Complainant is Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco of Monaco, represented by De Gaulle Fleurance & Associés, France.
Respondent is Traffic Label Limited of St. Albans, United Kingdom of Great Britain and Northern Ireland. (“United Kingdom”) 2. The Domain Name and Registrar
The disputed domain names , , , , , , , , , , , , , are registered with GoD, LLC. The disputed domain name is registered with Wild West Domains, LLC. (the “Registrars”) 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2013. On the same date, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On January 14, 2013, the Registrars transmitted by email to the Center their verification responses 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 Respondent of the Complaint, and the proceedings commenced on January 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 13, 2013. Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on February 14, 2013.
The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on March 1, 2013. 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 owner of the word mark CASINO DE MONACO which was registered on September 30, 2002 under No. 02.23234 with the Monaco Trademark Office and also holds the word mark CASINO DE MONTE-CARLO, filed on August 13, 1996, and renewed on October 10, 2006, with the same Trademark Office.
Since April 2, 1863, the Complainant has been granted by the Prince of Monaco a monopoly for casino and gambling activities for the territory of the Principality of Monaco, which was last renewed by “Ordonnance Souveraine” No. 15.732 of March 13, 2003.
The disputed domain names , , , , , , , , were registered in December 2005; and in March 2006, in August 2006; in May 2007, in June 2008 and in March 2011. 5. Parties’ Contentions A. Complainant
The Complainant contends the following:
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 names “Monaco” and “Monte Carlo” are used interchangeably by the public.
All the disputed domain names are identical or confusingly similar to Complainant’s previous marks.
Respondent holds no intellectual property rights over any mark that contains the terms “Monte-Carlo” or “Monaco”.
Respondent is domiciled in United Kingdom, that is to say that it has no geographical link with the Principality of Monaco, where the Complainant and its casinos are located.
Complainant has never authorized Respondent to use its 150 years old famous marks CASINO DE MONTE-CARLO and CASINO DE MONACO, nor to register and use the disputed domain names containing such marks, and Complainant does not have any type of business relationship with Respondent.
The notoriety of Complainant’s trademarks which are used since 1863 for gambling and casino attest that Respondent could not ignore that the registration and use of the disputed domain names would violate Complainant’s rights especially when some Respondent’s websites include hypertext links redirecting to online gambling websites.
Respondent has no rights or legitimate interests in respect of the disputed domain names, which were registered and are being used by Respondent in bad faith.
Finally, Complainant requests the Panel that the disputed domain names be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
For the Complainant to succeed in this proceeding, under paragraph 4(a) of the Policy, it must prove that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) the 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.
In accordance with paragraph 15 (a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, Rules, Supplemental Rules and any principles of law that it deems applicable. A. Identical or Confusingly Similar
Complainant owns registrations for the word marks CASINO DE MONACO and CASINO DE MONTE CARLO, as noted under Section 4 Factual Background above.
One of the disputed domain names, and the word mark CASINO DE MONTE CARLO, include the almost identical words “montecarlo” and “monte-carlo” which in the Panel’s view is sufficient to cause confusion among Internet users. The generic word “online” falls short of providing any meaningful differentiation between the disputed domain name and the Complainant’s mark, particularly when the domain name is used for a website which provides casino and gambling information through the Internet. In all probability, users will be lead to believe that the information is provided by Complainant’s world famous casino in Monaco.
The other disputed domain names, with only one exception, include de words “casino” and “monaco” which in the Panel’s view is sufficient to cause confusion with Complainant’s CASINO DE MONACO word mark. In effect, the inclusion of the generic terms “grand”, “club”, “online” or “review” in the disputed domain names or having inverted the order of nouns in the mark in the disputed domain names is not sufficient to avoid confusion by Internet users.
As to the disputed domain name , if the Panel were to apply the usual criteria used by the courts in trademark infringement or trademark opposition proceedings, it may have reached a different conclusion to the conclusion of confusing similarity reached in connection with the other disputed domain names.
However, as said by the panel in Cheezburger, Inc. v WeKnowMemes (c/o Dynadot Privacy),WIPO Case No. D2012-2452, “Policy claims are not based on proof of trademark infringement, and the kinds of evidence necessary to establish confusing similarity in trademark litigation…UDRP panels typically apply a “low threshold” test for confusing similarity under the first element of a Policy complaint, essentially to establish the complainant’s standing to proceed to the merits of the case under the other elements of the UDRP complaint, rights or legitimate interests and bad faith. See, e.g. Research in Motion Limited v One Star Global LLC,WIPO Case No. D2009-0227; Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647. WIPO Overview 2.0 paragraph2.2. This is normally tested by comparing the mark and the disputed domain name in appearance, sound, meaning and overall impression.”
