WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION La Société des Bains de Mer et du cercle des etrangers à Monaco v. Jonathan Ferster Case No. D2008-1565 1. The Parties
The Complainant is La Société des Bains de Mer et du cercle des etrangers à Monaco, of Monaco, represented by De Gaulle Fleurance & Associés, Paris, France.
The Respondent is Jonathan Ferster, of Manchester, United Kingdom of Great Britain and Northern Ireland, represented by Blake Lapthorn, of Oxford, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Names and Registrar
The disputed domain names and (the “Disputed Domain Names”) are registered with R. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2008. On October 16, 2008, the Center transmitted by e-mail to R a request for registrar verification in connection with the Disputed Domain Names. On October 16, 2008, R transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Disputed Domain Names. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 October 28, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 17, 2008. The Response was filed with the Center on November 17, 2008.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on November 26, 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
Complainant is the founder and manager of the Casino de Monte Carlo in Monaco, which it has been operating for more than 140 years. Complainant states, and provides evidence to support, that “[s]ince April 2, 1863, the Complainant has been granted by the authorities of the Principaute de Monaco a monopoly for casino and gambling industries for the territory of the Principaute de Monaco, and is therefore the sole company that can organize games and gambling in Monaco.” Complainant states, and provides evidence to support, that it is the owner of the word mark CASINO DE MONTE-CARLO with the Monaco Trademark Office (filed August 13, 1996, and renewed October 10, 2006) (the “CASINO DE MONTE-CARLO Trademark”).
The Disputed Domain Names were both created on April 23, 2005. 5. Parties' Contentions A. Complainant
Complainant contends, in relevant part, as follows:
The Disputed Domain Names are confusingly similar to a trademark in which Complainant has rights because the Disputed Domain Names contain the words “Monte Carlo” and “casino,” each of which appears in the CASINO DE MONTE-CARLO Trademark, plus the word “club,” which is “generic and which is therefore not sufficient to avoid confusion.”
Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because Complainant has located no “possible” trademark registrations owned by Respondent in the United States of America or any European countries; Respondent has received no license from the Principaute de Monaco to operate a casino in Monaco; and Complainant has not authorized Respondent to use the CASINO DE MONTE-CARLO Trademark.
The Disputed Domain Names have been registered and are being used in bad faith because “[t]he strong notoriety and world renown of the Complainant's trademarks attest that the Respondent could not ignore that the registration and use of the disputed domain name[s] would violate Complainant's rights”; and although the Disputed Domain Names are not being used, “it cannot be imagined how such use could be done in a legitimate and bona fide manner[, because] [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 famous trademark as it would inevitably lead consumers to believe that there is some sort of association/affiliation/connection/endorsement between the Complainant and the website that would be operated under the disputed domain name[s]”. B. Respondent
Respondent contends, in relevant part, as follows:
- The Disputed Domain Names are not confusingly similar to a trademark in which Complainant has rights because the difference in order of the words in the Disputed Domain Names versus the CASINO DE MONTE-CARLO Trademark “renders the domains distinctly different”; the Disputed Domain Names contain the additional word “club,” which does not appear in the CASINO DE MONTE-CARLO Trademark; “there is no club known to be associated with” Complainant; and Complainant “has not submitted any evidence of any actual confusion on the part of the public.”
- Respondent has rights or legitimate interests in respect of the Disputed Domain Names because Respondent is “in the business of online gambling services” and “the registrations have been obtained in the course of prudent business with the genuine intention of putting these domains into active use at appropriate times”; and “[t]he term ‘Monte Carlo' brings to mind in the average member of the public the concept of gambling generally, and in this context it is a generic term.”
- The Disputed Domain Names have not been registered and are not being used in bad faith because “[t]he domain names in this case were selected by the Respondent on the basis that the geographical location Monte Carlo is connected in the minds of the public with gambling”; and “[t]he use of the word ‘casino' together with the words ‘Monte Carlo' did not in the mind of the Respondent and does not in the minds of the public generally create an association with the specific business interests of the Complainant.” 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) the Disputed Domain Names have been registered and are being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registration cited by Complainant, which Respondent does not contest, it appears that Complainant has rights in the CASINO DE MONTE-CARLO Trademark.
As to whether the Disputed Domain Names are identical or confusingly similar to the CASINO DE MONTE-CARLO Trademark, the relevant comparison to be made is with the second-level portion of each of the Disputed Domain Names only (i.e., “clubmontecarlocasino”), as it is well-established that the top-level domain name (i.e., “.com” and “.net”) should be disregarded for this purpose. See, e.g., The Forward Association, Inc., v. Enterprises Unlimited, NAF Case No. 0095491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address”); see also United States Patent and Trademark Office's Trademark Manual of Examination Procedures (3d ed.) § 1215.02 (“neither the beginning of the URL (‘http://www.') nor the TLD have any source-indicating significance”).
