Complainant is Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco, Monaco, represented by De Gaulle Fleurance & Associés, France.
Respondent is Top Domain, Top, Panama. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2020. On December 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 3, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 18, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 21, 2020. The Center verified that the Complaint together with 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 Respondent of the Complaint, and the proceedings commenced on January 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 4, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 11, 2021. The Center appointed Phillip V. Marano as the sole panelist in this matter on February 23, 2021. 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 owns and manages the Casino de Monte-Carlo, as well as a number of other casinos and resorts, and is the only corporation authorized to operate casinos within the Principality of Monaco. Complainant owns a number of valid and subsisting registrations for the CASINO DE MONACO, MONACOWIN, MONACOPOKER, MONACOBET, MONACOSPORTBET, and MONACOGAMING trademarks (hereinafter the “MONACO CASINO Trademarks”) in the Principality of Monaco, with the earliest priority dating back to September 30, 2002. Amongst them are trademark registration 02.23234 for CASINO DE MONACO, registered on September 17, 2012, and trademark registration 09.27372 for MONACOWIN, registered on June 15, 2019. Respondent registered the disputed domain name on November 2, 2020. At the time of this Complaint, the disputed domain name resolved to a gambling platform containing several photos of Complainant’s Casino de Monte-Carlo. 5. Parties’ Contentions A. Complainant Complainant asserts ownership of the MONACO CASINO Trademarks and has adduced evidence of trademark registrations in the Principality of Monaco with earliest priority dating back to September 30, 2002. The disputed domain name is confusingly similar to Complainant’s MONACO CASINO Trademarks, according to Complainant, because: (i) the two incorporate the identical “monaco” element; (ii) the disputed domain name is the mere inversion of Complainant’s MONACOWIN trademark; and (iii) replacing the term “casino” with another gambling-related term such as “win” in connection with Respondent’s gambling website is clearly meant to evoke Complainant and its monopoly over gambling services in the Principality of Monaco. Complainant further asserts that Respondent lacks any rights or legitimate interests in the disputed domain name based on: (i) the lack of any registered trademark rights of Respondent; (ii) the fact Complainant has never authorized Respondent to use the MONACO CASINO Trademarks; and (iii) the lack of any evidence that Respondent is known by the “Win Monaco” moniker. Complainant argues that Respondent has registered and used the disputed domain name in bad faith for numerous reasons, including: (i) the strong reputation and world renown of Complainant and its MONACO CASINO Trademarks; (ii) Complainant’s demonstrated record of anti-cybersquatting enforcement efforts; and, (iii) Respondent’s clear targeting of Complainant, through the disputed domain name and misappropriation use of imagery of Complainant’s Casino de Monte Carlo, to offer online gambling services in direct competition with Complainant, as demonstrated by Respondent’s claims to being “committed to offer [gamblers] online games as fair, direct, secured and funny as possible.” B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings To succeed in its Complaint, Complainant must establish in accordance with paragraph 4(a) of the Policy: i) The disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights; ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and iii) The disputed domain name has been registered and is being used in bad faith. Although Respondent did not reply to Complainant’s contentions, the burden remains with Complainant to establish by a balance of probabilities, or a preponderance of the evidence, all three elements of paragraph 4(a) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3 (“A respondent’s default would not by itself mean that complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that complainant’s claims are true. UDRP panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case, e.g. where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.”); The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064 (“The Respondent’s default does not automatically result in a decision in favor of complainant. Complainant must still prove each of the three elements required by Policy paragraph 4(a)”). A. Identical or Confusingly Similar Ownership of a nationally or regionally registered trademark serves as prima facie evidence that Complainant has trademark rights for the purposes of standing to file this Complaint. WIPO Overview 3.0 , section 1.2.1 . Complainant submitted evidence that the MONACO CASINO trademarks, including in particular the MONACOWIN trademark, have been registered with priority dating back to September 30, 2002 and May 26, 2009 respectively, over a decade before the disputed domain name was registered by Respondent. Thus, the Panel finds that Complainant’s rights in the MONACO CASINO Trademarks have been established pursuant to the first element of the Policy. The only remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s MONACO CASINO Trademarks. In this Complaint, the disputed domain name is confusingly similar to Complainant’s MONACO Casino Trademark because, disregarding the “.net” generic Top-Level Domain (“gTLD”), the distinctive “monaco” element of each of the MONACO CASINO Trademarks is contained in its entirety within the disputed domain name. Moreover, the Panel concurs with Complainant, that the disputed domain name represents merely the inversion of Complainant’s MONACOWIN trademark. WIPO Overview 3.0 , section 1.7 . (“This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name … [I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar...”). gTLDs, such as “.net” in the disputed domain name, are generally viewed as a standard registration requirement