Complainant is La Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco, of Monaco, represented by De Gaulle Fleurance & Associés, France.
Respondent is Ritz Advisory Ltd. of Seychelles, represented by Gibson & Treu LLP, United States of America. 2. The Domain Name and Registrar
The disputed domain names and (the “Domain Names”) are registered with DNC Holdings, Inc. and DirectNIC, LTD (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2015. On June 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On June 25, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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 July 7, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 27, 2015. The Response was filed with the Center July 27, 2015.
On August 12, 2015, the Center received Complainant’s supplemental filing. On August 14, 2015, the Center received Respondent’s supplemental filing.
The Center appointed Clive L. Elliott Q.C., Christiane Féral-Schuhl and Mark Partridge as panelists in this matter on September 14, 2015. The Panel finds that it was properly constituted. Each member of 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 states that it is a Monegasque company with approximately 70% of its share capital being owned by the Government of the Principality of Monaco. For over 150 years Complainant has been granted, by the Prince of Monaco, a monopoly for casino and gambling activities for the territory of the Principality of Monaco, and is the sole company entitled to organize games and gambling in Monaco.
Complainant further states that it has operated the Casino de Monte-Carlo since 1863, which it contends is one of the most renowned and prestigious casinos in the world.
Complainant asserts that since 1996 it has been the owner of the word mark CASINO DE MONTE-CARLO and since 2013 has been the owner of the word mark MONTE CARLO.
Complainant further asserts that its trademarks are now also used for an online gambling website operated by BetClic Everest Group, with the authorization of Complainant.
According to WhoIs the Domain Names were registered as follows:
a) on March 27 2002; and
b) on May 7, 2005. 5. Parties’ Contentions A. Complainant
Complainant contends that the Domain Names are identical or at least confusingly similar to its trademarks CASINO DE MONTE-CARLO and MONTE-CARLO since the two Domain Names contain the word “Monte-Carlo” as the sole component of the Domain Names. Due to the reputation of Complainant’s trademark CASINO DE MONTE-CARLO, which Complainant contends has been acknowledged by several courts around the world, the Internet user may easily be lead to believe that there is a connection between Complainant's trademark and the Domain Names.
Complainant notes that from a search of trademark databases for possible trademark registrations or applications involving “Monte-Carlo” filed by Respondent, it appears that no trademark has been registered in any searchable jurisdiction or country. Therefore and to the best of Complainant’s knowledge, Respondent holds no intellectual property right over any mark that associates with the term “Monte-Carlo”.
Complainant states that it has never authorized Respondent to register and/or use the Domain Names, and Complainant does not have any type of business relationship with Respondent.
Complainant submits that as Respondent cannot claim any legitimate interest or bona fide use of the Domain Names, has no rights or legitimate interests in the Domain Names, and that Respondent has registered and used the Domain Names in bad faith. Complainant further submits that due to the strong notoriety and world renown of its trademark, it makes it impossible for Respondent not to have been unaware that the registration and use of the Domain Names would violate Complainant’s rights, and that creating such a strong likelihood of confusion between Complainant’s trademark and the Domain Names is a clear example of bad faith not only during the registration process of the Domain Names but also in their use.
Complainant asserts that it has a strong policy of protection for its marks, and in this respect previous UDRP panelists have already ordered the transfer of many domain names to Complainant. The two Domain Names had been identified by Complainant and monitored through its domain name watch until the recent change of status (i.e., use for gambling activities) which triggered the present Complaint. Complainant suggests that even though the Domain Names changed owners since their registration, respectively in 2002 and 2005, the registrations were initially made in bad faith since the initial Registrants could not have ignored Complainant's rights. B. Respondent
Respondent denies Complainant’s allegation that it has acquired the Domain Names in bad faith and contends that Complainant does not appear to have maintained exclusive rights to the text MONTE CARLO (the “Relevant Text”) as a mark.
Respondent notes that whilst Complainant maintains that its only licensee is BetClic Everest Group, there appears to be others that use the Relevant Text as marks (the “Other Users”). These Other Users include the use of the Relevant Text in association with gaming services by MGM Resorts International in Las Vegas, Nevada in association with the Monte Carlo Hotel & Casino (which also owns the domain name).
