ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v. Qian Ling u5289 Case No. D2024-2152 1. The Parties Complainant is Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco, Monaco. Respondent is Qian Ling u5289, Taiwan. 2. The Domain Name and Registrar The disputed domain names are , , , , , , , , , , , , , , and (the “Domain Names”) are registered with ASCII (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2024. On June 6, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On June 6, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent (Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to Complainant on June 11, 2024, with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrar, requesting Complainant to either file separate complaint(s) for the Domain Names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all domain names are under common control. Complainant filed an amended Complaint on July 16, 2024. 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”).
page 2 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 25, 2024. In accordance with the Rules, paragraph 5, the due date for Response was August 14, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 2, 2024. The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on September 9, 2024. 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, a limited liability company, was founded in 1863 by a Sovereign Decree passed by Prince Charles III of Monte-Carlo. Its main shareholders are the Principality of Monaco and its ruling family, namely, the House of Grimaldi. Complainant currently employs almost 3,000 people and is the largest employer in the Principality of Monaco. Complainant has been operating the Casino de Monte-Carlo since 1863 and also owns and operates 3 other casinos in Monaco. Complainant owns several registered trademarks with the MONTE CARLO mark, either alone or in combination with other terms, including: - Monaco registered trademark number 14.30170 for the MONTE CARLO word mark, registered on February 2, 2014; - Monaco registered trademark number 96.17407 for the CASINO DE MONTE-CARLO word mark, registered on October 30, 1996. Complainant’s trademarks are used for entertainment services, in particular, for gambling and casino services. The Domain Names were all registered on December 12, 2023. At the time of filing of the Complaint, the Domain Names each redirected to an identical website that offered gambling and gaming activities. At the time of the Decision, each Domain Name redirected to an inactive or error page. 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Names. Complainant contends that (i) the Domain Names are confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Names; and (iii) Respondent registered and are using the Domain Names in bad faith. In particular, Complainant contends that it has a trademark registration and rights for MONTE CARLO and that Respondents registered and are using the Domain Names with the intention to confuse Internet users looking for bona fide and well-known MONTE CARLO products and services. Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainant’s trademarks, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Names. Rather, Complainant contends that Respondent
page 3 has acted in bad faith in acquiring and setting up the Domain Names, when Respondent clearly knew of Complainant’s rights. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and (iii) the Domain Names were registered and are being used in bad faith. Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that failure to respond to the complainant’s contentions would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A. Identical or Confusingly Similar A preliminary issue in the current proceeding is whether Complainant has protectable rights in the mark to which it contends Respondent’s Domain Names are confusingly similar. Complainant has provided evidence of its rights in the MONTE CARLO trademarks, as noted above. Complainant has also submitted evidence which supports that the MONTE CARLO trademarks are widely known and a distinctive identifier of Complainant’s products and services. Complainant has therefore proven that it has the requisite rights in the MONTE CARLO trademarks. With Complainant’s rights in the MONTE CARLO trademarks established, the remaining question under the first element of the Policy is whether the Domain Names, typically disregarding the Top-Level Domain (“TLD”) in which it is registered (in this case, “.asia”, “.cc”, ‘.cloud”, etc. as shown in the chart below), are identical or confusingly similar to Complainant’s trademark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. Here, the Domain Names are confusingly similar to Complainant’s MONTE CARLO trademarks. These MONTE CARLO trademarks are recognizable in the Domain Names. Domain Name Added terms to the MONTE CARLO Mark in the Respective Domain Name Top-Level Domain Name related to the Respective Domain Name “the” “.asia” “the” “.cc” “the” “.cloud” “the” “.club” “the” “.fun” “the” “.life” “the” “.online”
