WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Government of the Principality of Monaco v. Francisco Jose Portillo Guerrero Case No. D2009-1158 1. The Parties
Complainant is Government of the Principality of Monaco, represented by his Excellency, Mr. Jean-Paul Proust, Minister of State and by NONY, Paris, France.
Respondent is Francisco Jose Portillo Guerrero, Torre del Mar, Spain. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2009. That same day the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the Domain Name. On September 1, 2009, eNom transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On September 4, 2009 counsel for Complainant wrote the Center requesting that the remedy requested in the Complaint be changed from cancellation of the Domain Name to transfer of the Domain Name to Complainant. The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on September 7, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 27, 2009. On September 7, 2009 Respondent corresponded with the Center in Spanish. The Center responded that same day reminding Respondent that the language of the proceeding (as the circumstances currently dictated) was English, and the Center provided Respondent with information regarding the procedures that occur if the proceeding were to be suspended. In this regard the Center informed Respondent that any request to suspend the proceeding was to be made by Complainant, if it chose to do so.
The Center gave Complainant until September 9, 2009, to comment on the suspension issue Respondent raised. In a letter dated September 9, 2009, Complainant's counsel informed the Center that it did not want these proceedings suspended. The Center passed this information on to Respondent in a letter dated September 11, 2009, and confirmed that Respondent's last day to file a response remained September 27, 2009. In correspondence dated September 23, 2009, Respondent wrote: “The domain name may be transferred to the complainant. If you need some documentation to make the transfer please inform us about it.” The Center corresponded with Complainant regarding that correspondence, confirming the date for Respondent's Response unless the Complainant chose to suspend the proceedings.
The Center notified Respondent's default on September 28, 2009.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on October 2, 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
Complainant the Principality of Monaco is an independent sovereign state located on the edge of the Mediterranean Sea in the South of France approximately 20 km east of Nice. The Principality of Monaco is comprised of one municipality, Monaco, which consists of several cities (e.g., Monte-Carlo). Monaco is a state and town open to the world in which approximately 125 nationalities are represented. Monaco has become famous worldwide and synonymous with luxury and wealth. For example, it is known for its luxury goods and for sporting events such as Grand Prix of Monaco and the Formula One car race.
The State of Monaco owns several trademark registrations containing the term “Monaco” in several classes for jewelry, clocks, watches, cosmetics, perfumes, haute couture and leather goods, including: ABSOLUMENT MONACO (No MC 23697) – registered with the Monaco Trademark Office on May 27, 2003 and ABSOLUMENT MONACO (International Trademark No 810 865) – registered with WIPO since September 18, 2003. It also owns marks in different languages for “La Principauté de Monaco” for leather, haute couture, tobacco, advertisements, telecommunications and entertainment, including: PRINCIPADO DE MONACO (No MC 24104) registered with the Monaco Trademark Office on June 22, 2004, PRINCIPALITY OF MONACO (No MC 24105) – registered with the Monaco Trademark Office on June 22, 2004, and PRINCIPATO DI MONACO (No MC 24106) – registered with the Monaco Trademark Office on June 22, 2004. Collectively these Marks will be referred to as the MONACO Marks herein.
Complainant also owns several domain names, including: (registered June 26, 2006); and (registered August 29, 2007).
Respondent registered the Domain Name on February 18, 2008. The Domain Name resolves to a website that offers a variety of links to advertisements for goods and services which appears to generate revenue for Respondent.
Before filing this proceeding, Complainant sent cease and desist letters to Respondent requesting him to cancel the Domain Name and to undertake not to use it in any form. Respondent did not respond to those letters or cancel the Domain Name. 5. Parties' Contentions A. Complainant
The Panel summarizes Complainant's contentions as follows:
Complainant alleges that it has rights in the Monaco Marks (e.g., by virtue of its registrations) and has developed a distinctive reputation and image for the name Monaco that has come to mean luxury and is synonymous with products of high quality, such as jewelry, clocks, watches, cosmetics, perfumes, haute couture and leather goods. The Domain Name is identical to Complainant's registered mark PRINCIPADO DE MONACO notwithstanding the gTLD suffix “.com” or the lack of spaces between the words in the Domain Name. The Domain Name is at least strongly confusingly similar to the MONACO Marks.
Complainant further alleges that Respondent has not rights or legitimate interests in the Domain Name. The Domain Name uses the entirety of its registered PRINCIPADO DE MONACO mark and distinctive State name – Monaco. Respondent resides in Spain and has no geographical link to Monaco. There is no relationship between Respondent and Complainant. Respondent does not have any independent rights in “Monaco” or “Principality” and Complainant has not licensed or authorized Respondent to use the MONACO Marks. Respondent's website that is linked to the Domain Name is not sponsored by Complainant. Respondent has not registered either or both of the words “Monaco” or “Principauté” in Spain or in any European countries. Respondent's website could tarnish the reputation of the MONACO Marks and mislead the public regarding the origin of the goods and services offered on the website (using the Domain Name ) which do not come from Monaco. Respondent's infringing use cannot be a bona fide use.
Complainant asserts that Respondent registered and is using the Domain Name in bad faith. Respondent had to have been aware of Complainants' State name and distinctive reputation when it registered the Domain Name. The choice was not purely coincidental. By registering a Domain Name that is identical, or at least confusingly similar, to the MONACO Marks, without a legitimate reason for doing so, it is more probable than not that Respondent intended to cause confusion with Complainant's State name and registered marks. Respondent's intent is also supported by the fact that Respondent has no geographical link with La Principauté de Monaco, he is not authorized by Complainant to use the MONACO Marks and he is not authorized to do business in Monaco. When Internet users visit Respondent's website they will think there is a link between Respondent and Complainant and, thus, a misleading link with who is offering the goods/services on Respondent's website.
Complainant asserts that Respondent is using the Domain Name for commercial gain. That is, by selling the Domain Name on the SEDO website this confirms that Respondent is not using the Domain Name for an active website but rather to attract buyers for the Domain Name. Moreover, Respondent has not registered the Domain Name for a bona fide offering of goods/services but to obtain pay-per-click revenue by way of advertising links on the website. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Considering Complainant's amended Complaint with its request to have the Domain Name transferred to it from Respondent, and Respondent's willingness to transfer the Domain Name to Complainant, as per Respondent's communications with the Center, the Panel concludes that no further elaboration is necessary and the Domain Name should be transferred to Complainant. AIDA Cruises German Branch of Società di Crociere Mercurio S.r.L v. Demand Domains, fnc.,WIPO Case No. D2009-1006; Wilmer Cutler Pickering Hale and Dorr LLP v. Texas International Property Associates - NA NA,WIPO Case No. D2008-1451 (“[T]his Panel considers that a genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements.”); Williams-Sonoma, Inc. v. EZ-Port,WIPO Case No. D2000-0207 (“Because Respondent has consented to the relief requested by Complainant, it is not necessary to review the facts supporting the claim.”). 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.
Harrie R. Samaras
Sole Panelist
Dated: October 7, 2009
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