Respondent states that it has owned the Domain Names for over a decade without any notice of contention by Complainant that the Domain Names were inappropriately used or obtained. Respondent submits that Complainant failed to mention that Respondent has maintained its use of the Domains Names other than the possibility of a fleeting nexus with a sports-related online utilization and thus Respondent’s continued possession of the Domain Names with respect to no online gaming uses is appropriate.
Respondent denies Complainant’s contention that Respondent’s possession of the Domain Names for uses not related to online gaming would be illegitimate.
Respondent claims that the Relevant Text is also a reference point to a geographic location and a political subdivision, and it denies that it should be held to understand that acquiring a domain name embodying the Relevant Text is nothing more than acquiring a domain name tied to such reference point. By way of example, Respondent suggests that comparison could be made with Las Vegas, a well-known city where gaming occurs. It was thus not unreasonable for the entity that acquired to do so at that time. In other words, to those not intimate with the goings-on of what transpired in Monaco with the dealings effected by Complainant in acquiring trademark rights, there is simply no basis to conclude that Respondent knew or should have known that Complainant acquired exclusive mark rights to the Relevant Text associated with online gaming.
Respondent also denies Complainant’s allegation that it knew or should have known that Complainant had such claims to trademark rights for online gaming that would give rise to preclusive effect, as others (or at least one other) appear to use the Relevant Text for gaming purposes. MGM Resorts International uses the Relevant Text with gaming and has an online presence.
Others have also claimed or used the Relevant Text. Indeed, while Complainant boasts about its record of dealing with a myriad of competitive users of the Relevant Text in domains, such multiplicity of use by others actually demonstrates that there was a widespread belief that no one had exclusive commercial mark rights to the Relevant Text. The actual confusion that is present is that a number of entities and individuals not realizing that the Relevant Text was anything more than a geographic/political reference point. In summary, the multiplicity of other uses and other domain name acquisitions demonstrate that there was, and is, a general mentality that the Relevant Text is a reference point and thus acquisition of a domain name embodying the Relevant Text could not have been in bad faith under such circumstances.
Complainant does not demonstrate that Respondent had anything more than a brief reference to sports wagering information and therefore there is no basis to believe that Respondent was, or is, attempting a bad faith usage. Complainant is attempting an eminent domain acquisition, without compensation, against the owner of property that is entirely inoffensive to Complainant. At a minimum, if Complainant were to acquire the Domain Names from Respondent at this time, it ought to do so by payment of an appropriate amount.
Respondent contends that there was no basis for it to have any reason to either believe or have knowledge that a quasi-governmental entity was claiming commercial rights to gaming associated with the geographic/political structure of Monte Carlo. Respondent, acquiring the Domain Names in then Western Samoa, cannot be said to have any level of practical or geographic proximity to Complainant.
Respondent further argues that Complainant’s arguments are entirely self-serving of Complainant’s alleged fame – no actual confusion, no surveys, no claim of actual notice and no other evidence is provided that Respondent subjectively knew, or should have known, of Complainant’s alleged fame.
Respondent notes that there has been no evidence that Respondent has offered to transfer or in any way commercially engage Complainant.
Respondent contends that there also has been no misleading or fraudulent provision of contact information by Respondent. In addition, there is no evidence presented that Respondent is an entity which has acquired multiple allegedly infringing domain names. Finally, as argued the geographic reference point and diluted use hardly make the Relevant Text a strong, famous mark held by Complainant. Under these circumstances, particularly when Respondent is the transferee of the Domain Names, as Complainant has not pled sufficient facts to demonstrate that Respondent “used the Domain Name, or that it registered or maintained the Domain Names with a ‘bad faith intent to profit’ from the registration or maintenance of the” Relevant Text, then there is no case for cybersquatting. C. Complainant’s Supplementary Response
By way of supplementary response Complainant notes that Respondent’s submissions state that “Complainant does not appear to have or have maintained exclusive rights to the text MONTE CARLO (the ‘Relevant Text’) as a mark”, and in support of this submission, Respondent has provided a list from the United States Patent and Trademark Office (USPTO) of trademarks incorporating the term MONTE CARLO. Complainant further notes that the list provided by Respondent includes numerous of Complainant’s own trademarks, which do not evidence a failure to maintain exclusive rights, but evidence the opposite. Complainant states further that the list includes many trademarks registered for goods and services outside of the scope of goods and services of which Complainant claims exclusive rights.
