WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION La Société des Bains de Mer et du cercle des étrangers à Monaco v. Nathan, Joseph Case No. D2008-1437 1. The Parties
The Complainant is La Société des Bains de Mer et du cercle des étrangers à Monaco, of Monaco, represented by De Gaulle Fleurance & Associés, France.
The Respondent is Nathan Joseph, of California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2008. On September 23, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On September 23, 2008, Moniker Online Services, LLC 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 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 September 30, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 21, 2008.
The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on October 31, 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
The Complainant has been operating the famous Casino in Monaco, known interchangeably as the Casino de Monaco and the Casino de Monte-Carlo, for more than 140 years pursuant to a monopoly granted to it by the Principality of Monaco and renewed most recently on March 13, 2003.
The Complainant is the registered owner of the word trademark CASINO DE MONACO (No. 23234) registered on July 1, 2002 with the Monaco Trademark Office.
The Complainant is also the registered owner of the word trademark CASINO DE MONTE-CARLO (No. 96-17407) registered on August 13, 1996 with the Monaco Trademark Office.
The Respondent registered the disputed domain name on June 30, 2005. 5. Parties' Contentions A. Complainant
The Complainant alleges that the disputed domain name should no longer be registered with the Respondent but that it should be transferred to the Complainant.
It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain name is confusingly similar to the Complainant's registered trademark CASINO DE MONACO, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.
In support of its case on the first of these three elements, the Complainant relies on the registered CASINO DE MONACO trademark to which reference has already been made. It then says that it is self-evident that the domain name is confusingly similar to the CASINO DE MONACO mark because the domain name consists of the trademark, with each of its constituent words being pluralised by the addition of the letter “s”.
The Complainant then contends, to establish the second element, that the Respondent has no rights or legitimate interests in the domain name because the facts show an intention by the Respondent to trade on the Complainant's mark and mislead consumers into believing that they have arrived at a website associated with the Complainant, by linking the site to other sites that offer casino and gambling facilities in direct competition with the Complainant. Nor, it is argued, can the Respondent bring itself within any of the provisions of paragraph 4(c) of the Policy.
Finally, the Complainant contends that the domain name was registered and is being used in bad faith. It contends that this is so because the fame of the Complainant's trademark is such that the Respondent must be presumed to have known that the registration and use of the domain name would be in violation of the Complainant's rights. It is also said that the Respondent's conduct comes squarely within paragraph 4(b)(iv) of the Policy, for it 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 CASINO DE MONACO mark. Moreover, the Respondent has attempted to conceal its identity and on several occasions has been held to be in breach of the UDRP because of similar conduct to that demonstrated in this proceeding in registering other domain names. Accordingly, the Complainant contends, it must be inferred that the Respondent registered and has used the domain name in bad faith with the intention to divert customers looking for the Complainant's website and services to other casino and gambling websites. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In that regard, the Panel also notes that the fact that the Respondent has not made a submission does not avoid the necessity of examining the issues and of doing so in the light of the evidence. The onus remains on the Complainant to make out its case and past UDRP panels have said many times that despite the absence of a submission from a Respondent, a Complainant must nevertheless show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.
However, as the Panel will illustrate later, it is possible to draw inferences from the evidence that has been submitted and in some cases from silence. Indeed, Paragraph 14 of the Rules incorporates both of those notions into the procedures of the Panel.
The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.
For the Complainant to succeed it must prove, within the meaning of Paragraph 4(a) of the Policy, that:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 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 Panel finds that the domain name is confusingly similar to the trademark CASINO DE MONACO. That is so because the domain name consists of the totality of the trademark with only slight variations, none of which detract from the confusing similarity that is otherwise present.
The first variation is that the English word “in” is used in the domain name in place of the French word “de” in the trademark. However, a reasonable bystander would assume that the domain name was intended to invoke the name of the famous casino in Monaco, whatever its official description may be. Indeed, if anything, as the Complainant points out, the variation strengthens the similarity, as it constitutes an assertion that the casinos in question are in Monaco, which is in fact where the Complainant's casino is situated. The variation is, therefore, minor and does not detract from the overall meaning of the domain name and hence its confusing similarity to the trademark.
The second variation is that each of the constituent words of the trademark, namely CASINO and MONACO has been pluralised in the domain name by the addition of the letter “s”. This variation is also a minor one and of no effect for present purposes, as a reasonable bystander confronted by the domain name would naturally assume it was referring to more than one casino in Monaco, which must a fortiori include a reference to the Complainant's casino.
Moreover, it has been consistently held by UDRP panelists that all such minor misspellings, whether they are omissions or additions, are not sufficient to negate a finding of confusing similarity that is otherwise present. See, for example, Medco Health Solutions, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-0693 and Paper Payment Services, LLC v. Web Domain Names, WIPO Case No. D2006-0680.
It is also now well established that if it is found, as in this case, that a domain name is confusingly similar to a trademark, that finding is not negated by the presence in the domain name of suffixes such as the gTLD suffix “.com”.
In sum, the Complainant clearly has rights in the CASINO DE MONACO trademark as its registered owner. The Panel finds that the disputed domain name is confusingly similar to that trademark, and that the Complainant has accordingly established the first of the three elements that it must prove under the Policy. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name.
