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 Tanwa Chairat, Thailand.
2. The Domain Name and RegistrarThe Disputed Domain Name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2021. On November 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 13, 2021, 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 sent an email communication to Complainant on November 23, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on November 30, 2021.
The Center verified that the Complaint together with the amendment to the Complaint satisfy 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 December 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 28, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 29, 2021.
The Center appointed Colin T. O’Brien as the sole panelist in this matter on January 14, 2022. 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 BackgroundComplainant has a monopoly by way of Sovereign Order for the provision of casino gaming services in the Principality of Monaco and has been the sole corporation with the state permission to operate casinos in the Principality of Monaco since April 2, 1863.
In addition to this main casino, Complainant also owns and operates 3 other casinos in Monaco (the
Monte-Carlo Bay Casino, the Casino Café de Paris and the Sun Casino) but also a complete resort including 2 palaces and 2 deluxe hotels, 40 conference and banqueting rooms, 34 restaurants and bars, 3 spas, as well as cultural and leisure venue.
Complainant has registered many trademarks among which incorporate the name Monaco:
- The word mark CASINO DE MONACO, filed on July 1, 2002 and registered under the
number 02.23234;
- The word mark MONACOPOKER, filed on May 26, 2009 and registered under the number 09.27380;
- The word mark MONACOBET, filed on May 26, 2009 and registered under the number 09.27373;
- The word mark MONACOSPORTBET filed on May 26, 2009 and registered under the
number 09.27370;
- The word mark MONACOWIN filed on May 26, 2009 and registered under the number 09.27372;
- The word mark MONACOGAMING filed on May 26, 2009.
The Disputed Domain Name was registered on July 9, 2021. The Disputed Domain Name resolves to a website of what appears to be an online casino.
5. Parties’ Contentions A. ComplainantThe Disputed Domain Name is identical or at least confusingly similar to Complainant’s trademark CASINO DE MONACO all the more in the field of gambling given their identical term “Monaco”, which comprises Complainant’s trademark CASINO DE MONACO.
The use of “88” within the Disputed Domain Name indicates to Internet users that the domain name’s purpose is to offer gambling related activities, as “88” is commonly placed within domain names to signal that the relevant website offers online casino and gambling services. The number 88 are suggestive of casino and gambling related activities, which are exactly Complainant’s activities under its prior well-known trademarks, and definitively enhance the likelihood for confusion with Respondent’s own services.
The website to which the Disputed Domain Name resolves is actually a gambling website which indicates that Respondent intentionally selected this domain name and the suffix “88” for it’s gaming suggestiveness.
Respondent holds no intellectual property rights over any mark that contains the term “Monaco” either alone or with the numerals 88. Complainant has never authorized Respondent to register and use the Disputed Domain Name containing trademark CASINO DE MONACO. Respondent can claim no legitimate interest or bona fide use of the Disputed Domain Name.
The strong reputation and world renown of Complainant’s trademarks render it impossible for Respondent to have been unaware that the registration and use of the Disputed Domain Name would violate Complainant’s rights.
Respondent deliberately decided to register a domain name associating “Monaco” with numerals related to games of luck and fortune (i.e. “88”) in order to use them in the field of gambling. Respondent should have been aware of the strong notoriety and world renown of Complainant’s trademarks and of the fact that Complainant has a strong policy in protecting and enforcing its intellectual property rights and preserving its reputation and renown from being unduly used by third parties.
Respondent’s use of the Disputed Domain Name is made in bad faith since, as will be demonstrated, the domain name at stake is used to access a gambling platform, which is exactly Complainant’s core business and the activities for which its trademarks are well-known.
Respondent is trying to give some legitimacy to its gambling platform to win the trust of players through the following assertions:
- “with experience service Online gambling for more than 7 years”
- “Monaco-88 is the most reliable casino website right now”
- “honest service, real play, real withdrawal, the best website of 2021”
- “received the MBV award from abroad”
- “And more than 22 other service awards, guaranteed by over 300,000 players.
Respondent clearly tries to create in the mind of the Internet user an association with Complainant and to unfairly benefit from Complainant’s prestige and reputation.
Given the strong notoriety and world renown of Complainant’s trademarks render it impossible for Respondent to have been unaware that the registration and use of the Disputed Domain Name would violate Complainant’s rights, all the more so given Complainant’s strong policy of protection for its famous marks.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarComplainant has demonstrated it owns the registered trademark rights in the globally famous CASINO DE MONACO trademark. Complainant has rights also over many trademarks for gambling services comprising the term “Monaco”, which is reproduced in its entirety within the Disputed Domain Name. The addition of the term “88” which has connotations with gambling does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions Third Edition (“WIPO Overview 3.0”). The Panel notes the broader case context, including Complainant’s exclusivity over gambling services in Monaco, and the content of the Respondent’s website, which affirms confusing similarity as Respondent uses the disputed domain name and the terms “Monaco88” for gambling services, trading off Complainant’s reputation. See sections 1.7 and 1.15 of the WIPO Overview 3.0.
Accordingly, the Disputed Domain Name is confusingly similar to a mark in which Complainant has rights
Complainant has presented a prima facie case that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; has not at any time been commonly known by the Disputed Domain Name; does not have any pending or registered trademarks which incorporate the Disputed Domain Name and is not making a legitimate noncommercial or fair use of the Disputed Domain Name. Complainant has also presented prima facie evidence that Respondent is using the Disputed Domain Name to direct Internet users seeking to find Complainant’s website to a website, which offers the same services as those offered by Complainant which would lead Internet users to incorrectly assume the website at the Disputed Domain Name is affiliated with Complainant.
After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
Here, Respondent has provided no evidence of any rights or legitimate interests in the Disputed Domain Names.
Accordingly, the Panel finds that Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Panel finds that Complainant has satisfied its burden of proof in establishing Respondent’s bad faith in registration and use of the Disputed Domain Name. Paragraph 4(b)(iv) of the Policy states that evidence of bad faith may include a respondent’s use of a domain name to intentionally attempt to attract Internet users, for commercial gain.
Due to the worldwide renown of the CASINO DE MONACO Mark, it is inconceivable that Respondent registered the Disputed Domain Name without knowledge of Complainant. The Disputed Domain Name is used for a website that offers the same services as those which are offered by Complainant albeit in an online venue, this would cause Internet users to think they are visiting a website operated or authorized by Complainant. In the Panel’s view, Respondent is using this website to create an association with the Complaint in order to obtain revenue via an online casino at the expense of Complainant. The facts establish a deliberate effort by Respondent to cause confusion with Complainant for commercial gain. Under these circumstances, the Panel finds no plausible good faith reason for Respondent’s conduct and concludes that the Disputed Domain Name was registered and used in bad faith.
7. DecisionFor 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,
Colin T. O’Brien
Sole Panelist
Date: January 28, 2022