The Complainant is Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco of Monaco, represented by De Gaulle Fleurance & Associés, France.
The Respondent is Domain Management of Closter, New Jersey, United States of America (“USA”). 2. The Domain Name and Registrar
The disputed domain name is registered with N LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2012. On July 10, 2012, the Center transmitted by email to N LLC a request for registrar verification in connection with the disputed domain name. On July 10 and 16, 2012, N 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” 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 July 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 5, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2012.
The Center appointed Cherise Valles as the sole panelist in this matter on August 21, 2012. 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.
To the best of the Complainant’s knowledge, the language of the Registration Agreement is in English, a copy of which is provided as Annex B to the Complaint. The Complaint has been submitted in English pursuant to the Registration Agreement. 4. Factual Background
The Complainant has registered rights in the MONTE CARLO SBM HOTELS CASINOS trademark. Approximately 70 per cent of SBM’s share capital is owned by the Government of the Principauté de Monaco. The Complainant is the founder and manager of the Casino de Monte Carlo in Monaco. Since April 2, 1863, SBM has been granted by the Prince of Monaco a monopoly for casino and gambling activities for the territory of the Principauté de Monaco and is therefore the sole company that can organize games and gambling in Monaco.
The Complainant has been operating the Casino de Monte-Carlo in Monaco for more than 145 years at the date of this Complaint. The casino has become famous worldwide as one of the most luxurious gambling facilities in the world. It has been featured in numerous motion pictures, magazines and TV shows. It attracts a clientele that come from numerous European and non-European countries.
The Complainant is the owner of seven Monegasque trademarks for MONTE CARLO SBM HOTELS CASINOS, which were filed on July 22, 2008. The Complainant owns five domain names that comprise the words “sbm monte-carlo” or ”monte-carlo sbm” in their whole:
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The disputed domain name was registered on September 11, 2011. 5. Parties’ Contentions A. Complainant
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, in its Complaint filed on July 10, 2012, the Complainant asserts that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The disputed domain name is confusingly similar or identical to the Complainant’s registered trademarks, and the “Monte Carlo SBM” name, in light of the fact that it wholly incorporates the Complainant’s marks. The disputed domain name differs from the Complainant’s trademarks only with respect to the absence of the terms “hotels” and “casinos” in the disputed domain name. These differences are of no consequence. Indeed, the fact that the disputed domain name incorporates the Complainant’s trademarks MONTE CARLO SBM is sufficient to establish that the disputed domain name is confusingly similar to the Complainant’s registered trademarks.
- The Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.
- The disputed domain name has been registered and is being used in bad faith.
The Complainant asserts that the disputed domain name was registered in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.
The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (the complainant) establishes each of the following elements:
(a) the disputed domain name(s) is(are) identical or confusingly similar to a trademark in which the Complainant has rights;
(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name(s); and
(c) the disputed domain name(s) was/were registered and is/are being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent has failed to file a formal Response in these proceedings and is therefore in default and the
Panel may draw appropriate inferences therefrom. A. Identical or Confusingly Similar
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.
The Complainant has submitted evidence in Annex E to the Complaint that it is the owner of seven Monegasque trademark registrations for monte carlo sbm hotels casinos, filed on July 22, 2008. The Complainant has submitted evidence in Annex F to the Complaint that it is the owner of five domain names “.com” that include “SBM MONTE-CARLO” or ”monte-carlo sbm” in their entirety.
The terms “Monte Carlo SBM” are the dominant elements in the Complainant’s trademarks and in the disputed domain name. Previous UDRP panels have accepted that “[g]enerally, a user of a mark ‘may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or nondistinctive matter to it.’” J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23: 50 (4th ed. 1998) cited in Pfizer Inc. v. United Pharmacy Ltd.,WIPO Case No. D2001 0446. See also Telstra Corporation v. Barry Cheng Kwok Chu,WIPO Case No. D2000-0423. The addition of the generic terms HOTEL and CASINO are merely descriptive in the Complainant’s trademarks and does not prevent the disputed domain name from being confusingly similar to the Complainant’s trademarks.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks and that paragraph 4(a)(i) of the Policy satisfied. B. Rights or Legitimate Interests
The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy enumerates three, nonexclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 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 Respondent did not submit a formal Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel may draw adverse inferences from this failure, where appropriate.