The Disputed Domain Names are not identical to a trademark in which Complainant has rights, as the second-level portion of each of the Disputed Domain Names contains the word “club”, is missing the word “de” and inverts the word “casino” with the name “Monte Carlo.” However, Complainant needs prove only that the Disputed Domain Names are “confusingly similar” to a mark in which Complainant has rights. This Panel agrees with a previous panel's decision also involving the CASINO DE MONTE-CARLO Trademark, regarding the domain names and :
“Both domain names incorporate the words “Casino” and “Monte Carlo”. These two nouns are the most distinctive parts of the domain names and the Complainant's trademarks. The combination of these words is distinctive for, and brings to mind the Complainant's business activities. Having inverted the order of these terms in the domain names at issue does not render them dissimilar (Société des Bains de Mer et du Cercle des Etrangers à Monaco v. LaPorte Holdings, LLC.,WIPO Case No. D2005-0526). Also the French preposition “de” has little distinguishing effect and even more the omission of it in the disputed domain names (see Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Domain Active Pty. Ltd.,WIPO Case No. D2005-0527). »Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Corril Holding N.V.,WIPO Case No. D2005-1342.
Furthermore, this Panel agrees with the same previous panel's finding that “[t]he addition of the term ‘grand' does not render the disputed domain name legally different from the Complainant's trademark. It is well established in UDRP precedent, that minor variations, such as adding short letter or number groups or even generic words to a trademark, are each insufficient in and of itself, when used in forming a domain name that results from modifying the trademark, to confer requisite and sufficient distinctiveness to that domain name to avoid user confusion.” See also MasterCard International v. Mastercard Mastercard,WIPO Case No. D2008-0696 (“adding of the term ‘club' is likely to enhance the confusion and to lead the customers to believe that the disputed domain name is effectively linked to or affiliated with or connected to the Complainant”).
Accordingly, the Disputed Domain Names are confusingly similar to the CASINO DE MONTE-CARLO Trademark, and the Panel is convinced that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant alleges that, inter alia, Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because Complainant has located no “possible” trademark registrations owned by Respondent in the United States of America or any European countries; Respondent has received no license from the Principaute de Monaco to operate a casino in Monaco; and Complainant has not authorized Respondent to use the CASINO DE MONTE-CARLO Trademark.
Under the Policy, “a complainant is required to make out an 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.” “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, paragraph 2.1.
Although Respondent asserts that it has rights or legitimate interests in respect of the Disputed Domain Names, it does not specifically address any of the elements of Policy paragraph 4(c), that is, (1) Respondent does not allege that it engaged in any use or preparation to use the Disputed Domain Names in connection with a bona fide offering of goods or services, only that it “the registrations have been obtained in the course of prudent business with the genuine intention of putting these domains into active use at appropriate times,” a use that is not necessarily bona fide in light of the CASINO DE MONTE-CARLO Trademark; (2) Respondent does not allege that it has been commonly known by the Disputed Domain Names, nor is there any evidence of same in the record; and (3) Respondent does not allege that it is making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the CASINO DE MONTE-CARLO Trademark; on the contrary, Respondent asserts that it is “in the business of online gambling services” and “the registrations have been obtained in the course of prudent business with the genuine intention of putting these domains into active use at appropriate times,” presumably a commercial endeavor.
Accordingly, the Panel is satisfied that Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy:
(i) circumstances indicating that the registrant has registered or the registrant has 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 registrant's documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant 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 registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location. Policy, paragraph 4(b).
In this case, Complainant appears to allege that bad faith exists pursuant to, at least, paragraph 4(b)(iv) of the Policy. As above, this Panel here agrees with a previous panel in a similar case brought by the same Complainant, Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Corril Holding N.V.,WIPO Case No. D2005-1342. In that case, as here, the disputed domain names were not being used in connection with active websites, yet the panel noted that “[s]uch use could start at Respondent's choice any day and would be clearly contrary to the Complainant's legal rights and legitimate interests” because “[a]ny attempt to actively use any of the two domain names at issue would inevitably lead to a likelihood of confusion to the source, sponsorship, affiliation, or endorsement of the registrant's website among Internet users who would inevitably be led to believe that such website would be owned by, controlled by, established by or in some way associated with the Complainant.”
Accordingly, the Panel is convinced that Complainant has proven the third element of the Policy. 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 and be transferred to Complainant.
Douglas M. Isenberg
Sole Panelist
Dated: December 10, 2008
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