WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Soci�t� des Bains de Mer et du Cercle des �trangers � Monaco v. Laurence Michaels
Case No. D2007-1807
1. The Parties
The Complainant is Soci�t� des Bains de Mer et du Cercle des �trangers � Monaco, Monte Carlo, Monaco, Principaut� de Monaco, represented by De Gaulle Fleurance & Associ�s, France.
The Respondent is Laurence Michaels, Ilford, Hawaii, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc.
3. Procedural History
The Complaint filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on December 6, 2007 and by hard copy on December 12, 2007 named Domains by Proxy, Inc. as Respondent. On December 6, 2007, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the domain name at issue. On December 7, 2007, GoD, Inc. transmitted by email to the Center its verification response which confirmed that the said domain name was registered with GoD, stated that Domains by Proxy, Inc. was not the registrant, stated that Laurence Michaels was listed as the registrant and provided the contact details for the latter.
On December 18, 2007 the Center advised the Complainant by email that the registrant identified by the Registrar GoD was different from the entity named in the Complaint and was Laurence Michaels of Ilford, Hawaii, in the United Kingdom. The Center invited the Complainant to amend the Complaint, indicating that any further determination as to the proper identity of the Respondent(s) would be at the sole discretion of the Panel to be appointed in this case.
In the same communication of December 18, 2007 the Center suggested that paragraph 14 of the Complaint be clarified to provide that the courts to which the Complainant would submit in the event of any challenges that may be made to the Panel’s decision would be the courts at the location of the principal office of the concerned registrar.
On December 20, 2007 the Complainant forwarded to the Center an Amended Complaint in which Laurence Michaels was identified as the Respondent. The Amended Complainant explained that the Respondent’s identity was not public when the initial Complaint was filed as the domain was registered in the name of Domains by Proxy according to a WhoIs database search on December 5, 2007, and that the identity of Laurence Michaels as registrant was revealed in a WhoIs database search on December 18, 2007.
The Amended Complaint contained an amendment to paragraph 14 providing that in the event of a challenge to a decision of the panel, the jurisdiction would be that of the United Kingdom, the location of the holder of the domain name, Laurence Michaels.
The Center verified that the Amended 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 Amended Complaint, and the proceedings commenced on December 24, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 13, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 14, 2008. Subsequently, on January 25, 2008, the Respondent forwarded to the Center a short email objecting to having to defend himself.
The Center appointed Joan Clark as the sole panelist in this matter on January 25, 2008. 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
According to the WhoIs search results provided by GoD, Inc., on December 5, 2007 the registrant of the domain name was Domains by Proxy, Inc. However, WhoIs search results provided by GoD, Inc. on December 18, 2007 revealed that the registrant was Lawrence Michaels. The domain name was created on April 25, 2006 to expire on April 25, 2008.
The Complainant declares it is the owner of the following trade-marks:
1. The international word mark CASINO DE MONACO which was registered on December 19, 2002
2. The word mark CASINO DE MONACO for which an application has been filed in the United States Trade-Marks Office on November 14, 2007.
3. The word mark CASINO DE MONTE-CARLO which was deposited on August 13, 1996 with the Monaco Trade-Marks Office.
4. The international trade-mark CASINO DE MONTE-CARLO registered on January 21, 2002 and December 27, 2002.
The foregoing trade-marks have been registered or are the subject of applications for registration in respect of a wide variety of goods and/or services including scientific instruments, paper products, toys and games, education and sporting and cultural activities.
5. Parties’ Contentions
A. Complainant
a) The domain name is identical or confusingly similar to the Complainant’s trade-marks
The Complainant asserts that the domain name in issue is identical or confusingly similar to a trade-mark or service mark in which the Complainant has rights. The Complainant states that it has been operating the Casino of Monte Carlo in Monaco for more than 140 years and that the Casino has become famous worldwide as one of the most significant symbols of the Principaut� de Monaco, and that it attracts a clientele from numerous European and non-European countries.
