The Complainant is La Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco, Monaco, represented by De Gaulle Fleurance & Associés, France.
The Respondent is Roman Popov, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2020. On January 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 23, 2020, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 31, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 20, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 21, 2020. The Center appointed Assen Alexiev as the sole panelist in this matter on February 26, 2020. 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 was established in 1863. It has been granted a monopoly for the provision of casino gaming services in the Principality of Monaco, and operates the Casino de Monte-Carlo, as well as a number of hotels and spas, including the Thermes Marins Monte-Carlo and the Monte-Carlo Beach Club. The Complainant employs almost 3,000 people and is the largest employer in the Principality of Monaco. The Complainant is the owner of the trademark CASINO DE MONTE-CARLO with registration number R96.17407, registered in the Principality of Monaco on October 30, 1996, for goods and services in International Classes 3, 7, 9, 12, 14, 16, 18, 28, 34, 35, 38, 39, 41, 42, 43, and 45 (the “CASINO DE MONTE-CARLO trademark”). The disputed domain name was registered on November 17, 2019. It currently does not resolve to an active website. However, according to evidence submitted by the Complainant, the disputed domain name used to resolve to a gambling website. 5. Parties’ Contentions A. Complainant The Complainant submits that the disputed domain name is identical or confusingly similar to the Complainant’s CASINO DE MONTE-CARLO trademark, since it includes the words “casino” and “monte-carlo”. According to the Complainant, the inclusion of the word “grand” in the disputed domain name is insufficient to avoid the confusing similarity with the CASINO DE MONTE-CARLO trademark, as it is commonly used in connection with casino names and refers to the concept of prestige and luxury, while the inversion of the order of the words “monte-carlo” and “casino” and the omission of the preposition “de” in the disputed domain name only reflect differences between the English and French languages. The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant submits that the Respondent has no intellectual property rights over any of the terms “monte”, “carlo”, “grand", and “casino”, and the Complainant has not authorized the Respondent to register and use the disputed domain name. According to the Complainant, the Respondent is not using the disputed domain name in good faith. The Complainant contends that the disputed domain name was registered and is being used in bad faith. It submits that the Respondent was aware that the registration and use of the disputed domain name would violate the Complainant’s rights, given the notoriety of the CASINO DE MONTE-CARLO trademark in the field of gambling. Nonetheless, the Respondent deliberately decided to register the disputed domain name referring to the Complainant’s famous casino in order to use it for a gambling website that competes with the Complainant’s core business. This website bears the title “Montecarlo casino”, and contains references to online gambling, which encourage Internet users to play online, such as “Jackpot Casino”, “Slot Machines”, “Daily Tournament”, “Exclusive Games”, “Win Now”, “Premium casino with a huge selection of slot machines”, etc. The website contains the statement “We welcome all fans of online gambling, as well as those who first decided to experience the emotions of excitement. You visited a site where you can play for money in slot machines, as well as conduct a free game”.According to the Complainant, the above leads Internet users to believe that there is an affiliation between the Complainant and the website operated under the disputed domain name, and the use of the disputed domain name tends to confuse Internet users by creating a clear connection with the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and, (iii) the Respondent has registered and is using the disputed domain name in bad faith. In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case. By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]” The Respondent has however not submitted a Response and has thus not disputed the Complainant’s statements and evidence in this proceeding. A. Identical or Confusingly Similar The Complainant has provided evidence of and has thus established its rights in the CASINO DE MONTE-CARLO trademark. The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD of the disputed domain name. As discussed in sections 1.7 and 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between the textual components of the complainant’s trademark and the disputed domain name to assess whether the trademark is recognizable within the disputed domain name. Where the relevant trademark is recognizable within the disputed domain name, the addition of other descriptive terms would not prevent a finding of confusing similarity under the first element. The disputed domain name incorporates the elements of the CASINO DE MONTE-CARLO trademark in reverse order, only omitting the preposition “de”, and also includes the dictionary word “grand”. These differences between the disputed domain name and the CASINO DE MONTE-CARLO trademark are not significant, and the latter is easily recognizable in the disputed domain name. In view of the above, the Panel finds that the disputed domain name is confusingly similar to the CASINO DE MONTE-CARLO trademark in which the Complainant has rights. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent has no trademark corresponding to the disputed domain name, and the Complainant has not authorized the Respondent to register and use it. The Complainant also points out that the Respondent is not using the disputed domain name in good faith. According to the Complainant, the disputed domain name resolves to a gambling website that competes with the casino business of the Complainant. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not disputed the statements of the Complainant and has not alleged that is has rights or legitimate interests in the disputed domain name. The disputed domain name incorporates the CASINO DE MONTE-CARLO trademark, and the undisputed evidence in the case file shows that it resolves to a gambling website with the title “Montecarlo casino”, which offers online gambling to Internet visitors and contains no disclaimer for the lack of relationship between the Parties. In view of the above, the Panel is satisfied that it is more likely than not that the Respondent, being aware of the goodwill of the CASINO DE MONTE-CARLO trademark, has registered the disputed domain name in an attempt to exploit the trademark’s goodwill by attracting Internet visitors to the Respondent’s website for commercial gain misleading them that they are accessing a website that is affiliated to the Complainant. In the Panel’s view, such conduct does not give rise to rights and legitimate interests of the Respondent in the disputed domain name. Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” As discussed above, the disputed domain name is confusingly similar to the CASINO DE MONTE-CARLO trademark and resolves to a gambling website with the title “Montecarlo casino”, which offers online gambling to Internet visitors and contains no disclaimer for the lack of relationship between the Parties. The case file contains evidence that the Respondent’s physical address is nonexistent. Taking the above into account, and in the absence of any evidence to the contrary, the Panel is satisfied that it is more likely than not that the Respondent is aware of the Complainant’s services marketed under the CASINO DE MONTE-CARLO trademark, and that the Respondent has registered and used the disputed domain name targeting the same trademark. It is likely that by creating a likelihood of confusion with the Complainant’s CASINO DE MONTE-CARLO trademark and an appearance that the disputed domain name and the Respondent’s website are related to the Complainant, the Respondent has attempted to attract traffic to the disputed domain name and confuse the Internet users that they are reaching a website affiliated to the Complainant where gambling services are offered in competition with the Complainant, likely for commercial gain. Therefore, the Panel finds that the disputed domain name has been registered and used in bad faith. 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 Assen Alexiev
Sole Panelist
Date: March 9, 2020
Full & Egal Universal Law Academy