WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Private Whois Escrow Domains Private Limited / Pluto Domain Services Private Limited Case No. D2008-1909 1. The Parties
The Complainant is Société des Bains de Mer et du Cercle des Etrangers à Monaco of Monte Carlo, Monaco, represented by De Gaulle Fleurance & Associés, France.
The Respondent is Private Whois Escrow Domains Private Limited / Pluto Domain Services Private Limited of Andheri (West) Mumbai, Maharashtra, India / Jogeshwari (W), Mumbai, Maharashtra, India respectively. 2. The Domain Name and Registrar
The disputed domain name is registered with Lead Networks Domains Pvt. Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2008. On December 17, 2008, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the disputed domain name. On December 19, 2008, Lead Networks Domains Pvt. Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 19, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 22, 2008. The Center verified that the Complaint together with the amended 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 December 24, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 13, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 14, 2009.
The Center appointed Knud Wallberg as the sole panelist in this matter on January 21, 2009. 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 is the founder and manager of the Casino de Monte-Carlo in Monaco and has been operating Casino de Monte-Carlo in Monaco for more than 140 years. Since April 2, 1863, the Complainant has been granted by the authorities of Monaco a monopoly for casino and gambling industries for the territory of Principauté de Monaco and is the sole company that can organize games and gambling in Monaco.
The Complainant holds a national trademark registration of the mark CASINO DE MONTE-CARLO, which was registered on August 13, 1996 and later renewed. The Complainant further holds international registrations of the same mark registered in 2002 as well as international registrations of the mark CASINO DE MONACO. These international trademarks have been designated and are registered in a number of countries.
The disputed domain name was registered on May 31, 2002. 5. Parties' Contentions A. Complainant
The Complainant alleges that the domain name is confusingly similar to the trademark CASINO DE MONTE-CARLO. The fact that the order of the nouns in the mark has been inverted does not render the domain name dissimilar. Nor does the inversion of the letters “o” and “n” render the disputed domain name legally different from the Complainant's trademark as stated in previous decisions under the UDRP involving the Complainant.
The Complainant further alleges that the Respondent has no rights or legitimate interest in respect of the domain name. To the best of the Complainant's knowledge, the Respondent holds no intellectual property right over any trademark that contains the terms “casino” and “Monaco”. The Respondent has not received any license or authorizations from the authorities of Monaco to operate a casino in Monaco. The Complainant has never authorized Respondent to use its 140 year old famous mark CASINO DE MONTE-CARLO, nor to register or use the disputed domain name. The Complainant does not have any type of business relationship with the Respondent.
By using the domain name , the Respondent intentionally attempts to attract, for commercial gain, Internet users to websites containing a series of links to other commercial websites. The Respondent is creating a likelihood of confusion by using a domain name that is confusingly similar to the Complainant's trademark to drive traffic to their site to generate ad revenue, which is typically paid on a per-click basis. Moreover, the fact that the Respondent has tried to conceal its identity under lines the claim that it has acted in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules the panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) that the Respondent has no rights or legitimate interests in respects of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. A. Identical or Confusingly Similar
The Complainant has established trademark rights in the term
CASINO DE MONTE-CARLO. This trademark is not identical with the domain name at issue, but the Panel finds that the Complainant's trademark is confusingly similar with the disputed domain name for the following reasons:
The domain name incorporates the words “Casino” and “Monte Carlo”. These two words are the most distinctive parts of the domain name and of the Complainant's trademark. Furthermore, 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 name at issue does not render them dissimilar (See inter alia Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Corril Holding N.V., WIPO Case No. D2005-1342). The inversion of the last two letters “o” and “n” does not alter this assessment, as has been stated in several previous decisions under the UDRP such as Volvo Trademark Holding AB v. Unasi Inc., WIPO Case No. D2005-0556.
In conclusion, the Panel finds that the Complainant has proved that the condition under the Rules, paragraph 4(a)(i) is fulfilled. B. Rights or Legitimate Interests
According to the Complaint, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the mark.
Further, the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the domain name. The Respondent has not rebutted this and the way the Respondent has been using and is still using the contested domain name (see below) does not support any findings of possible rights or legitimate interests.
Consequently the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy, with reference to paragraph 4(c) of the Policy, are also fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy further provides that the Complainant must prove the Respondent's registration and use of the domain names in bad faith. Paragraph 4(b) of the Policy sets out, by way of example, the kind of evidence that may be put forward.
The Complainant's trademark was registered and used well in advance of the date of registration of the disputed domain name. Given the fame of the Complainant's trademark, the geographically widespread use of the Complainant's trademark and the distinctive nature of the mark, it is inconceivable to the Panel in the circumstances that the Respondent registered the domain name without prior knowledge of the Complainant and the Complainant's mark.
This is underlined by the fact that the disputed domain name is used for a website that contains sponsored links to other sites that offer products or services that are similar to those offered by the Complainant but which are not related to those of the Complainant. The Panel therefore finds that the Respondent by registering and using the domain name, intentionally created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the domain name in dispute with the purpose of attracting Internet users to the website for commercial gain. Under these circumstances it is not necessary for the Panel to address the additional arguments presented by the Complainant in support of Respondent's bad faith.
Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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.
Knud Wallberg
Sole Panelist
Dated: February 10, 2009
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