The Complainant is La Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco, Principality of Monaco, Monaco, represented by De Gaulle Fleurance & Associés, France.
The Respondent is PrivacyP, Nobby Beach, Queensland, Australia / Monaco S.A., Panama City, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2013. On August 26, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 29, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint.1 The Center sent an email communication to the Complainant on September 2, 2013, 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 September 19, 2013.
The Center verified that the amended Complaint (referred to in this decision as 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 September 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 15, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 17, 2013.
The Center appointed Richard G. Lyon as the sole panelist in this matter on October 31, 2013. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his 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 a limited liability company registered with the Principality of Monaco that is owned approximately 70% by the Principality’s government. By government decree the Complainant has a monopoly on gambling and casino activities within the Principality. In this capacity it operates and since 1863 has operated the Casino de Monte-Carlo.
The Complainant holds trademarks duly registered in Monaco for CASINO DE MONTE-CARLO and CASINO DE MONACO. An exclusive third party licensee of the Complainant operates online gaming at . The Complainant owns domain name registrations for , and .
The Respondent registered the disputed domain name on March 19, 2013. The disputed domain name resolves to a page at which an Internet user may gamble online. 5. Parties’ Contentions A. Complainant
The Complainant contends as follows:
1. The disputed domain name is confusingly similar to the Complainant’s CASINO DE MONACO registered mark; it is also confusingly similar to CASINO DE MONTE-CARLO because “Monaco” and “Monte-Carlo” are used interchangeably to refer to the Complainant’s casino. The numerals “777” are commonly used to connote gambling activities. “7” is said to be a “lucky number” and three sevens in succession “777”, the jackpot on a slot machine, refers to gambling “in many media and all around the world.” Just as the addition of a common word related to a mark owner’s trademark (such as “game” or “casino” in respect to gambling) to a domain name that includes the mark enhances confusing similarity under paragraph 4(a)(i) of the Policy, so should this shorthand reference to a jackpot.
2. The Complainant has never licensed the Respondent to use its marks. Using the disputed domain name for activities that compete with the Complainant and its authorized licensee is not legitimate under paragraph 4(a)(ii) of the Policy.
3. The Respondent’s use of the disputed domain name for competing activities reveals that its registration and use were intended to take advantage of the value of the Complainant’s longstanding trademarks, classic bad faith under paragraph 4(a)(iii) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Standard of proof in a Default Case
Unlike civil litigation, Respondent’s default does not result in an automatic decision in Complainant’s favor or an admission of the truth of the factual allegations in the Complaint. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.6. The Complainant must still establish with competent evidence each of the operative sections of paragraph 4(a) of the Policy. In this case the record reveals two possible defenses that the Panel must consider. B. Identical or Confusingly Similar
Paragraph 4(a)(i) has two separate elements: rights in a mark and the disputed domain name’s confusing similarity to that mark. The Complainant has demonstrated longtime rights in the mark CASINO DE MONACO. The question is whether the disputed domain name is confusingly similar to that mark.
Monaco, standing alone, refers in ordinary English and French to a place. The Complainant argues, with some logical force and some evidence, that the gambling community associates this geographic name interchangeably with the name of its Monte-Carlo casino, and so confusing similarity may be inferred. The Panel need not decide that issue, which he considers not so obvious as the Complainant apparently believes, because the Complainant has provided evidence of a registered mark for CASINO DE MONACO. The addition of the “777” sobriquet reinforces the shorthand reference to the Monaco name sufficiently to create a confusing similarity with the Complainant’s mark. As the Complainant argues, the designation “777” has gaming connotations in colloquial English, a fact confirmed by the Panel with a few simple Google searches.
Furthermore the website to which the disputed domain name resolves indicates that the Respondent intentionally selected the disputed domain name for its gaming suggestiveness. While not usually pertinent to a panel’s analysis under paragraph 4(a)(i), see WIPO Overview 2.0, paragraph 1.2, website content may add to other evidence to confirm confusing similarity. Ibid, second paragraph. C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove a negative. As stated at WIPO Overview 2.0, paragraph 2.1, this is accomplished by a complainant’s making a prima facie case that the respondent lacks rights or legitimate interests, at which point the burden of production shifts to the respondent to demonstrate the contrary. As is the case with each clause of paragraph 4(a), the overall burden of proof remains with the Complainant.
While the Complainant here makes the standard pleading that it has never authorized the Respondent to use its trademarks, notably absent from the Complaint is any discussion of why the Respondent, named Monaco S.A., lacks a right in its corporate name. See Policy, paragraph 4(c)(ii). This defense obtains however only when the respondent is “commonly known” by the dominant feature of the disputed domain name. That requires some evidentiary support. Mere nicknames, names adopted solely for purposes of protecting a domain name from a Policy proceeding, or empty corporate name registrations, without more, do not suffice. And the Complainant’s evidence (Complaint, Annex K) includes an investigative report from a third party agency that “the company MONACO SA does not exist and it is not incorporated in Panama” and that no such company is located at the address included with the Respondent’s contact details. Had the Respondent demonstrated consistent business activities under the Monaco name for a period of time, perhaps it could sail into the safe harbor. But with no evidence of this or other facts that might overcome the Complainant’s prima facie case, the Complainant has carried its burden of proof under paragraph 4(a)(ii). D. Registered and Used in Bad Faith
The Respondent’s use of the disputed domain name for activities competitive with those of the Complainant falls foursquare within the example of evidence of bad faith given in paragraph 4(b)(iv) of the Policy. The use illustrated in the Complaint occurred soon enough after the registration of the disputed domain name so that an inference of intentional registration for this improper purpose was intended. The Complainant has carried its evidentiary burden under paragraph 4(a)(iii). 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.
Richard G. Lyon
Sole Panelist
Date: November 14, 2013
1 The Registrar advised the Center that the Respondent had registered the disputed domain name through a privacy service. Following a practice that this Panel has elsewhere commended, upon receipt of the initial Complaint the Registrar advised the Center of the name and contact registration of the underlying registrant.
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