WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION La Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Grozea Romica Case No. D2008-1377 1. The Parties
1.1 The Complainant is La Société des Bains de Mer et du Cercle des Etrangers à Monaco, of Monte Carlo, Monaco, represented by De Gaulle Fleurance & Associés, France.
1.2 The Respondent is Grozea Romica, of Sibiu, Romania. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2008. On September 10, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On September 10, 2008, Network Solutions, LLC transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details.
3.2 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”).
3.3 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 September 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 5, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on October 6, 2008.
The Center appointed Matthew S. Harris as the sole panelist in this matter on October 9, 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
4.1 The Complainant is a limited liability company, registered in the principality of Monaco. It has for the last 140 years operated the Casino de Monte Carlo in Monaco. Under the laws of Monaco it has a monopoly on casino and gambling activities in the principality.
4.2 The Complainant is the owner of Monaco registered trade mark No. 17485 in the words “Casino de Monte-Carlo” in classes, 3, 9, 12, 14, 16, 18, 28, 34, 35, 38, 39, 41 and 42 dated August 13, 1996.
4.3 The nature and status of the Respondent is unclear, but appears to be located in Romania. On May 23, 2006, the Respondent registered the Domain Name. The Domain Name up to the date of the Complaint had not been used for an active website and it is not being used for a website at the date of this decision. 5. Parties' Contentions A. Complainant
5.1 The Complainant contends that the Domain Name comprises the words “Monte Carlo”, “gran” (the Spanish word for “grand”), and “casino”. This is said to be confusingly similar to the Complainant's CASINO DE MONTE-CARLO mark. The Complainant asserts that the reversal of the terms “Monte Carlo” and “casino” in the Domain Name and the addition of the word “gran” does not render the Domain Name dissimilar to the Complainant's mark. The word “gran” is said to be commonly used in casino names, and simply suggestive of prestige and luxury.
5.2 The Complainant claims to have conducted trade mark searches and as a result has established that the Respondent does not own any trade mark that includes the words “Casino” and “Monte-Carlo” either in the United States or any European country. The fact the Respondent is domiciled in Romania suggests no geographical link with the principality of Monaco, and the Complainant asserts that the Respondent has not received any licence or authorisation to operate a casino in Monaco. It has also not been authorised by the Complainant to register or use the Domain Name and the Complainant confirms that it has no business relationship with the Respondent.
5.3 From these facts and the fact that the Domain Name is “currently inactive”, the Complainant concludes that the Respondent has not been making any bona fide use of the Domain Name. In the circumstances, it claims that the Respondent has no rights or legitimate interests in the Domain Name.
5.4 The Complainant further contends that the “strong notoriety and world renown” of the Complainant's trade mark is such that the Respondent could not ignore that registration and use of the Domain Name would violate the Complainant's rights. Further, the Complainant maintains that its strong policy of protection for its marks means that the Respondent “who seems to be active in the Internet business” should have been reasonably aware of that policy. According to the Complainant, the well-known nature of its mark means that the Respondent's choice to register a domain name confusingly similar to the Complainant's mark cannot be purely coincidental.
5.5 Further, the Complainant contends that it “cannot be imagined” how the Domain Name might be used in a legitimate matter. The Complainant states that “[a]ny active website using the disputed domain name will most likely constitute an act of passing off or another type of infringement on Complainant's rights as it would inevitably lead to a likelihood of confusion as to the source, origin or sponsorship of such website”. It then cites Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Corril Holding N.V.,WIPO Case No. D2005-1342, a previous case involving the Complainant in relation to the domain name , which in turn cites various cases including Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
5.6 Accordingly, the Complainant claims that the Domain Name has been registered and used in bad faith. B. Respondent
5.7 The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
6.1 This Panel does not find that there are any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”. A. Identical or Confusingly Similar
6.4 The Panel accepts that the Domain Name can only be sensibly understood as the terms “Monte Carlo”, “gran”, and “casino” in combination. It also accepts that the Domain Name is confusingly similar to the Complainant's trade mark. The reversal in order of the terms “Monte-Carlo” and “casino”, and the addition of the Spanish word “gran” do not distinguish the Domain Name from the Complainant's mark so as to prevent a finding of confusing similarity. The Panel also notes that a similar conclusion was reached by the panel in Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Corril Holding N.V.,WIPO Case No. D2005-1342, in relation to the domain names and .
6.5 Accordingly, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.6 The Complainant essentially asserts that none of the examples of rights or legitimate interests set out in paragraph 4(c) of the Policy apply in this case. The Domain Name is not being actively used in relation to any website. Further, as the Complainant contends, the Respondent being based in Romania would not appear to have any obvious connection with the principality of Monte Carlo. It has also undertaken trade mark searches and not identified any relevant trade mark right owned by the Respondent. The Complaint has established an unrebutted prima facie case of the Respondent's lack of rights or legitimate interests under the Policy.
