO as they all include the word “Grand”, making them significantly different from the Complainant’s marks. Furthermore, none of disputed domain names incorporates the word “Monte Carlo”, while some of them refer to “Monaco” as a geographical term distinct from Monte Carlo. The mark CASINO DE MONACO, however, is prima facie unregistrable and has not acquired a secondary meaning. It is not a well-known mark either. On the other side, the disputed domain name has acquired an independent reputation on account of extensive use for online gambling purposes since it was first registered in 2000. It must also be taken into account that the Respondents are engaged in online gambling, a very different field of gambling as compared to the Complainant’s business. Even to the extent the disputed domain names incorporate the word “casino” they are not confusingly similar to the Complainant’s marks. However, the Respondents would agree to the cancellation of such domain names after a period of grace of one month. The Respondents also contend that the Complainant’s monopoly to operate casinos in Monaco is not sufficiently known to the Internet users visiting the Respondents’ website, who would not expect a connection between this monopoly and such website, and that this monopoly lasted only until April�1,�2007.
(ii) The Respondents further contend that they do have rights and legitimate interests in respect of the domain names as the domain names have been in legitimate, albeit intermittent, use for gaming purposes since at least July 2000 (in particular, the domain name was in use for some time in 2000). The Respondents further state that their company PlayS PLC bought the domain names in good faith with effect from November�1,�2006 as part of Grand Gaming Group, an established business that had been trading extensively since June�25,�2006, and that PlayS PLC and its predecessors have made extensive use of the primary names and , thereby building up a reputation among its customers as proprietors of the name “Grand Monaco”, including a network of relationships with agencies and affiliated third parties. The disputed domain names are vital to the Respondents’ business and the Respondents would not have acquired Grand Gaming Group had they known of any risk related to the underlying domain names. Finally, the Respondents contend that no adverse inference should be drawn from the disclaimer, which was put in place by the previous owners of the domain names on October�7,�2006.
(iii) The Respondents finally contend that the domain names were neither registered nor being used in bad faith as there is no reference on the websites under the domain names to the Complainant’s business, in particular not its casino. The�Respondents claim to enjoy an independent reputation in the name “Grand Monaco”, which had been on the Register without being challenged for six years and had been used extensively at various times during such period before the Respondents acquired the disputed domain names. The disputed domain names are based on the geographical word “Monaco” which is not (part of) the Complainant’s name. Even if they are part of a registered trademark, geographical names may not be monopolized, especially not if they are particularly attractive because of the glamorous associations they evoke as in the present case.
With regard to subsequent litigation, the Respondents contend that the only courts of Mutual Jurisdiction under paragraph�3(b)(xiii) of the Rules are the courts of England and Wales. They argue that they have not entered into a registration agreement with the registrar but only a transfer agreement, which does not include a submission to the courts of the Registrar’s location for disputes concerning or arising from the use of the domain name, while the definition of Mutual Jurisdiction as in paragraph�1 of the Rules stipulates that the domain name holder must have submitted in its registration agreement to the jurisdiction of the principal office of the Registrar for court adjudication of this type of disputes.
6. Discussion and Findings
The first point to be dealt with is the admissibility of the Complainant’s Reply and the relevance of the correspondence stimulated by such supplemental submission.
The Rules do not allow the parties to file supplemental submissions on their own volition and paragraph�12 provides that a Panel may in its sole discretion request further statements or documents from either of the parties. Thus, no party has the right to insist upon the admission of additional arguments or evidence.
Grounds justifying new submissions are above all the existence of new pertinent facts that did not arise until after the complaint was filed. For instance, if the respondent raises objections that could not have been anticipated when the complaint was filed, the panel can give the complainant a right to reply to the submission or may accept the complainant’s unsolicited additional submission (see Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No.�D2000-0416 - ; QNX Software Systems Ltd. v. Future Media Architects, Inc. and Thunayan K AL-Ghanim, WIPO Case No.�D2003-0921 - ; Goldline International, Inc. v. Gold Line, WIPO Case No.�D2000-1151 - ).
The Complainant does not cite any exceptional circumstances necessitating further submissions, nor does the Reply itself disclose any relevant new facts or legal authority not available at the time the Complaint was submitted. Instead, the Complainant appears to have submitted the Reply solely to reciprocate the arguments presented in the Response. Such a reply is not justified under the Rules.
Therefore, the Panel elects not to accept the Complainant’s supplemental submission and supporting documents and has not relied on them in reaching this decision. The same applies to the subsequent submissions by both parties.