The Complainant states that it is the founder and manager of the Casino de Monte Carlo in Monaco. The Complainant further states that since April 2, 1863, it has been granted by the authorities of the Principaut� de Monaco a monopoly for casino and gambling industries for the territory of the Principaut�, and is therefore the sole company that can organize games and gambling in Monaco.
The Complainant avers that it holds the international word mark CASINO DE MONACO registered on December 19, 2002, the corresponding United States federal trade-mark application filed on November 14, 2007, as well as the word mark CASINO DE MONTE-CARLO filed on August 13, 1996 with the Monaco Trade-Marks Office and, finally, the international trade-mark CASINO DE MONTE-CARLO registered on January 21, 2002.
The Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s trade-marks as the term “gold Monaco casino” incorporates both nouns “casino” and “Monaco” of the Complainant’s trade-marks. The Complainant states that the inversion of the order of the nouns in the mark does not render the disputed domain name dissimilar, but merely reflects a difference in usage or placement of the adjectively used noun “Monaco” in relation the principal noun “casino”, between the French and the English language, and refers to a WIPO decision in support of this proposition. See Soci�t� des Bains de Mer et du Cercle des �trangers � Monaco v. Mark Bolet,WIPO Case No. D2006-1245.
The Complainant explains that its famous casino, whose name is Casino de Monte-Carlo, is also referred to by the public as Casino de Monaco, and further explains that both names, Monaco and Monte-Carlo are used interchangeably by the public, although Monte-Carlo is a district of the City and Principality of Monaco. The Complainant refers to a number of WIPO cases in which the Panels have arrived at the conclusion that domain names including the words “Monaco” and “Casino” are confusingly similar to the trade-mark CASINO DE MONTE-CARLO for the reason that Monte-Carlo is commonly associated with the State of Monaco.
Further, the Complainant asserts that the addition of the generic term “gold” does not render the disputed domain name legally different from the Complainant’s trade-mark.
The Complainant asserts that the term “gold” is commonly associated with wealth and luck, much in the same way as casinos, and that the term “gold” is often associated with the casino business, with the result that the addition of “gold” to the Complainant’s registered trade-mark in the disputed domain name does create a likelihood of confusion between the disputed domain name and the Complainant’s registered trade-mark.
b) The Respondent has no rights or legitimate interests in respect of the domain name
The Complainant states it has searched trade-mark databases for possible trade-mark registrations or applications by the Respondent, and has found no trade-marks including the words “casino” or “Monaco” registered by the Respondent in the European Union or in the United States. The Complainant asserts that, to the best of its knowledge, the Respondent holds no intellectual property rights in any mark that contains the terms “casino” and “Monaco”.
The Complainant declares that the Respondent has not received any licence or authorization from the authorities of the Principality of Monaco to operate a casino in Monaco or in the geographical area of Monte-Carlo, and that the Complainant has never authorized the Respondent to use its 140 year-old famous marks CASINO DE MONACO or CASINO DE MONTE-CARLO or to register and use the disputed domain name, and further that the Complainant does not have any type of business relationship with the Respondent.
The Complainant also asserts that the Respondent cannot claim that it has made a bona fide use of the disputed domain name, and concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
c) Registration and use of the domain name in bad faith
The Complainant declares that the Respondent is a professional in the gambling business and is the CEO of Lawrence Michaels Associates which operates an on-line poker website. From this, the Complainant concludes that the Respondent was necessarily aware of the Complainant’s famous casino and was necessarily aware, or should have reasonably been aware, of the fact the Complainant has a strong policy of protecting and enforcing its intellectual property rights and preserving its reputation and renown from being unduly used by third parties. In support of this statement, the Complainant has listed a substantial number of domain name disputes which have resulted in the transfer of many domain names to the Complainant.
The Complainant avers that the Respondent could not have been unaware of the strong notoriety and world renown of the Complainant’s trade-marks and of the fact that the registration of the disputed domain name would violate the Complainant’s rights.