Respondent also submits that the list of “Other users” includes “use of the Relevant Text in association with gaming services by MGM Resorts International in Las Vegas, Nevada in association with the Monte Carlo Hotel & Casino.” Complainant argues that none of the trademarks on the list provided by Respondent are owned by MGM Resorts International, and further notes that Victoria Partners, an entity related to MGM Resorts International, was the owner of application Serial number 76284329 which was assigned to Complainant in October 2010 subject to an agreement between the parties. The assignment is publicly available on the USPTO website and the agreement evidences that Complainant has maintained exclusive rights over the MONTE CARLO mark in connection with gaming services. D. Respondent’s Supplementary Response
Respondent in turn points out that it was not suggesting that the MGM Resorts International’s (“MGM”) mark holdings were depicted on the referenced Annex 1, but rather that it was Respondent’s intention to include MGM only for definitional purposes within the scope of the “Other Users” as that term is used later in the response.
Respondent further claims that Annex 1 does evidence dilution, at some level, of Complainant’s mark. With respect to the Victoria Partners’ arrangement, what is known is that MGM continues to use the Relevant Text and the terms of both the alleged relatedness of Victoria Partners to MGM as well as the terms of the alleged license structure are unknown and neither explained nor documented by Complainant. Respondent suggests that Complainant should provide the documentation to Respondent and the Panel in this regard. One concern, for example, is whether any license arrangement is a “naked license” as that term is understood in Anglo-American jurisprudence thus drawing into serious question Complainant’s continued claim to exclusive rights in and to the Relevant Text. Respondent argues that Annex 1 should not be disregarded. 6. Discussion and Findings
It is well established that Complainant needs to establish each of the following three grounds in order to succeed in its Complaint. For the reasons set out below the Panel concludes that Complainant has established the first ground; has arguably established the second ground but has failed to establish the third ground. Accordingly, the Complaint fails. The reasons for this conclusion are articulated below. A. Identical or Confusingly Similar
As noted above, Complainant asserts that since 1996 it has been the owner of the word mark CASINO DE MONTE-CARLO and since 2013 has been the owner of the word mark MONTE CARLO (Complainant’s Trademark).
It is worth noting in this regard that the domain name was registered on March 27, 2002; and the domain name was registered on May 7, 2005. That means that the domain name was registered after the CASINO DE MONTE-CARLO trademark. However, the Domain Names were registered well before the MONTE CARLO trademark, which was registered relatively recently in 2013. Indeed, the record shows that the first domain name was registered/acquired in 2002, some nine years prior to the Complaint.
This timing issue is not directly relevant in terms of whether Complainant’s Trademark is identical or confusingly similar to the Domain Names. It is however relevant to the issue of bad faith, which the Panel addresses in more detail below.
In terms of the present ground, the Panel accepts that Complainant is the owner of the word mark MONTE CARLO, even if it was acquired by Complainant after the Domain Names registration and thus that Complainant’s Trademark is identical to the Domain Names.
Accordingly, the first ground is made out by Complainant. B. Rights or Legitimate Interests
It is unclear from the parties’ submissions and the evidence presented whether, and if so to what extent, Respondent is actually using the Domain Names and if it is, whether this is for commercial purposes. Rights or legitimate interests cannot typically be created where the user of the domain name at issue would not choose such name, unless it was seeking to create a mistaken impression of identification or association with the Complainant.
However, it is less clear whether that principle applies in the present case. Complainant states that it has never authorized Respondent to register and/or use the Domain Names, and Complainant does not have any type of business relationship with Respondent. Complainant further submits that as Respondent cannot claim any legitimate interest or bona fide use of the Domain Names, and has no rights or legitimate interests in the Domain Names it establishes this ground. However, that argument is somewhat conclusory and Respondent contends that Complainant’s arguments are self-serving of Complainant’s alleged fame and that no evidence is provided that Respondent subjectively knew, or should have known, of Complainant’s alleged fame.