Second, the Respondents initiated an argument on the competent court of Mutual Jurisdiction. When contending that only the transfer agreement with the Registrar is relevant in this regard, they ignore the fact that the continued registration of disputed domain names with Go Daddy Software is subject to such registrar’s registration agreement. According to the Panel’s own research, the Transfer Agreement includes a provision submitting transferees to the original domain name registration agreement, as its section�7 reads as follows: “You understand that this is a request for a domain name transfer of registrars. By acceptance of this Transfer Agreement, you are requesting that the domain name registration be transferred from the current registrar to Go Daddy. As the current authorized Registrant of the domain name(s), you agree to authorize this transfer by notifying your Administrative contact of his/her responsibilities with respect to this transfer. You acknowledge that you and Go Daddy have entered into a Domain Name Registration Agreement (hereinafter referred to as ‘Registration Agreement’). You have read, understood, and agree to be legally bound by the agreements that govern all domain names registered through Go Daddy as found on the legal agreements page, including the Domain Name Registration Agreement; the dispute policy; this Agreement; any Go Daddy policies and procedures that are or may be published from time to time by Go Daddy, ICANN, and/or the Registry Administrator chosen by ICANN.” The registration agreement, in turn, establishes the registrar’s location as possible Mutual Jurisdiction, which has therefore validly been selected by the Complainant in this case and confirmed by Go Daddy Software in its communication with the Center dated March�15,�2007. As a result, Mutual Jurisdiction under paragraph�3(b)(xiii) of the Rules lies with the courts of Scottsdale, Arizona, United�States�of�America.
Under paragraph�4(a) of the Policy, the Complainant must prove that each of the following three elements are present:
(i) the domain name is identical or confusingly similar to the Complainant’s trademark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Respondents question the inherent registrability of the Complainant’s mark CASINO DE MONACO. However, as the Complainant submitted evidence of the registration of this mark, its possibly descriptive character is not relevant with respect to the requirements of paragraph�4(a)(i) of the Policy. It is not for the Panel to judge the validity of a trademark registered with an official trademark office (cf. La Soci�t� Anonyme des Bains de Mer et du Cercle des �trangers � Monaco v. Thomas Proud, WIPO Case No.�D2000-1316 - ).
In order to compare the disputed domain names to the Complainant’s marks, both designations must be compared as a whole (cf. La Soci�t� des Bains de Mer et du Cercle des �trangers � Monaco v. Martimi Bt., WIPO Case No.�D2000-1318 - ). However, the specific top level domain name is to be left out as it is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the Complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No.�D2000-1525 - et al.; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No.�D2001-0374 - ).
While the Complainant does not enjoy trademark rights in the geographical locations “Monaco” or “Monte-Carlo” as such, it is the combination of these with the term “casino” that distinguishes the Complainant’s marks and points to the Complainant’s famous casino.
Next to the word “Monaco”, the disputed domain names all contain the additional element “grand” that is strongly linked to the gambling industry and, next to the location Monaco, evokes the Casino of Monte-Carlo (cf. Soci�t� des Bains de Mer et du Cercle des �trangers � Monaco v. None, WIPO Case No.�D2004-0415 - et al.; Soci�t� des Bains de Mer et du Cercle des �trangers � Monaco v. Corril Holding N.V., WIPO Case No.�D2005-1342 - ). It is a conceptual similarity that exists here between the Complainant’s marks and the disputed domain names. As a general principle, such similarity can be sufficient to find for confusing similarity, even in the absence of a strong visual or phonetical similarity, based on the idea a certain phrase suggests. The domain names , , and are therefore confusingly similar to the Complainant’s mark CASINO DE MONACO.
The rest of the disputed domain names contain further elements. Where the word “casino” is added, the conceptual, visual and phonetical similarity with the Complainant’s mark CASINO DE MONACO is even stronger. Thus, the domain names , , , , , , , , and are also confusingly similar to the Complainant’s mark CASINO DE MONACO.
Finally, there are the disputed domain names containing “Monaco”, “grand” and additional generic elements, i.e. , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and . In no case does the addition of the descriptive term destroy the conceptual similarity between the disputed domain name and the Complainant’s mark as described above, regardless of whether the generic term added is related to gambling or not and regardless of whether the descriptive term includes a typographical error as in (instead of “ayuda” which is Spanish and means “help”). As a result, these domain names are confusingly similar to the Complainant’s mark CASINO DE MONACO as well.
The Panel wishes to point out that confusing similarity is also given between all of the disputed domain names and the Complainant’s well-known mark CASINO DE MONTE-CARLO. As many previous UDRP panels have found, Monte Carlo is commonly associated with the State of Monaco (cf. Soci�t� des Bains de Mer et du Cercle des �trangers � Monaco v. Empire Online Ltd., WIPO Case No.�D2006-0289 - with further references). The geographical locations “Monaco” and “Monte-Carlo” are therefore interchangeable if used together with the noun “casino”.
It is undisputed that the Complainant’s mark CASINO DE MONTE-CARLO is well- known and enjoys a substantial reputation. This is in the view of the Panel regardless of whether the Complainant’s exclusive concession for gambling in Monaco ended in April 2007 or not.
As a result, the domain names are confusingly similar to the Complainant’s trademark CASINO DE MONACO as well as to the Complainant’s trademark CASINO DE MONTE-CARLO under paragraph�4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph�4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph�4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable 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; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the service marks at issue.