6.7 Accordingly, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
6.8 The Complainant contends that the Respondent must have been aware of the Complainant's rights at the time of registration of the Domain Name. Whether the Respondent was aware of the Complainant's enforcement programme as the Complainant alleges, the Panel cannot say. However, the Panel does accept that the term “Monte Carlo” has long been associated with gambling. It also accepts that the “Casino de Monte Carlo” is famous worldwide. For example, Wikipedia records that “[t]he Monte Carlo Casino is one of the most famous tourist attractions of Monaco”.
6.9 Arguably, the term “Monte Carlo Casino” (using the order the words appears in the Domain Name) has a descriptive element. It prima facie describes a gambling establishment in a particular location. However, the Complainant brings forward evidence to the effect that it has a monopoly in gaming and gambling in the principality. The Panel, therefore, accepts in the absence of any evidence before it to the contrary that, notwithstanding its descriptive content, “Monte Carlo Casino” and “Casino de Monte Carlo” are terms that many would associate with a particular business, i.e., the business of the Complainant.
6.10 In light of this the Panel accepts, again in the absence of any evidence to the contrary that the Respondent registered the Domain Name with the Complainant in mind. Why it did so, the Panel cannot be sure. The Respondent has not used the Domain Name and does not put forward any explanation for his actions in any Response. However, the Panel nevertheless accepts that on the balance of probabilities the Domain Name was registered with the intention of taking advantage in some manner of the reputation that the Complainant has built up in the CASINO DE MONTE-CARLO mark. This is sufficient for the purposes of bad faith registration.
6.11 The Panel also considers that the continued holding of the Domain Name given the circumstances surrounding its registration constitutes bad faith use. It has long been established that there can be bad faith use even if the domain name is not actively used. The case that is usually cited as authority for this proposition is Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
6.12 Accordingly, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
6.13 The Panel will, however, add a few short comments in relation to the Telstra case. In Telstra, the panel set out in paragraph 7.12 a list of circumstances that were said to indicate bad faith in that case. One of these was the following:
“it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant's rights under trademark law”.
6.14 As a consequence complainants will frequently assert that the mere use of their mark will involve an infringement of their intellectual property rights. The Complainant has done just that in this case. It asserts:
“Any active website using the disputed domain name will most likely constitute an act of passing off or another type of infringement on Complainant's rights as it would inevitably lead to a likelihood of confusion as to the source, origin or sponsorship of such website”.
6.15 However, this approach is problematic in a number of respects. First, to assert that a domain name cannot be used without infringement of national laws is an extraordinarily far reaching statement. In this case the Complainant has brought forward evidence of a Monaco trade mark. It has not evidenced rights anywhere else in the world. Further, there are legal systems that may permit certain uses of a mark without the consent of the mark owner. Might not a domain name be used for one of those uses? Second, this Panel would suggest that the questions of trade mark infringement, passing off and other similar national laws are typically quite distinct from any assessment of bad faith under the Policy. They may overlap but are not the same. Therefore, even if it is correct that any conceivable use of a domain name would involve trade mark infringement, it does not necessarily follow that there is bad faith use under the Policy.
6.16 The Panel would, therefore, suggest that this aspect of decision in Telstra should be re-read by those invoking the Policy with this view of the relevance of trade mark infringement in mind. This was, for example, the approach that was followed by the three-person panel in Mr. Talus Taylor, Mrs. Anette Tison v. Vicent George Warning/Fayalobi Interaction Management,WIPO Case No. D2008-0455. In that case the panel stated at paragraph 6.21 as follows:
“The Complainants' reference to the Telstra decision is also relevant here. The Domain Name is essentially identical to the name by which the Complainants' stories are known and it is hard to conceive of any use of the Domain Name that might be a legitimate one. The Panel is not saying that all and any use of the Domain Name would necessarily involve some form of trade mark infringement. The issues of trade mark infringement and abusive registration, whilst they often overlap, are separate and one does not necessarily follow from the other (see for example, Delta Air Transport NV (trading as SN Brussels Airlines) v. Theodule [D]e Souza,WIPO Case No. D2003-0372; and, 1066 Housing Association Ltd. v. Mr. D. Morgan,WIPO Case No. D2007-1461). It is simply that it is difficult to conceive of any substantive use of the Domain Name that would not involve use in bad faith”. 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.
Matthew S. Harris
Sole Panelist
Dated: October 13, 2008
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