The Complainant is Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco, Monaco, represented by De Gaulle Fleurance & Associés, France.
The Respondent is Artem Nadiezhkin, Kiev, Pecherskiy, Ukraine. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 6, 2016. On October 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 10, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 11, 2016 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 October 14, 2016.
The Center verified that the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on October 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 7, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 9, 2016.
The Center appointed Olga Zalomiy as the sole panelist in this matter on November 18, 2016. 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
The Complainant specializes in providing casino services in Monaco for the last 150 years. The Complainant owns well-known trademarks CASINO DE MONACO (Monaco registration no. R.02.23234 on September 30, 2002) and CASINO DE MONTE-CARLO (Monaco registration no. R.96.17404 on August 13, 1996).
The Respondent registered the Domain Name on January 22, 2016. The Domain Name directs to a website in Russian, which displays pictures of the Complainant's casinos and provides information about them. One of the pages of the Respondent's website presents Internet users with an opportunity to play online poker. 5. Parties' Contentions A. Complainant
The Complainant claims that the Domain Name is confusingly similar to the trademark in which the Complainant has rights. The Complainant claims that it specializes in providing casino services in Monaco and for the last 150 years has had a monopoly for casino and gambling activities granted by the Prince of Monaco. The Complainant contends that it owns trademarks CASINO DE MONTE-CARLO, which was filed with the Monaco Trademark Office on August 13, 1996, and CASINO DE MONACO, which was registered on September 30, 2002. The Complainant claims that the Domain Name is confusingly similar to its trademarks because it contains both terms "monaco" and "casino", which compose the Complainant's trademark CASINO DE MONACO. The Complainant alleges that the Domain Name is also confusingly similar to its trademark CASINO DE MONTE-CARLO because previous UDRP panels have held that the replacement of the name "monte-carlo" with the name "monaco" is not capable to sufficiently differentiate domain names from the Complainant trademarks. The Complainant contends that addition of the term "play" in the Domain Name does not dissipate the confusion between the Complainant's trademarks and the Domain Name. The Complainant claims that the term "play" conveys the idea that the Internet user will be able to play and gamble at the website associated with the Domain Name and that the Domain Name may be interpreted as "play at the Casino of Monaco".
The Complainant claims that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant claims that the Respondent has no intellectual property rights in the "playcasinomonaco". The Complainant contends that it has not authorized the Respondent to use its famous trademarks. The Complainant alleges that the Respondent has not made any bona fide or legitimate use of the Domain Name.
The Complainant contends that the Domain Name was registered in bad faith because the Respondent must have been aware of the Complainant's trademarks, which are well-known in the field of casinos and gambling and the content of the Respondent's website associated with the Domain Name confirms this contention. The Complainant alleges that the Domain Name is used in bad faith because the Respondent is using the Domain Name, which directs to an online gambling website, to attract, for commercial gain, Internet users to the Respondent's website. The Complainant claims that the Respondent's website offers Internet users an opportunity to gamble online. The Complainant contends that by using images of the Complainant's casinos and by making references to some of the Complainant's casinos, the Respondent will confuse Internet users into believing that the Respondent's website is the Complainant's official website.
The Complainant alleges that there is a statement in Russian displayed in the bottom of the main page of the Respondent's website, which states: "We do not conduct or organize games of chance" even though the website clearly offers an opportunity to play poker. In the Complainant's view, the disclaimer does not absolve the Respondent of liability, but instead shows its bad faith because it shows that the Respondent is trying to trade on the Complainant's reputation. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)). A. Identical or Confusingly Similar
Under the first element, the Complainant is required to prove that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant has established its rights in the CASINO DE MONACO and the CASINO DE MONTE-CARLO trademarks by submitting evidence of their registration.
While the Panel notes that the Complainant claims that CASINO DE MONTE-CARLO 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, the Panel finds that for the purposes of this decision only the Complainant's rights in the CASINO DE MONACO mark are relevant.