As the Respondents wish to rely on paragraph�4(c)(i) of the Policy, the question is whether they used the disputed domain names in connection with a bona fide offering of goods or services. It is hard to imagine that they did not know about the Complainant and its activities with a view to the disclaimer on the websites under all of the active disputed domain names and the fact that the Respondent Max Wright explicitly acknowledges the “substantial reputation in the name “Casino de Monte Carlo’” and that such “is the name by which the Complainant’s main Casino is known the world over”. Even if the Respondents wrongly assumed that the disputed domain names were not confusingly similar to the Complainant’s mark CASINO DE MONTE –CARLO, this erroneous legal conclusion would not be sufficient to consider the Respondents’ offering of services as being in good faith, as they were well aware of the underlying facts. It is a general legal principle that a mistake or error of law (as opposed to an error of fact) is, at least where it can be avoided, not a justification or an exculpation and therefore irrelevant. The buyer of a domain name must always anticipate the possibility of cyber squatting procedures. Moreover, at the time of the acquisition of the domain names in 2006, the Respondents would have found many decisions against holders of domain names very similar to the disputed domain names had they done any searches. They have therefore not offered their services in good faith.
Whether any of the Respondents’ predecessors used (some of) the disputed domain names in good faith at some earlier stage is not relevant here, as the Respondents themselves must have acted bona fide and they can only have done so after the acquisition of the disputed domain names. Nor does it make any difference that the Respondents’ business will allegedly suffer damages in case the domain names are transferred to the Complainant – the mere fact that the Respondents incurred expenses and have invested a sum of money in the domain names does not confer a legitimate right or interest onto them (cf. Soci�t� des Bains de Mer et du Cercle des �trangers � Monaco v. Javier Llorens, WIPO Case No.�D2000-1319 - ).
To sum up, the Respondents did not use the domain names in connection with a bona fide offering of goods or services under paragraph�4(c)(i) of the Policy.
The Respondents further contend that PlayShare and its predecessors have built up an independent reputation of the name “Grand Monaco”, thus referring to paragraph�4(c)(ii) of the Policy. However, this allegation is not supported by any evidence whatsoever, and the mere allegation is not sufficient to meet the Respondents’ burden of proof after the Complainant has established prima facie that the Respondents do not enjoy rights to or legitimate interests in the disputed domain names. Therefore, the Respondents cannot rely on paragraph�4(c)(ii) of the Policy either.
As a result, the Respondents cannot claim rights to or legitimate interests in the disputed domain names under paragraph�4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph�4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph�4(a)(iii) of the Policy, i.e.
(i) circumstances indicating that the respondent has registered or 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 respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The circumstances mentioned in paragraph�4(b) of the Policy are not exclusive, while the two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered in bad faith and is being used in bad faith.
As outlined above, the Respondents (professionals in the gambling business) were well aware of the Complainant’s rights in the name and trademark CASINO DE MONTE-CARLO when they registered (acquired) the disputed domain names, which were therefore registered in bad faith.
To the extent that the disputed domain names resolve to an active website (as most of them do), they all lead Internet users to the same site, where visitors can play online casino games by downloading casino software. This type of bad faith use is addressed by paragraph�4(b)(iv) of the Policy - the Respondents intentionally attempt to attract, for commercial gain, Internet users to their website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondents’ website. Again, this is regardless of whether the Respondents arrived at the correct legal conclusion regarding confusing similarity between the disputed domain names and the Complainant’s mark CASINO DE MONTE-CARLO: The disputed domain names attract Internet users due to their suggestion of affiliation with the Complainant’s well-known mark of which the Respondents have always been aware.
To the extent, however, that the Respondents have not yet constructed websites under the disputed domain names (as is the case for some of them, which are parked “courtesy of GoD”), this behavior is to be considered as a case of passive holding, which corresponds to an active use (cf. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No.�D2000-0003 - ; American Home Products Corporation v. Haymont Veterinary Clinic, WIPO Case No.�D2000-0502 - ; Jupiters Limited v. Aaron Hall, WIPO Case No.�D2000-0574 - ; Teledesic LLC v. McDougal Design, WIPO�Case No.�D2000-0620�- with further references), mainly for two reasons: the strong reputation of the Complainant’s CASINO DE MONTE-CARLO mark on the one hand and the fact that it is impossible to conceive a good faith use of such domain names by the Respondents that would not be illegitimate on the other hand.
All disputed domain names are therefore being used in bad faith pursuant to paragraph�4(a)(iii) of the Policy.
As a result, the requirements of paragraph�4(a)(iii) of the Policy have also been fulfilled.
7. Decision
For all the foregoing reasons, in accordance with paragraphs�4(i) of the Policy and 15�of the Rules, the Panel orders that the domain names
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be transferred to the Complainant.
Brigitte Joppich
Sole Panelist
Dated: May�25,�2007
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