ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v. hjiu Bnn, NANTAWADEE SAOON Case No. D2025-1928 1. The Parties 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 Respondents are hjiu Bnn and NANTAWADEE SAOON, Thailand. 2. The Domain Names and Registrars The disputed domain names , , , are registered with GoDaddy.com, LLC and the disputed domain name is registered with NameCheap, Inc. (the “Registrars”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2025. On May 14, 2025, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On May 15, 2025, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (Redacted for privacy, Privacy service provided by Withheld for Privacy ehf / Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on May 15, 2025 with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, requesting the Complainant to either file separate complaint(s) for the disputed 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. The Complainant filed an amended Complaint on May 20, 2025. 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 the Respondent of the Complaint, and the proceedings commenced on May 27, 2025. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2025. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on June 17, 2025. The Center appointed Peter Burgstaller as the sole panelist in this matter on June 26, 2025. 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 is a limited liability company enrolled with the registry of companies of Monaco under number 56 S 00523 and was founded in 1863. The Complainant was granted a monopoly for casino and gambling activities (Privilège des Jeux) for the territory of the Principality of Monaco and is therefore for more than 150 years the sole company entitled to organize games and gambling in Monaco (Annexes C and D to the Complaint). The Complainant owns the following word trademark registrations in Monaco: - CASINO DE MONTE-CARLO, Reg. No. 96.17407, registered October 30, 1996; - MONTE-CARLO, Reg. No. 14.30170, registered December 31, 2013; and - CASINO DE MONACO, Reg. No. 02.23234, registered September 20, 2002 (Annexes E1 – E3 to the Complaint). The disputed domain names were registered as follows: , , and were registered on October 18, 2024, with GoDaddy.com, LLC as Registrar; was registered on December 5, 2024, with NameCheap, Inc as Registrar (Annexes A1 – A5 to the Complaint). At the time of filing the Complaint the disputed domain name resolved to a website containing information about casinos and gambling in Thailand (Annex I to the Complaint); the disputed domain name , , and did not refer to a website with material content. 5. Parties’ Contentions A. Complainant The Complainant asks for consolidating the different disputed domain names’ registrants in a single proceeding since there are a set of indicators that suggest that the disputed domain names were registered by the same entity. Further, the Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names: Notably, the Complainant contends that the disputed domain names were confusingly similar to the famous marks CASINO DE MONTE-CARLO, MONTE-CARLO and CASINO DE MONACO in which the Complainant has rights. The disputed domain names all include the term “MONACO” which is also included in the Complainant’s mark CASINO DE MONACO; moreover, the names “MONACO” and “MONTE CARLO” are used interchangeably by the public which make the disputed domain names also confusing similar to the trademarks CASINO DE MONTE-CARLO and MONTE-CARLO.
page 3 Furthermore, the Complainant notes that the Respondents do not have any rights or legitimate interests in the disputed domain names. The Respondents are not linked to the Complainant in any way whatsoever and have never been authorized by the Complainant to register domain names that are similar to its trademark. The Respondents are moreover not commonly known by or associated with the disputed domain names and do not use them for any bona fide offering of goods or services – it is to the contrary. It rather appears that the disputed domain names have only been registered by the Respondents to exploit the Complainant’s brand reputation and mislead or divert the Complainant’s customers. Finally, the Complainant alleges that the disputed domain names were registered and used by the Respondents only with the primary intention to attract, for commercial gain, Internet users to its website or other online location, by offering an online gambling website to unduly benefit from the Complainant’s notoriety. The disputed domain names are used in bad faith. At the time of filing the Complaint the disputed domain name was used since it referred to a website with gambling content. The Complainant alleges that previously, there was also an active website linked regarding the disputed domain name . Although, the other disputed domain names were not actively used, passive holding is within the concept of bad faith use under the Policy. B. Respondents The Respondents did not reply to the Complainant’s contentions. 6. Consolidation: Multiple Respondents The amended Complaint was filed in relation to nominally different domain name registrants. The Complainant alleges that the domain name registrants are the same entity or mere alter egos of each other, or under common control. The Complainant requests the consolidation of the Complaint against the multiple disputed domain name registrants pursuant to paragraph 10(e) of the Rules. The disputed domain name registrants did not comment on the Complainant’s request. Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2. As regards common control, the Panel notes that: - the disputed domain names , , and were registered by hjiu Bnn on October 18, 2024, and the disputed domain name was registered one and a half month later on December 5, 2024, by NANTAWADEE SAOON; - the registrant details are the same with regard to the country; besides that, the address, phone number and email address are different; - the Registrar for the disputed domain names , , , and is GoDaddy.com, LLC, and for the disputed domain name is NameCheap, Inc; - the disputed domain names have a very similar naming pattern, “monaco” plus the number 66 and generic Top-Level Domains (“gTLDs”); - the Respondents did not react in any way – the Respondents neither rejected the consolidation request nor filed any Response.