The addition of a generic Top-Level Domain ("gTLD") suffix such as ".com" is to be generally disregarded under the confusing similarity test (as gTLD is a technical requirement of registration)1. Thus, the inquiry here under paragraph 4(a)(i) of UDRP is only whether the "playcasinomonaco" subdomain is identical or confusingly similar to the Complainant's mark CASINO DE MONACO.
It is well-established that "[a] domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name."2 Where the trademark enjoys a high degree of inherent distinctiveness reinforced by longstanding international recognition so as to now amount to a famous mark and where the at-issue prefix or suffix is an ordinary descriptive word that does nothing to dispel confusing similarity, likelihood of confusion is generally found3.
Here, the only difference between the Domain Name and the Complainant's well-known mark CASINO DE MONACO is omission of the word "de" (with is French for "of"). As a result, the mark remains the principal component of the Domain Name. And the combination in the Domain Name of the Complainant's mark with the generic term "play" is insufficient to defeat the Complainant's allegation of confusing similarity.
Thus, the Panel holds that the first element of the UDRP has been proved. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the UDRP, the Respondent may establish that it has rights or legitimate interests in the Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent's 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) the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a 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.
Once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name4. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.5
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant claims that it granted no licenses or permissions to the Respondent to use its trademark, nor to register the Domain Name. The Complainant contends that the Respondent holds no intellectual property rights in the Domain Name.
The Complainant argues that the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services, nor it is making a legitimate noncommercial or fair use of the Complainant's trademark. The Respondent registered and is using the Domain Name because the Domain Name incorporates the Complainant's well-known mark thereby attracts the public's attention given the connection in the public's mind between the Complainant's mark and the Complainant, and enables the Respondent to offer gambling services.
The Panel finds that it is more likely than not that the Complainant's contentions are true because the Respondent did not dispute the Complainant's contentions and there is no evidence to the contrary. Specifically, the evidence on file shows that the Respondent has not been commonly known by the Domain Name and he is not making legitimate commercial or fair use of the Domain Name offering an opportunity to play poker on the website associated with the Domain Name.
Therefore, the Panel holds that the second element of the UDRP has been satisfied. C. Registered and Used in Bad Faith
Under the third UDRP element, the Complainant is required to prove that the Domain Name was registered and is being used in bad faith.
It is well-established, that the registration of a well-known mark as a domain name is clear indication of bad faith in itself, even without considering other elements. See The Gap, Inc. v Deng Youqian,WIPO Case No. D2009-0113. Such is the case with the Respondent's registration of the Domain Name, which came over 149 years after the Complainant started using it and 14 years after the Complainant registered its CASINO DE MONACO trademark. Moreover, the purported disclaimer displayed on the Respondent's website, stating that "We do not conduct or organize games of chance", confirms that the Respondent was aware about the Complainant's rights in the CASINO DE MONACO mark and the Complainant's trade, and use in connection with casino services. Therefore, it is likely that the Respondent registered the Domain Name in bad faith.
The evidence on file shows that the Respondent is using the Domain Name in bad faith because it intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website by creating likelihood of confusion with the Complainant's mark as to the affiliation or endorsement of either the Respondent or its website. The Respondent is using the Domain Name incorporating the Complainant's mark to direct to the website which displays pictures of the Complainant's casinos and offers an opportunity to Internet users to play poker online in Russian. The purported disclaimer displayed on the Respondent's website serves instead, as further evidence of bad faith use of the Domain Name. While the Respondent claims not to offer gaming services, its website offers Internet users an opportunity to play poker online.
Therefore, the Panel finds that the Domain Name was registered and is being used in bad faith. The third element of the UDRP has been proved. 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 Domain Name, be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Date: December 10, 2016
1 Paragraph 1.2, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
2 Paragraph 1.10, WIPO Overview 2.0.
3 Paragraph 1.2, WIPO Overview 2.0.
4 Paragraph 2.1., WIPO Overview 2.0.
5 Id.
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