WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION La Société des Bains de Mer et du cercle des étrangers à Monaco v. Around pacific Case No. D2008-1616 1. The Parties
Complainant is La Société des Bains de Mer et du cercle des étrangers à Monaco, of Monaco, represented by De Gaulle Fleurance & Associés, France.
Respondent is Around pacific, Australia. 2. The Domain Name and Registrar
The disputed domain name, is registered with GoD, Inc. (“GoDaddy”) 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on October 22, 2008. On October 24, 2008, the Center transmitted by email to GoDaddy a request for registrar verification in connection with the disputed domain name. On October 24, 2008, GoDaddy transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant, providing contact details, and confirming other details of the registration agreement. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 30, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 19, 2008. The Response was filed with the Center on November 18, 2008.
The Center appointed Debra J. Stanek as the sole panelist in this matter on November 27, 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
Pursuant to an authorization from the government of Monaco in 1863, Complainant was granted a monopoly with respect to casinos and gambling within Monaco. Since that time, it has operated a casino and gambling business in Monaco.
Complainant owns Monaco registrations for its trademarks, CASINO DE MONTE CARLO and CASINO DE MONACO. It also uses the domain name for its casino and gambling business, as well as for the resort business that it also operates.
Respondent registered the disputed domain name on January 15, 2006. The domain name currently resolves to a GoDaddy parking page offering a variety of links to gambling related websites. 5. Parties' Contentions A. Complainant (1) The domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights
Complainant is the founder and manager of the Casino de Monte Carlo in Monaco, which it has operated for more than 140 years. The Casino de Monte Carlo has become famous worldwide and is one of the most recognized symbols of the Principality of Monaco. It attracts a clientele from numerous countries.
Since April 2, 1863, Complainant has been granted by the authorities of the Principality of Monaco a monopoly for casino and gambling industries within the territory of Monaco, and is therefore the sole company that can organize games and gambling in Monaco.
Complainant owns the following word marks:
CASINO DE MONACO, which was registered on September 30, 2002, with the Monaco Trademark Office.
CASINO DE MONTE-CARLO, filed on August 13, 1996, and renewed on October 10, 2006, with the Monaco Trademark Office.
The CASINO DE MONTE-CARLO mark is one of the most ancient, exclusive and legendary casino trademarks in the world.
Although the name of Complainant's famous casino is “Casino de Monte Carlo,” it is also referred to by the public as the “Casino de Monaco” as both geographical names -- Monte Carlo is a district of the city and Principality of Monaco -- are used interchangeably by the public.
Other UDRP Panelists have concluded that domain names including the words “Monaco” and “casino” are confusingly similar with the trademark CASINO DE MONTE-CARLO, because Monte Carlo is commonly associated with the state of Monaco.
The disputed domain is confusingly similar to Complainant's trademarks as the term “casino-monaco-gold” incorporates both nouns, “casino” and “Monaco”, of Complainant's trademarks. The deletion of the term “de”, which means “of” in English, is not sufficient to avoid confusion. The addition of the generic word “gold” does not make the disputed domain name legally different from Complainant's trademarks.
Moreover, the term “gold” is commonly associated with wealth and luck much in the same way as casinos may be associated with those things. Casino businesses are also associated with wealth because of their prestigious and luxurious interiors. Also, several casinos use the term “gold” in their name. This association of the term “gold” with the casino business causes the addition of the term “gold” to the registered trademark of Complainant to create a likelihood of confusion between the disputed domain name and Complainant's registered trademark. (2) Respondent has no rights or legitimate interests in respect of the domain name
Complainant has searched trademark databases for possible trademark registrations or applications by Respondent. It seems that no trademarks including the words “casino” and “Monaco” have been registered by Respondent in the United States of America or in any European countries. To the best of Complainant's knowledge, Respondent holds no intellectual property rights over any mark that contains the terms “casino” or “Monaco”.
In addition, Respondent is domiciled in Australia and has no geographical link with the Principality of Monaco.
Respondent has not received any license or authorization from the authorities of the Principality of Monaco to operate a casino in Monaco.
Complainant never authorized Respondent to use its CASINO DE MONTE CARLO mark or to register and use the disputed domain name. Complainant does not have any type of business relationship with Respondent.
Respondent cannot claim that it has made a bona fide use of the disputed domain name. (3) The disputed domain name was registered and is being used in bad faith.
The notoriety and world renown of Complainant's trademarks is such that Respondent must have known that the registration and use of the disputed domain name would violate Complainant's trademark rights.
Moreover, Complainant has a strong policy of protection for its famous marks. Respondent, who seems to be active in the Internet business, should have reasonably been aware of Complainant and its policy of protecting and enforcing its intellectual property rights.
It is impossible that Respondent's choice to register the disputed domain name was purely coincidental. These marks are well-known, especially in the field of casinos and gambling, and Respondent deliberately decided to register a domain name composed of the words, “casino” and “Monaco”, that are similar to Complainant's marks. Such a choice is clearly proof of bad faith registration.
Creating such strong likelihood of confusion between Complainant's casino and Respondent's domain name is a clear example of bad faith not only during the registration process of the disputed domain name but also in the use of the disputed domain name.
The Policy, paragraph 4(b)(iv) provides that the disputed domain name shall be considered as registered and used in bad faith when Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with Complainant's mark.
Through the disputed domain name, Respondent exploits a portal website that offers different links to commercial websites. Some of these links redirect the user to websites that are related to casinos or hotels, which offer services that directly compete with Complainant's main field of activity.