Ultimately, the question comes down to whether Complainant has established that Respondent lacks rights or a legitimate interest in the Domain Names. The Panel considers that Complainant has indeed made a prima facie showing that Respondent does not have rights or legitimate interests in the Domain Names. Furthermore, Respondent does not provide any evidence of (i) use, demonstrable preparation to use the Domain Names in connection of a bona fide offering of goods or services, or (ii) of a legitimate noncommercial or fair use of the Domain Names. The Panel is thus prepared to give Complainant the benefit of the doubt on this ground and finds it is made out. However, for the reasons that follow, that is not sufficient for it to succeed in its Complaint. C. Registered and Used in Bad Faith
As noted above, Complainant registered the term “Monte Carlo” as a trademark in 2013. That is, after the registration or acquisition by Respondent of the Domain Names (in 2002 and 2005 respectively). When Respondent acquired the Domain Names, Complainant owned only the CASINO DE MONTE-CARLO trademark. Furthermore, neither the MONTE CARLO trademark, nor the CASINO DE MONTE-CARLO trademark is protected in the United States. The only trademark of Complainant that is protected in the United States is MONTE-CARLO S.B.M HOTELS CASINOS which was registered in August 2008. Besides, as there may be legitimate and non-infringing third party uses of the “Monte Carlo” denomination by others, based on the present record the Panel is not prepared to infer that the purpose or aim of the registration of the Domain Names was to take advantage of confusion between the Domain Names and the trademark owned at this date by Complainant (or indeed any other intellectual property rights, such as a brand or name owned by Complainant). Lastly, even if previous UDRP panels already ordered transfer of many domain names to Complainant, these cases concerned domain names including the terms “Casino”" and “Monte Carlo”. Consequently, it does not preclude a decision denying the complaint in different circumstances and, in particular, if the disputed domain names do not contain any reference to casino or gambling.
Concerning the criteria of bad faith in the use of the Domain Names, the fact that the Domain Names do not appear to resolve to any website may create inefficiencies in terms of the allocation and availability of domain names. However, that on its own is not sufficient to make a finding of bad faith. A finding of bad faith requires a complainant to show by a preponderance of evidence that it is more likely than not that the Respondent acted in bad faith. The Panel finds here that such a showing has not been made. A deliberate intent to associate with the geographic location is not sufficient to show bad faith with respect to Complainant. Further, the Panel is unable to identify, in any reliable manner, other circumstances demonstrating bad faith, including, for example, Complainant having a particularly well-known trademark, a lack of response to the Complaint, and the registrant’s concealment of its identity. Complainant does not demonstrate that it is well-known under the term MONTE CARLO which is more, in itself, a reference to a geographic location. As to Complainant’s contention relating to a rerouting towards the site prior to the Complaint, the Panel concludes that there is insufficient probative evidence of this in the record to establish bad faith. The only document supplied by Complainant consists in a print out of the site without any link with or reference to the Domain Names. Respondent admits that there was fleeting use of the Domain Names in connection with online sports betting. It is not apparent, however, based on the limited record before the Panel that this would demonstrate to the Panel’s satisfaction that Respondent used the Domain Names in a deliberate attempt to create confusion with Complainant. Accordingly, even if the Panel considers that the Respondent does not contest a fleeting nexus with a sports-related online utilization, in this Panel’s view that use would, on its own, be insufficient to demonstrate bad faith in the use of the Domain Names. The consensus view of panels on this subject is that “the panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith (See paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (WIPO Overview 2.0). Here, the circumstances include the facts that Monte Carlo is a well-known geographic location and that Respondent has not used any terms in its Domain Names that would clearly associate it with Complainant. In this case, the Panel finds that Complainant has failed to demonstrate by a preponderance of evidence a deliberate intent by Respondent to create a likelihood of confusion with Complainant or Complainant’s trademark in order to attract, for commercial gain, Internet users.
For these reasons the Panel is not satisfied that bad faith registration and use has been established.
The Panel notes that the present decision is based on the limited UDRP record before the Panel and is without prejudice to any subsequent action based on additional facts and a more complete record in this forum or in court. 7. Decision
For the foregoing reasons, the Complaint is denied.
Clive L. Elliott Q.C.
Presiding Panelist
Christiane Féral-Schuhl
Panelist
Mark Partridge
Panelist
Date: October 9, 2015
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