As in the above quoted case, the Panel in this case also considers it a close question whether the disputed domain name should be considered confusingly similar to Complainant’s mark CASINO DE MONACO for UDRP purposes. Having said that, it would appear that the term “monaco” is the main distinctive feature both in the mark and the disputed domain name. It may further be said that the generic term “grand” is commonly used with casino names (see Société des Bains de Mer et du Cercle des Etrangers á Monaco v. Corril Holding N.V.,WIPO Case No. D2005-1342) and the term “Deutsches” simply seems to refer to the German public. The Casino de Monaco is a famous place, visited by many Germans, therefore, the inclusion of a reference to Germans does not confer sufficient distinctiveness to the disputed domain name to avoid the overall impression of possible Internet user confusion.
Hence, the Panel considers that Complainant has succeeded on this first element under the Policy. B. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the second element that the Complainant must prove is that Respondent has no rights or legitimate interests in respect of the disputed domain names. The Policy in paragraph 4(a) sets out various ways in which respondent may demonstrate rights or legitimate interests in a domain name.
Although the Policy states that the complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e., that a respondent has no rights or legitimate interest in respect of a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a prima facie showing of a respondent’s lack of rights or legitimate interests in a domain name, the burden of submitting evidence therefore shifts to the respondent. The respondent must then by concrete evidence demonstrate its rights or legitimate interests in the domain name in order to refute the prima facie case.
The Panel finds that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names and so the burden of production has effectively shifted to Respondent, who did not reply to the Complainant’s contentions and, therefore, has not made such showing.
In that connection, Complainant has submitted relevant evidence showing that Respondent has not made a bona fide offering of goods or services, as will be exposed in the next section dealing with registration and use in bad faith.
In a similar matter, the WIPO UDRP Panel stated that “in the absence of any kind of license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent.” (see Guerlain S.A. v Peikang,WIPO Case No. D2000-0055).
For these reasons, and in the absence of a plausible explanation from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the third element that a complainant must prove is that the domain name was registered and is being used in bad faith.
Complainant has identified itself as a Monegasque company with 70% of its share capital owned by the Government of the Principality of Monaco, which since April 2, 1863 has been granted by the Prince of Monaco a monopoly for casino and gambling activities for the territory of the Principality of Monaco.
Moreover, Complainant is the owner of the word marks CASINO DE MONACO which was registered on September 30, 2002 and CASINO DE MONTECARLO filed on August 13, 1996 and renewed on October 10, 2006. Both marks were registered with the Monaco Trademark Office.
Furthermore, Complainant claims that its famous trademarks are used since 1863 for gambling and casino games and now also for online games especially via a license granted to BetClick Everest which runs the website “”.
All the disputed domain names were registered well after Complainant having acquired trademark rights.
Complainant has alleged (i) that through the disputed domain names , and , Respondent exploits online casinos that offer different kind of gambling games; (ii) that through the disputed domain names and , Respondent offers websites which provide information about Complainant’s well known casino in Monaco but which also refer to hypertext link which redirect the Internet users to other online websites and (iii) that through the disputed domain names , , , , >, , and , Internet users are directed to link parking page websites including links to online gambling websites.
Complainant has provided evidence to show that Respondent through the disputed domain names , and exploits online casinos that offer different kind of gambling games by referring to several online gambling websites which are directly competing with Complainant’s activities and also that Respondent through the disputed domain names and offers websites which seem to provide information about the Complainant’s famous casino in Monaco but which actually refer to a hypertext link which redirects Internet users to other online gambling websites.
Also, Complainant has submitted evidence which shows that through the disputed domain names , , , , , , , , and , Internet users are directed to link farm parking page websites provided by GoD, Inc. The links farm parking pages include a fair amount of links to online gambling websites.
It is almost unthinkable that Respondent, who is involved in the gambling business, could have selected and registered the disputed domain names by mere coincidence, without knowing of the existence of the Complainant’s world famous “Casino de Monte Carlo” (also referred to by the public as the “Casino de Monaco”) and Complainant’s above mentioned well known trademarks, which evidences bad faith registration.
The Panel agrees with Complainant that while the farm parking pages , , , , , , , , and are not currently active, it is obvious that they are intended to have the same kind of content than the active disputed domain names owned by Respondent which mention the activities of the Complainant and are also confusingly similar to Complainant’s trademarks.
As stated in WIPO Overview 2.0 section 3.2 “…the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent the finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith...Panels may draw inferences about whether a domain name was used in bad faith given the circumstances regarding registration and vice versa”.
In view of the circumstances of this case, particularly the fact that Complainant’s trademarks and activity are well known, the assertions made and the evidence produced by Complainant and the lack of any response by the Respondent, the Panel has no difficulty in concluding that the Respondent is acting in bad faith.
Furthermore, as stated by the Complainant and on the basis of the printouts of the websites to which the disputed domain names resolve, and in the absence of a rebuttal by Respondent, the Panel finds that by using the disputed domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites or other online locations, by creating a likelihood of confusion with Complainant’s trademarks as to source, sponsorship, affiliation or endorsement of the Respondent’s websites.
For these reasons, the Panel finds that Respondent both registered and is using the disputed domain names in bad faith and that Complainant has therefore succeeded in making out the third element of the case. 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 names
be transferred to the Complainant.
Miguel B. O'Farrell
Sole Panelist
Date: March 10, 2013
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