But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Thus, if a respondent proves any of these elements or indeed anything else that shows that he or she has a right or legitimate interest in the domain name, the complainant will have failed to discharge its onus and the complaint will fail.
The Panel's task in deciding if a respondent has any rights or legitimate interests in a domain name is made more difficult when the respondent is in default and does not file a Response or any other form of submission. The Respondent in the present case was given notice that it had until October 20, 2008 to send in a Response, that the Respondent would be in default if the Response were not received by that date and that, by virtue of paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default.
It is also well established that, as it is put in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, a complainant is required to make out a “prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
The Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain name . That prima facie case is made out from the following considerations.
First, the Complainant has tendered evidence of trademark searches of the registries in the United States of America and Europe, showing that the Respondent holds no intellectual property rights over any mark that contains the terms “casino” or “monaco”. Secondly, the evidence is that the Respondent has never obtained a licence to operate a casino in Monaco or permission to use the Complainant's mark CASINO DE MONACO. Thirdly, it may be inferred from the facts just recited that the Respondent has registered and used the domain name in bad faith, thus negating any scope for the Respondent to have a right or legitimate interest in it. Moreover, the Respondent chose for the domain name the prominent trademark CASINO DE MONACO, which invokes the famous casino in Monaco that has been operated by the Complainant since 1863. Having registered the disputed domain name, the Respondent then linked it to a website site that is itself linked to casinos and other gambling facilities.
These facts give rise to the prima facie case made out by the Complainant. The Respondent has not made any attempt to rebut this prima facie case and the Panel therefore concludes that the Respondent has no rights or legitimate interests in the domain name.
The Complainant has thus made out the second of the three elements that it must establish under the Policy. C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Paragraph 4(b) of the Policy sets out four circumstances, any one of which is evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:
(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 the Respondent's 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 the site or location.”
The Panel finds that the Complainant has shown that the Respondent registered and used the domain name in bad faith and that in particular the Respondent's conduct puts the case squarely within paragraph 4(b)(iv) of the Policy.
The reasons why the Complainant's case has been made out are as follows.
First, by registering a domain name substantially in the same name as the Complainant's famous trademark CASINO DE MONACO and without any legitimate reason for doing so, it is more probable than not that the Respondent's intention in registering the domain name was to create confusion with the CASINO DE MONACO trademark and also the Complainant's business conducted under the same name. The Complainant submits and the Panel accepts that in view of the history of the casino at Monaco it could not be co-incidental that the Respondent chose to register a domain name that is so confusingly similar to the CASINO DE MONACO mark.
Secondly, the Respondent has undoubtedly been attempting to attract Internet users to the website “www.” within the meaning of paragraph 4(b)(iv) of the Policy, for the domain name has been used and is currently being used for an active website.
Thirdly, the confusion likely to be created is confusion with the CASINO DE MONACO trademark about the affiliation of the gambling and casino facilities being promoted on the Respondent's website and the websites to which it is linked and as to whether those facilities are the Complainant's services or in some way associated with it. The Panel has been able to verify this matter itself by visiting the website “www.”, where a large range of active casinos and online gambling facilities, other than those provided by the Complainant at its casino in Monaco, are being promoted. Examining the website, it is apparent that there will be confusion in the mind of the visitor as to whether or not the casinos and gambling services being promoted are those of the Complainant or endorsed by it.
There is, therefore, clear scope for confusion as to whether the casinos and gambling services being promoted on the website and other websites to which it is linked are associated with the CASINO DE MONACO trademark and hence with the Complainant.
The Panel finds that these circumstances create confusion with the Complainant's trademark as to the sponsorship, affiliation and endorsement of the Respondent's sites and the services on them and that the Respondent must be taken to have intended this confusion and to have been doing it for commercial gain in one form or another.
The facts therefore come within paragraph 4(b)(iv) of the Policy and constitute bad faith both in registration and use, a conclusion that has often been reached by UDRP panels on analogous facts; See for example: Identigene, Inc. v. Genetest LaboratoriesWIPO Case No. D2000-1100; MathF, LLC v. Weiguang Huang,WIPO Case No. D2000-0743 and IndyMac Bank, F.S.B. v. Jim Kato, NAF Case No.190366. In this regard, the comments of the panelist in Identigene, Inc., supra are apposite:
“Complainant has alleged and the Panelist finds that Respondent's use of the domain name at issue to resolve to a website where services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site. This constitutes evidence of bad faith registration and use under the Policy, Paragraph 4(b)(iv). InfoS, Inc. v. Hari Prakash,WIPO Case No. D2000-0076; America Online Inc v. Cyber Network LLP,WIPO Case No. D2000-0977.”
The Panel also accepts the submission of the Complainant that the Respondent has in the circumstances further shown bad faith by trying to conceal its identity. It has done this by registering the domain name in the name of Moniker. The manner in which a privacy service is used can in appropriate circumstances constitute a factor indicating bad faith. See for example the iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658], WIPO Case No. D2007-1438. Privacy Services in order that its contact information would be concealed.
It is also significant in this respect that the Respondent has been involved in previous UDRP proceedings where domain names were ordered to be transferred to the respective complainants in those proceedings.
Accordingly, the Complainant has made out the third of the three elements that it must establish. 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.
The Honourable Neil Anthony Brown QC
Sole Panelist
Dated: November 14, 2008
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