WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Soci�t� des Bains de Mer et du Cercle des Etrangers � Monaco v. Grande Media
Case No. D2007-0840
1. The Parties
The Complainant is Soci�t� des Bains de Mer et du Cercle des Etrangers � Monaco, Monte Carlo, Monaco, represented by Julien Horn, France.
The Respondent is Grande Media, Barrie, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with EasyDNS Technologies Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2007. On June 12, 2007, the Center transmitted by email to EasyDNS Technologies Inc. a request for registrar verification in connection with the domain name at issue. On June 12, 2007, EasyDNS Technologies Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 22, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 12, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 16, 2007.
The Center appointed Nicoletta Colombo as the sole panelist in this matter on July 23, 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 the Rules, paragraph 7.
4. Factual Background
The Complainant has been operating Casino de Monte Carlo in Monaco for more than 140 years. The Casino has become famous worldwide as one of the most significant symbols of the Principaut� de Monaco. The Complainant is, since April 2, 1863, the sole company that can organize games and gambling in Monaco according to the authorization by the Principaut� de Monaco authorities. The Complainant owns the trade mark CASINO DE MONTE-CARLO registered in Monaco on August 13, 1996, and renewed on October 10, 2006, registered in United States of America on December 30, 2002, and the international marks filed on January 21, 2002, and December 27, 2002.
The Respondent has registered the contested domain name on September 22, 2005, and the website is active and offers to play online casino games.
5. Parties’ Contentions
A. Complainant
The Complainant contends the following:
A.. The contested domain name is confusingly similar to the prior trademark of the Complainant because:
- it reproduces the words of the Complainant’s trademark even if the position of the words are inverted; the inversion merely reflects a different usage or placement of the adjectively used noun, in relation to the principal noun between the English and French language;
- the adjunction of the term “royale” in the disputed domain name can easily conduct to an association of the disputed domain name with the Complainant which is located in the Principality of Monaco, which is a constitutional monarchy headed by the Sovereign Prince; moreover, the term “royale” is commonly used in casino names, as Casino Royale and Hotel in Las Vegas, and refers to the concept of prestige and luxury, as casinos and Monte-Carlo do.
B. The Respondent has no rights or legitimate interests in respect of the Domain Name because:
- the Respondent is a legal entity residing in Canada and therefore has no geographical link with the Principality of Monaco;
- the Respondent has not received any license or authorization from the Principality of Monaco to operate a casino in Monaco;
- the Respondent has never received any authorization from the Complainant to use the famous trademark CASINO DE MONTE-CARLO, nor to register and use the disputed domain name.
C. The domain name was registered and is being used in bad faith because:
- the Respondent is a professional in the on-line gambling business and exploits a website which offers to play online casino games;
- the Respondent could not ignore the strong notoriety and world renown of the Complainant’s trademark;
- the Respondent, in order to convince the Internet users that the disputed domain name is connected with the well-known casino in Monte-Carlo, offers in its website to win a trip to Monte-Carlo.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The domain name incorporate the words “Casino” and “Monte-Carlo” which constitute the Complainant’s trademark. The inversion of the order of these terms in the domain name at issue does not render the contested domain name dissimilar to the trademark of the Complainant. Moreover, the addition of the term “royale” does not add a distinctive element to the disputed domain name, but compounds the likelihood of confusion between the domain name and the Complainant’s trademark because the term “royale” is often included in casino names as an indication of luxury and refinement.
There are numerous UDRP decisions stating that confusing similarity, for the purposes of the Policy, is established when a domain name wholly incorporates a complainant’s mark and only adds a generic word along with (see i.e., Deceininck NV, Thyssen Polymer GmbH v. Beloussov Dimitriy, WIPO Case No. D2007-0347; Soci�t� des Bains de Mer et du Cercle des Etrangers � Monaco v. LaPorte Holdings, LLC., WIPO Case No. D2005-0526).
Moreover, the Panel does not consider, when analyzing the identity or similarity, the suffix - in this case “.com” - because it is a necessary component of the domain name and does not give any distinctiveness (see i.e., Cr�dit Industriel et Commercial SA v. Name Privacy, WIPO Case No. D2005-0457).
Therefore the Panel finds that the Domain Name is confusingly similar to the Complainants’ trademarks.
B. Rights or Legitimate Interests
The Complainant has trademark registrations for CASINO DE MONTE-CARLO all over the world. Therefore it has been proven that the Complainant has rights in the CASINO DE MONTE-CARLO trademark.
The Respondent has not filed any response in this case. There is prima facie indication in the evidence provided to the Panel that there are no rights or legitimate interests on the part of the Respondent in the domain name, see paragraph 4(c) of the Policy.
Specifically, the trademark search made by the Complainant has demonstrated that the Respondent has not registered any trademarks including the words “casino” and “Monaco” in the United States of America nor in any of the European countries. Moreover, on the evidence before the Panel, the Respondent has not received any license or authorization from the Principality of Monaco to operate any casino utilizing any reference to the Principality or any authorization from the Complainant to use the famous trademark CASINO DE MONTE-CARLO, nor has it been authorized to register and use the disputed domain name.
Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in registering the contested Domain Name.
C. Registered and Used in Bad Faith
The Domain Name is exploited by the Respondent to offer online casino games. The Respondent must have been aware of the existence of the CASINO OF MONTE-CARLO and the related trademark and uses by the Complainant. In all likelihood, only someone who was familiar with the Complainant’s mark would have registered a domain name inclusive of such mark.
The Panel is of the opinion that the Respondent has registered the disputed domain name with the intent to profit from the reputation of the famous trademark of the Complainant by using Domain Name that is confusingly similar to Complainant’s mark. Taken together with the fact that the Respondent has not filed any Response in this proceeding in support of any good faith registration or use, the Panel believes that the Complainant has demonstrated that the contested Domain Name has been registered and used in bad faith.
The Respondent’s bad faith is also demonstrated by the fact that the Respondent, probably in order to convince the Internet users that the website is connected with the well-known Casino in Monte-Carlo, offers the opportunity to win a trip to Monte-Carlo on its website, which furthers the likelihood of confusion between the Complainant’s trademark and the Respondent’s domain name.
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 name be transferred to the Complainant.
Nicoletta Colombo
Sole Panelist
Dated: July 30, 2007
Full & Egal Universal Law Academy