page 4 “the” “.pro” “the” “.site” “the” “.space” “the” “.today” “the” “.vip” “the” “.website” “the” “.world” “the” “.xyz” “the” “.blog” In particular, the Domain Names’ inclusion of Complainant’s trademark MONTE CARLO in its entirety, in each case, with an addition of “the” and the absence of a space between “MONTE” and “CARLO” as noted in the chart above does not prevent a finding of confusing similarity between each of the Domain Names and the MONTE CARLO trademarks. See section 1.8 of the WIPO Overview 3.0. Thus, the Panel finds that Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant must make a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with relevant evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. From the record in this case, it is evident that Respondent was, and is, aware of Complainant and its MONTE CARLO trademarks, and does not have any rights or legitimate interests in the Domain Names. Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the MONTE CARLO trademarks or to seek registration of any domain name incorporating the trademarks. Respondent is also not known to be associated with the MONTE CARLO trademarks and there is no evidence showing that Respondent has been commonly known by the Domain Names. In addition, Respondent has not used the Domain Names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, at the time of the filing of the Complaint, each of the Domain Names redirected to an identical website that offered online gambling. In particular, the website each of the Domain Names redirected to featured several logos of other well-known gambling platforms, and prominently claimed that “The Monte Carlo Gaming” site is an “award-wining online gaming provider” and that it is “the market leader in the global online gaming industry”, which is the same industry and business as Complainant. It further presented itself as “an award-winning Responsible Operator, providing the expertise to guide, advise and keep [the users] playing safe”. Such use does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Names. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration, WIPO Case No. D2013-0875. At the time of the Decision, all the Domain Names redirected to an error or inactive page. Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Names. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Names. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Names and Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
page 5 C. Registered and Used in Bad Faith The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Names in bad faith. Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of 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.” The Panel finds that Complainant has provided ample evidence to show that registration and use of the MONTE CARLO trademarks long predate the registration of the Domain Names. Complainant is also well established and known. Indeed, the record shows that Complainant’s MONTE CARLO trademarks and related products and services are widely known and recognized. Therefore, and also noting the competing use to which the disputed domain names were put, Respondent was aware of the MONTE CARLO trademarks when it registered the Domain Names. See section 3.2.2 of the WIPO Overview 3.0; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973. The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; and BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007. Further, the registration of the Domain Names incorporating Complainant’s MONTE CARLO trademark in its entirety and use of Complainant’s MONTE CARLO trademark to redirect to an identical website featuring gambling activities while featuring content such as “The Monte Carlo Gaming” among other gambling references, suggest Respondent’s actual knowledge of Complainant’s rights in the MONTE CARLO trademarks at the time of registration of the Domain Names and its effort to opportunistically capitalize on the registration and use of the Domain Names. In addition, the evidence provided by Complainant has shown that at the time of the filing of the Complaint, each of the Domain Names redirected to an identical website that offered online gambling. In particular, the website each of the Domain Names redirected to featured several logos of other well-known gambling platforms, and prominently claimed that “The Monte Carlo Gaming” site is an “award-wining online gaming provider” and that it is “the market leader in the global online gaming industry”, which is the same industry and business as Complainant. It further presented itself as “an award-winning Responsible Operator, providing the expertise to guide, advise and keep [the users] playing safe”.
page 6 Such use of the Domain Names is disruptive to Complainant’s business and potentially damaging to Complainant’s reputation and goodwill, particularly because their use is in the same business and industry as Complainant’s, for activities for which Complainant’s trademarks are well-known, and is evidence of bad faith. See Lennar Pacific Properties Management, Inc. et al v. IAutomation Contractors, WIPO Case No. D2022-1768. At the time of the Decision, all the Domain Names resolve to inactive webpages, which does not change the Panel’s finding of Respondent’s bad faith. Further, the Panel also notes the failure of Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and the implausibility of any good-faith use to which the Domain Names may be put. Accordingly, the Panel finds that Respondent registered and is using the Domain Names in bad faith and Complainant succeeds under the third element of paragraph 4(a) 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 Domain Names , , , , , , , , , , , , , , and be transferred to Complainant. /Kimberley Chen Nobles/ Kimberley Chen Nobles Sole Panelist Date: September 23, 2024
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