WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Socit des Bains de Mer et du Cercle des Etrangers Monaco v. Javier Llorens

Case No. D2000-1319

 

1. The Parties

The Complainant is Socit des Bains de Mer et du Cercle des Etrangers Monaco, Monaco, Principaut de Monaco.

The Respondent is Javier Llorens, Castellon, Spain.

 

2. The Domain Name and Registrar

The Domain Name at issue (hereinafter the Domain Name) is: <casinomonaco.net>

The registrar of the Domain Name is Register.com Inc., 575 8th Ave., 11th Floor
New York, New York, 10468 USA.

 

3. Procedural History

On October 4, 2000 Complainant filed a complaint via e-mail (hereinafter the Complaint) with the WIPO Arbitration and Mediation Center (hereinafter the Center). The Center received the hardcopy of the Complaint on October 5, 2000. On October 19, 2000, the Center received an amended Complaint and accepted it. In a letter dated October 9, 2000 the Center informed the registrar, Register. Com Inc., that the Complaint had been submitted to the Center regarding the Domain Name, and asked for a verification of the registrant information. The said verification results from the registrar were received on October 12, 2000. On November 23 and November 28, 2000, the Center communicated via e-mail with the registrar in order to confirm the Registrar information (the registrant was confirmed to be Mr. Javier Llorens).

The Center then proceeded to verify that the Complaint satisfied the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy [hereinafter referred to as the ICANN Rules and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [hereinafter referred to as the WIPO Rules], including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative on October 13, 2000.

In a letter dated October 23, 2000 the Center informed the Respondent of the commencement of the proceedings as of October 23, 2000 and of the necessity of responding to the Complaint within 20 days. Evidence provided by the Center supports the finding that the Center acted diligently in its attempts to inform the Respondent of the proceedings. On November 8, 2000 the Center received an e-mail from the Complainant requesting a suspension in the proceedings because of the fact that the Respondent wished to settle. On November 9, 2000, the Center confirmed the suspension of the proceedings in an e-mail sent to the parties. On November 11, 2000, the Complainant requested, in an e-mail to the Center, that the proceedings be recommenced. In an e-mail to the Respondent, dated November 13, 2000, the Center confirmed that the proceedings were recommenced and that a response had to be sent to the Complainant and the Center no later than November 17, 2000.

On November 16, 2000 the Center received a response via e-mail (its hardcopy was received on November 20, 2000) (hereinafter the Response) from the Respondent within the 20 day limit as provided for by the Center. On November 21, 2000, the Center received an amended Response from the Respondent, which was accepted.

On November 29, 2000, the Center also informed the Parties that an administrative panel had been appointed. The Panel believes it was constituted in compliance with the ICANN Rules and the WIPO Rules and has also issued a Statement of Acceptance and Declaration of Impartiality and Independence.

The Panel has reviewed the documentary evidence provided by the parties and the Center and agrees with the Centers assessment that the Complaint complies with the formal requirements of the ICANN Rules and the WIPO Rules.

The Panel has received no further submissions from either party since its formation.

The Panel is obliged to issue a decision on or prior to December 11, 2000, in the English language and is unaware of any other proceedings, which may have been undertaken by the parties or others in the present matter.

 

4. Factual Background

The Complainant is a limited liability company, incorporated April 1, 1963, enrolled with the registry of companies under number 56 S 00523. The Complainant is the founder and manager of the Casino of Monte-Carlo, and has the monopoly for casino and gaming industries for the territory of the Principaut de Monaco.

No information has been supplied regarding the attributes and businesses of the Respondent other than the fact that he runs a web site which main objective is internet gambling. It appears that the Respondent maintains offices in Castellon, Spain.

As shown by the evidence, the Respondent registered the Domain Name, "casinomonaco.net" on or about May 17, 2000. This Domain Name, when entered into an internet search engine directs the user to an on-line casino, where various forms of gambling are offered. There is also information available on how to play these different games as well as incentives to get free bonus money to play.

The Complainant is the owner of the trademark "Casino de Monte-Carlo", filed in August 13, 1996, to the Monaco Trademark Office, covering many different products and services. The Complainant's trademark covers products and services in the field of computers and telecommunications, i.e., Internet communication services, labelled as "equipment for data processing and computer", by "Telecommunications", and by services of "computer programming".

There is no relationship between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant nor has he otherwise obtained any authorisation to use the Complainants marks or apply for any Domain Name incorporating any of these marks.