page 4 Although the signs of commonality between the Respondents is limited, this Panel draws the attention to the similar naming pattern, the same country of the Respondents, the short period of registering the disputed domain names and most of all, that the Respondent did not react in any way. Therefore, as regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party. Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “the Respondent”) in a single proceeding. 7. Discussion and Findings According to paragraph 4(a) of the Policy, the Complainant must prove that: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests with respect to the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. 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 disputed domain name. WIPO Overview 3.0, section 1.7. The Complainant submitted evidence which establishes rights in the trademarks CASINO DE MONTE-CARLO, MONTE-CARLO, and CASINO DE MONACO. Since it has long been held that gTLDs are generally disregarded when evaluating the confusing similarity of a disputed domain name, the crucial question in this case is whether the term “monaco66” is confusingly similar to the Complainant’s trademarks CASINO DE MONTE-CARLO, MONTE-CARLO or CASINO DE MONACO. The Panel finds that the term “monaco66” is confusing similar to the Complainant’s trademarks because of the following reasons: The distinctive element in the Complainant’s trademark CASINO DE MONACO is “MONACO”. The use of this distinctive element in connection with the Complainant’s provision of gambling services for over 150 years and its worldwide fame, leads the Panel to the conclusion that the confusing similarity is present in this case. The addition of the number “66”, which may stand for “good fortune” or “happiness”, has in some way connotations with gambling and does not prevent a finding of confusing similarity. Therefore, the Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. While the overall burden of proof in UDRP proceedings is on the complainant, 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
page 5 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. WIPO Overview 3.0, section 2.1. Having reviewed the record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, since it has never assigned, granted, licensed, sold, transferred, or in any way authorized the Respondent to register or use its trademark in any manner. The Respondent is not known under the disputed domain names and the disputed domain names are not being used for a bona fide offering of goods or services. Based on the evidence provided by the Complainant, the disputed domain names , , , and , are passively held by the Respondent which does not establish legitimate rights under the circumstances of this case. Regarding the disputed domain name a commercial website is addressed containing information about casinos and gambling in Thailand, which considering the use of the distinctive part of the Complainant’s trademark to offer competing services does not amount to either a bona fide offering of goods or services, nor a noncommercial or fair use. Moreover, the Panel notes that composition of the disputed domain names themselves, incorporating “monaco” with “66”, which has in some way connotations with gambling and may stand for “good fortune” or “happiness”, tends to falsely suggest a connection with the Complainant. Finally, the Respondent did not provide any evidence showing its rights or legitimate interests in the disputed domain names. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith As stated in many decisions rendered under the Policy, both conditions, registration and use in bad faith, must be demonstrated; consequently, the Complainant must show that: - the disputed domain names were registered by the Respondent in bad faith; and - the disputed domain names are being used by the Respondent in bad faith. The Complainant has established rights in the globally famous CASINO DE MONACO trademark for many decades before the registration of the disputed domain names. Due to the worldwide renown and fame of the CASINO DE MONACO mark, the Panel finds it more likely than not that the Respondent has registered the disputed domain names with knowledge of the Complainant and its trademarks. Therefore, the Panel finds that the disputed domain names were registered in bad faith by the Respondent. The disputed domain names are also being used in bad faith: The disputed domain names , , and resolve to websites with no material content. Panels have found that the non-use of a domain name (including a blank or “coming soon” page, a registrar’s parking page or website with no active content like in the present case) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3.
page 6 The distinctiveness and the worldwide fame of the Complainant’s trademark, and the nature of the disputed domain names support the finding that in the circumstances of this case the passive holding of the disputed domain names does not prevent a finding of bad faith under the Policy. The disputed domain name is used for a website that provides information about casinos and gambling in Thailand; this would cause Internet users to think they are visiting a website operated or authorized by Complainant. The use of the disputed domain name therefore directly targets the Complainant and its trademarks in bad faith and to attract Internet users to its website by creating a likelihood of confusion between the Complainant’s marks and the disputed domain name for commercial gain. The evidence and documents produced and put forward by the Complainant together with the fact that the Respondent has failed to present any evidence of any good faith registration and use with regard to the disputed domain names further supports the finding of bad faith. Accordingly, the Panel finds the third element of the Policy has been established. 8. 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 names , , , , and be transferred to the Complainant. /Peter Burgstaller/ Peter Burgstaller Sole Panelist Date: July 12, 2025
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