The Complainant further states that the disputed domain name leads to a parking page with sponsored links and that it is not directed towards a website but is used to earn revenue. Every time a consumer clicks on one of the sponsored links posted on the parking page, the owner of the domain name earns money which, the Complainant states, is a clear example of bad faith behaviour.
The Complainant further notes that there is a notice placed on the parking page which states that “the domain name may be for sale” and that, when a prospective purchaser clicks on the link to see if the domain name indeed is available for purchase, he/she is asked to make an offer for the disputed domain name. This is considered by the Complainant to be another example of bad faith registration and use of the disputed domain name.
The Complainant asserts that, by registering a domain name incorporating renowned marks such as the Complainant’s in order to generate traffic on parking pages, the Respondent is passing off on the Complainant’s trade-marks for commercial gain.
The Complainant concludes that the disputed domain name has been both registered and used in bad faith by the Respondent, and requests the contested domain name be transferred to the Complainant.
B. Respondent’ contentions
The Respondent did not file a Response to the Complaint. The only communication received by the Center from the Respondent was a short e-mail stating “I don’t understand any of this. I have owned this domain for a long time. All of a sudden, someone else wants it and I find myself defending myself. This is ridiculous.”
Apart from the above protestation with no factual explanation or justification of his position, and without benefit from a certification of its completeness and accuracy as required by the Rules, the Respondent failed to file a Response to the Complaint.
6. Discussion and Findings
Identity of the Respondent
The Panel determines that the proper identity of the Respondent is Laurence Michaels and that any reference in the title of this Case to the name previously listed as registrant of the domain name in an earlier database search is unnecessary.
Paragraph 4(a) of the Policy states that, in order to be successful with respect to a disputed domain name, Complainant has the burden of proving that all three elements are present in the Complaint, namely:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that 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.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of registration and use of a domain name in bad faith but are not limitative.
Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate Respondent’s rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar
The Panel finds the disputed domain name, , to be confusingly similar to the Complainant’s registered international word mark CASINO DE MONACO in which the Complainant has shown it has rights. The Panel agrees with the Complainant that the inversion of the order of the nouns in the mark, “casino” and “Monaco”, does not render the disputed domain name dissimilar. See Soci�t� des Bains de Mer et du Cercle des �trangers � Monaco v. Mark Bolet,WIPO Case No. D2006-1245.
The addition of the word “gold” at the beginning of the domain name does not detract from the confusing similarity of the domain name to the Complainant’s trade-marks.
As suggested by the Complainant, the term “gold” is commonly associated with wealth and luck much in the same way as casinos. Indeed, it has previously been held in Soci�t� des Bains de Mer et du Cercle des �trangers � Monaco v. Empire Online Ltd.,WIPO Case No. D2006-0289, that the domain name is confusingly similar to the Complainant’s trade-mark CASINO DE MONACO. As stated in this decision, “… the addition of the term “gold” may actually strengthen the perception of the average consumer that the website under the domain name has the same commercial origin as casinos under the trade-mark CASINO DE MONACO”.
The Panel has taken note of the contentions in the Complaint that “Monaco” and “Monte-Carlo” are names that are used interchangeably by the public. See La Soci�t� Anonyme des Bains de Mer et du Cercle des �trangers � Monaco v. Netrider,WIPO Case No. D2000-1330; Soci�t� des Bains de Mer et du Cercle des �trangers � Monaco v. Iggi Networks Media Group,WIPO Case No. D2000-1324; Soci�t� des Bains de Mer et du Cercle des �trangers � Monaco v. Javier Llorens,WIPO Case No. D2000-1319; La Soci�t� Anonyme des Bains de Mer et du Cercle des �trangers � Monaco v. Internet Marketing Associates,WIPO Case No. D2000-1317; La Soci�t� Anonyme des Bains de Mer et du Cercle des �trangers � Monaco v. Thomas Proud,WIPO Case No. D2000-1316.