Respondent is using Complainant's trademark and renown to attract Internet users to visit Internet directories that are linked to casino websites. This conduct results in commercial gain for the owner of such portal website, as many websites remunerate Respondent for each click-through giving access to their site. B. Respondent
Respondent contends that the disputed domain name consists of three common words: casino (meaning a gambling place), Monaco (referring to a nation or the name of a location), and gold (referring to a metal, but sometimes meaning luckiness, wealth, etc).
None of the words in the mark is identical or confusingly similar to Complainant's CASINO DE MONTE-CARLO mark.
In another reported decision, it was important that the trademark at issue belonged uniquely to the trademark owner. The disputed domain name does not contain a comparable unique term. 6. Discussion and Findings
In order to prevail, Complainant must prove, as to the disputed domain name, that:
(i) It is identical or confusingly similar to a mark in which Complainant has rights.
(ii) Respondent has no rights or legitimate interests in respect to it.
(iii) It has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent's rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent's bad faith registration and use, see Policy, paragraph 4(b). A. Identical or Confusingly Similar
Complainant has established its rights in the CASINO DE MONACO and CASINO DE MONTE-CARLO marks by virtue of the evidence of its Monaco trademark registrations and its evidence of use of the mark.
The disputed domain name is not identical to Complainant's mark. As a general matter, a domain name is likely to be deemed confusingly similar to a mark if it incorporates the mark or a variation of the mark.
Here, the first portion of the disputed domain name incorporates a very slight variation of Complainant's CASINO DE MONACO mark by deleting the word “de” (which is French for “of”) and adding hyphens. The Panel finds that the deletion of “de” and use of hyphens (along with the top-level domain “.com”) are not significant. The addition of the term “gold” at the end of what amounts to a slight variation of Complainant's mark does result in some difference in appearance and pronunciation. However, Respondent concedes that “gold” has a connotation of luck and wealth that is relevant to casino and gambling activities. Thus, while the inclusion of that term does differentiate the disputed domain name from Complainant's mark somewhat, the differences are slight and do not offset the similarity between Complainant's CASINO DE MONACO mark and the “casino-monaco” portion of the disputed domain name, which the Panel views as the dominant feature of the disputed domain name.
The Panel does not view the fact that the disputed domain name (or Complainant's mark) is made up of common words as relevant to its analysis under this element in connection with the comparison to Complainant's mark. That fact may be relevant in determining whether or not a respondent has rights or legitimate interests in a particular domain name or whether or not a respondent has registered and is using it in bad faith. See, e.g., Overview of WIPO Panel Views on Selected UDRP Questions, Question 1.2 (generally, test for confusing similarity compares the trademark and the domain name), Question 1.5 (noting that a complainant may show that it has rights in a geographic term by providing evidence of its registration of the term as a trademark), and Question 2.2 (considering whether a respondent automatically has a legitimate interest in a domain name comprised of ordinary words).
Accordingly, the Panel finds that Respondent's domain name is confusingly similar to a mark in which Complainant has rights. B. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that complainant may establish that Respondent has no rights or legitimate interests in respect of the domain name by making a prima facie showing that respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes prima facie case, respondent has burden of showing rights or legitimate interests in the domain name).
Paragraph 4(c) of the Policy sets out the following examples:
(i) before any notice to you 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 (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 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.
The Panel finds that Complainant has made a prima facie showing as to this element.
It does not appear that Respondent engaged in – or could under the circumstances have engaged in – any legitimate use of the disputed domain name. There is no reason to believe, WhoIs record or otherwise, that Respondent is or could be commonly known by the disputed domain name.
It does not appear that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. The site has currently been parked by GoDaddy and presumably generates click-through revenue. As a general matter, the Panel is of the view that such a use is not a bona fide offering and therefore finds that Complainant has also made a prima facie showing as to the example in paragraph 4(c)(i) of the Policy.
Respondent appears to contend that because its disputed domain name consists of the three common terms, “casino,” “Monaco,” and “gold”, rather than any coined term in which Complainant has an interest, that Complainant cannot prevail. However, under the circumstances presented here, including the fact that Complainant holds a monopoly on casinos in Monaco, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Complainant must establish that the disputed domain name was registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which can establish bad faith, see Policy, paragraph 4(b)(i)-(iv):
(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs, see Policy, paragraph 4(b)(i).
(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct, see Policy, paragraph 4(b)(ii).
(3) Registering the domain name primarily to disrupt the business of a competitor, see Policy, paragraph 4(b)(iii).
(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement, see Policy, paragraph 4(b)(iv).
Complainant's rights in its marks predate the registration and use of the disputed domain name. Those rights appear to be well-established in Monaco and elsewhere. The Panel believes that it is likely that the disputed domain name was registered with Complainant's marks in mind with the intent to trade off of the recognition of Complainant's marks.
Further, the Panel has already concluded that Respondent has no rights or legitimate interests in the disputed domain name and that the use of the disputed domain name was not in connection with a bona fide offering of goods or services.
Whether Respondent realizes a commercial gain from these activities is not entirely clear but seems likely. In any case, the circumstances set out in paragraph 4(b) of the Policy are not exhaustive. Under these circumstances, the Panel finds that Complainant has established that Respondent has registered and used the disputed domain name 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 Complainant.
Debra J. Stanek
Sole Panelist
Dated: December 11, 2008
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