As demonstrated in Annex G to the Complaint, the Complainant has searched in the SAEGIS private trademarks database for possible trademark registrations or applications by the Respondent. The search revealed that the Respondent does not have any intellectual property rights in any mark that contains the terms “Monte-Carlo” or “SBM”. In addition, the Respondent is domiciled in the USA and thus has no geographical link with the Principauté de Monaco where the Complainant is located.
The Respondent is not, and has never been, a representative or licensee of the Complainant, nor is the Respondent otherwise authorized to use the Complainant’s MONTE-CARLO SBM trademarks. The Complainant has demonstrated in Annex A to the Complaint that the Respondent is not making a bona fide use of the disputed domain name insofar as through the disputed domain name, it does not offer goods and services but it only references commercial links in connection with various areas in order to make a profit from the Complainant.
Accordingly, the Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(i) of the Policy is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(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;
(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 its 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 its website or location.
The Complainant submits that the Respondent registered and has used, and is continuing to use, the disputed domain name in bad faith.
The Complainant’s trademarks MONTE-CARLO SBM HOTELS CASINOS and the Complainant’s domain name had already been registered and used for many years by the time of the registration of the disputed domain name on September 11, 2011. It is not conceivable that the Respondent did not know the Complainant’s trademarks and domain names when registering the disputed domain name. The strong notoriety and world renown of the Complainant’s trademarks in connection with various casino games, as presented in Annex I to the Complaint, attest that the Respondent could not ignore that the registration and use of the disputed domain name would contravene the Complainant’s rights. Furthermore, considering that the disputed domain name is almost identical to the Complainant’s domain name , it is obvious to the Panel that the Respondent registered the disputed domain name in order to create a likelihood of confusion with the Complainant’s trademarks and thus to profit from its reputation. An earlier UDRP panel decision (PepsiCo, Inc. v. Paul J. Swider,WIPO Case No. D2002-0561) held that the registration, without authorization of a domain name that is identical to a complainant’s famous mark is evidence of bad faith, and that the knowledge of marks at the time of registration of the domain name suggests bad faith.
According to paragraph 4(b)(iv) of the Policy, it shall be evidence of bad faith registration and use if by using the domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s trademarks. The fact that the Respondent must have had knowledge of the Complainant’s trademarks when acquiring and using the disputed domain name shows that the Respondent was seeking to take advantage of the fact that Internet users looking for information about the Complainant’s resort, “Monte-Carlo SBM”, would be led to the Respondent’s website. A domain name that incorporates a well-known trademark which is used to direct visitors to unconnected websites and/or competitor websites – as is the case here – has been held to constitute bad faith use of the domain name. See International Business Publishers, Inc. v. The Center for Business Intelligence, LLC,WIPO Case No. D2001-0181; Lifetime Products, Inc. v. IQ Management Corporation,WIPO Case No. D2004-0719.
When the Complainant discovered that the disputed domain name had been registered, it sent the Complainant a cease and desist letter on November 21, 2011. The Respondent’s replied with an offer to sell the disputed domain name for EUR 800. The Respondent’s refusal to transfer the disputed domain name to the Complainant without significant financial compensation, as well as failure to provide any evidence whatsoever of any actual or contemplated good faith use of the disputed domain name is evident of bad faith registration and use. The fact that the Respondent tried to sell the disputed domain name to the Complainant shows that his primary purpose was to gain a financial advantage out of the domain name registration. Moreover, the Respondent appears to have been involved in many domain name disputes, in which the panel ordered that the disputed domain names be transferred to the complainants: The Body Shop International PLC v. CPIC NET and Syed Hussain; WIPO Case No. D2000-1214; Red Hat, Inc. v. Syed Hussain, d/b/a CPIC Net and MIC., WIPO Case No.D2000-1442; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; Telstra Corporation Limited v. MIC and Syed Hussain, WIPO Case No. D2002-0126; Compagnie Gervais Danone v. Domain Management, Syed Hussain, WIPO Case No. D2008-1239; Fellowes, Inc. v. fellowesservices;WIPO Case No. D2010-0294; AREVA v. MIC / Hussain, Syed,WIPO Case No. D2010-1098; Barclays Bank PLC v. Company Domain Management (Syed Hussain)/ Domain Privacy Group Inc., WIPO Case No.. D2010-2151; Merck Sharp & Dohme Corp. v. Company Domain Management, Syed Hussain/ Domain Privacy Group, Inc. c/o , WIPO Case No. D2011-0141 and Deutsche Telekom AG v. Domain Management, WIPO Case No. D2011-0924.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Cherise Valles
Sole Panelist
Dated: September 20, 2012
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