The Panel is also prepared to accept that the disputed domain name is confusingly similar to the Complainant’s registered international trade-mark CASINO DE MONTE-CARLO, in which the Complainant has rights.
The first criterion for a successful challenge to the disputed domain name has therefore been satisfied.
B. Rights or Legitimate Interests
The Complainant has asserted that the Respondent has no rights or legitimate interests in the disputed domain name and in support has stated that, to the best of the Complainant’s knowledge, the Respondent holds no intellectual property rights in any mark that contains the terms “casino” and “Monaco”, that the Respondent has not made a bona fide use of the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent has not been authorized by the Complainant to use its 140 year-old famous marks CASINO DE MONACO or CASINO DE MONTE-CARLO or to register and use the disputed domain name.
Against the Complainant’s assertion that the Respondent has no rights or legitimate interests in the disputed domain name, the Respondent has produced no contrary evidence but merely a protestation, in its incomplete and uncertified e-mail communication to the Center, that it has owned the domain name for many years and does not understand why he should have to protect himself against someone who wants the domain name. This communication does not assist the Respondent in establishing any rights or legitimate interests in the disputed domain name.
It has been held in a number of decisions that, while the overall burden of proof in a domain name challenge is on the Complainant, this element of proving the Respondent has no rights or legitimate interests in a domain name involves the Complainant in proving matters which are peculiarly within the knowledge of the Respondent, that is, of proving a negative, which is often an impossible task for the Complainant. When the Complainant has made the allegations with some facts in support, the Respondent has a case to answer. See Intocast AG v. Lee Daeyoon,WIPO Case No. D2000-1467; Julian Barnes v. Old Barn Studios Limited,WIPO Case No. D2001-0121; Frontier Distribution LLC v. Belize Domain WHOIS Service Lt.,WIPO Case No. D2007-1203.
In the present case, the Complainant has asserted that the Respondent has not used the domain name, that the Respondent holds no intellectual property rights over any mark that contains the terms “casino” and “Monaco” and has not received authorization from the Complainant to use its famous marks CASINO DE MONACO or CASINO DE MONTE-CARLO or to register and use the disputed domain name.
There is no indication that the Respondent has made any bona fide use or any preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Nor is there any indication that the Respondent has been commonly known by the domain name or has made a legitimate non-commercial or fair use of the domain name
The Panel finds, in the light of the evidence placed before it, it has been established that the Respondent has no rights or legitimate interests in the disputed domain name and the second criterion for a successful challenge of a domain name has been satisfied.
C. Registered and Used in Bad Faith
The Complainant avers that the Respondent is a professional in the gambling business and is the CEO of Lawrence Michaels Associates which operates an online poker website. In view of the fame of the Complainant’s casino and the renown of the marks CASINO DE MONACO and CASINO DE MONTE-CARLO, the Panel has no hesitation in finding there is an extremely strong probability that the Respondent, in adopting and registering the disputed domain name, was aware of the Complainant’s famous casino and its trade-marks CASINO DE MONACO and CASINO DE MONTE-CARLO.
The disputed domain name leads to a parking page which has sponsored links. When a viewer clicks on one of these links the owner of the domain name earns money. It may be concluded from the foregoing that the Respondent is deriving a financial benefit from web traffic diverted through the disputed domain name to the Respondent’s domain parking page and the sponsored links. Accordingly the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his parking page and sponsored links by creating a likelihood of confusion with the Complainant’s marks. See Dr. Ing. h.c.F. Porsche AG v. Meechai,WIPO Case No. D2006-1116.
Moreover the parking page bears a notice stating that “the domain name may be for sale” and that the offer must meet the minimum price of �100, which is presumably above the out-of-pocket costs for registering the domain name.
In view of the foregoing the Panel concludes that the disputed domain name was registered and is being used in bad faith.
The third criterion for a successful challenge of the domain name registration has therefore been satisfied.
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.
Joan Clark, Q.C.
Sole Panelist
Date: February 8, 2008
Full & Egal Universal Law Academy