and are disregarded under the first element. WIPO Overview 3.0 , section 1.11 . In view of Complainant’s registration for the MONACO CASINO Trademarks and Respondent’s mere inversion of Complainant’s MONACOWIN trademark, the Panel concludes that Complainant has established the first element of the Policy. B. Rights or Legitimate Interests Complainant must make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, shifting the burden of production on this element to Respondent to come forward with evidence demonstrating such rights or legitimate interests. Where, as in this case Complainant has done so and Respondent fails to come forward with any relevant evidence, Complainant is deemed to have satisfied the second element of the Policy. WIPO Overview , section 2.1 . It is evident that Respondent, identified by registration data for the disputed domain name as “Top Domain, Top”, is not commonly known by the disputed domain name or Complainant’s MONACO CASINO Trademarks. Based on the undisputed facts and circumstances in the record before it, the Panel finds that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. This is especially the case where a disputed domain name is so obviously connected with Complainant and its reputation and goodwill in gambling services in Monaco, such that the very use in connection with imagery of Complainant’s Casino de Monte-Carlo, by Registrant with no connection to Complainant suggests opportunistic bad faith. As such, the Panel concludes from the record that Respondent had Complainant’s MONACO CASINO and MONACOWIN trademarks in mind when registering the disputed domain name, and that Respondent most likely registered the disputed domain name in order exploit and profit from Complainant’s trademark rights. In the absence of any evidence supporting Respondent’s rights or legitimate interests in the disputed domain name, and Respondent’s attempts to confuse Internet users and trade off the goodwill of the MONACO CASINO Trademarks, the Panel concludes that Complainant has established the second element of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy proscribes the following non-exhaustive circumstances as evidence of bad faith registration and use of the disputed domain name: i. Circumstances indicating that Respondent has registered or Respondent has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out of pocket costs directly related to the disputed domain name; or ii. Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or iii. Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or iv. By using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. Use of a domain name incorporating Complainant’s trademark to redirect Internet users to Respondent’s website where goods or services are offered in competition with Complainant is evidence of bad faith under paragraph 4(b)(iv) of the Policy. WIPO Overview, section 3.1.4 (“Panels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: … seeking to cause confusion for respondent’s commercial benefit, even if unsuccessful … the lack of a respondent’s own rights to or legitimate interests in a domain name [or] redirecting the domain name to a different respondent-owned website….”). Here, the disputed domain name misappropriates Complainant’s MONACO CASINO Trademarks and resolves to a website that makes unauthorized use of imagery of Complainant’s Casino de Monte-Carlo and offers gambling services in direct competition with Complainant. Accordingly, the Panel finds that use of the disputed domain name will divert Internet users and potential customers from Complainant’s business to the website under the disputed domain name by attracting those who mistakenly believe that the disputed domain name is affiliated with Complainant, and which may further mistakenly believe that the gambling services offered on this website are authentic services offered by Complainant, or by an entity affiliated to Complainant. The Panel acknowledges that other geographic locations around the world share the name “Monaco” and gambling may or may not take place in those locations, whereas the governmental monopoly granted to Complainant for such services, and the trademark registration evidence provided by Complainant, is all limited to the Principality of Monaco. Thus, although legitimate good faith uses of the name “Monaco” are conceivable in Monaco, California for example, the evidence provided by Complainant, particularly Respondent’s own website, makes it very clear that Respondent has specifically targeted Complainant’s Casino de Monte-Carlo and Complainant’s MONACO CASINO Trademarks in bad faith. Furthermore, Respondent’s use of false registration data in connection with a disputed domain name further supports a finding of bad faith. See e.g. Action Instruments, Inc. v. Technology Associates,WIPO Case No. D2003-0024 (Providing false contact information violates paragraph 2 of the Policy, which requires a registrant to represent that the statements it “made in [its] Registration Agreement are complete and accurate”. Maintaining that false contact information in the WHOIS records (which can easily be updated at any time) after registration constitutes bad faith use of the domain name because it prevents a putative complainant from identifying the registrant and investigating the legitimacy of the registration.”); Royal Bank of Scotland Group v. Stealth Commerce v. a.k.a. Telmex Management Services, Inc.,WIPO Case No. D2002-0155; Home Director, Inc. v. HomeDirector,WIPO Case No. D2000-0111 (April 11, 2000). Here, attempts made to serve Respondent with notice of this Complaint at the points of contact provided by Respondent in its registration data, all bounced back or otherwise failed as undeliverable. In view of Respondent’s clear targeting of Complainant and direction of the disputed domain name to Respondent’s website with gambling services in direct competition with Complainant, plus Respondent’s use of false registration data to mask its identity,the Panel concludes that Complainant has established the third element of the Policy. 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 Phillip V. Marano
Sole Panelist
Date: March 15, 2021
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