 

5. Parties Contentions

A. Complainant

The Complainant alleges that the Domain Name is practically identical and confusingly similar to the Complainants Casino de Monte Carlo trademark. The Complainant alleges that the "Casino" part of the Domain Name is identical to the first term in its trademark, Casino de Monte-Carlo. The Complainant alleges that the "monaco" part of the Domain Name is confusingly similar identical to the third term of its trademark, Casino de Monte-Carlo. The Complainant states that the substitution of the term of the trademark, "Monte-Carlo", by the term "Monaco" in the Domain Name "casinomonaco.net", does not suppress this strong similarity between the two terms, as it is very common to use one or the other term indifferently to designate the Principaut and thus, are synonyms.

The Complainant further alleges that this confusing similarity necessarily induces confusion amongst the public, between the Domain Name and the Casino of Monte-Carlo, over which the Complainant has a monopoly and is consequently the sole company that can organise games and gambling in Monaco.

The Complainant alleges that in searching worldwide for signs that contain the terms "Casino" and "Monaco", and signs that contain the terms "Casino" and "Monte-Carlo", on the Compumark database, it appears that the Respondent does not own or use any trademark concerning these names, in any country world-wide.

The Complainant alleges that, the Respondent has no intellectual or commercial Property rights over the "monacocasino.net" name or any other similar name.

The Complainant alleges that the registration of the Domain Name, given the Complainants well known mark, is inherently deceptive and clearly done in bad faith with the intent to create confusion amongst the public.

The Complainant maintains that given the strong notoriety of the Complainants trademark, the Respondent could not ignore, at the time of registration that the registration of the Domain Names was made in fraud of the Complainants rights.

The Complainant continues to allege bad faith (pursuant to paragraph 4 (b) (iv) of the ICANN Policy) by stating that the Respondent did in fact use the Domain Name by developing a web site at this address, which featured on-line gaming and casino activities as its main purpose.

The Complainant alleges that given the strong notoriety of the Complainant's mark, as well as the fact that the Complainant has a monopoly for casino and gaming industries in Monaco/Monte-Carlo, the Complainant finds that by registering and then using the Domain Name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to its web site, by creating a likehood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's web site.

The Complainant is of the opinion that, the Domain Name is so obviously connected with the Complainant and its products or services that its very use by someone with no connection with the Complainant suggests "opportunistic bad faith" (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net Case No. D2000-0226, Veuve Cliquot Ponsardin, Maison Fond en 1772 v. The Polygenic Group Co. Case No. D2000-0163 and Charles Jourdan Holding AG v. AAIM Case No. D2000-0403).

B. Respondent

In his Response, the Respondent alleges that there is no similarity between the Domain Name and the Complainants trademark because of the fact that the Domain Name of the Respondent "casinomonaco.net" does not contain the same words as the Complainant's trademark "Casino de Monte-Carlo". Furthermore, the Respondent maintains that there is no confusion between the term "Monte-Carlo" and "Monaco."

The Respondent alleges that according to political geography as well as the law there is a distinction between Monaco and Monte-Carlo, (one is a Principaut and one is a city).

The Respondent also states that the word "casino", being a generic term in the Complainants Trademark, should not be taken into consideration when determining the main elements of the aforementioned trademark.

The Respondent alleges his legitimate interests by stating that it is the registered owner of the Domain Name and that it was and is using it currently. The Domain Name "casinomonaco.net" is an active internet gambling and casino site. The Respondent adds that he has already made an investment in developing this site. Furthermore, the Respondent states that his legitimate interest is clearly separate from the Complainants trademark which is "commonly known as an extremely elegant building with old-fashioned gambling inside".

The Respondent goes on to allege the fact that it was never and is not acting in bad faith by stating that the Domain Name was not registered to be sold to anyone. The Respondent has further alleged that it would be impossible to attract people to its site based on the notoriety of the Complainants name. It would be far reaching at best to assume that the public would associate the Domain Name "casinomonaco.net" with the "Casino de Monte-Carlo." Furthermore the Respondent goes on to allege that since his web site was active before the date that he received the Complaint, this infers good faith on his behalf.

 

6. Discussion and Findings

Pursuant to the Uniform Domain Name Dispute Resolution Policy (hereinafter the ICANN Policy) the Complainant must convince the Panel of three elements if it wishes to have the Domain Name transferred. It is incumbent on the Complainant to show:

i) that the Domain Name is identical or confusingly similar to a trademark in which it holds rights;

ii) that the Respondent has no legitimate rights or interests in the Domain Name;

iii) that the Domain Name was registered and used in bad faith.

After having reviewed the allegations, arguments and evidence of both sides, the Panel, hereinafter will consider each of the three elements below.

Identical or Confusingly Similar to Trademark

The Complainant provided evidence to the effect that it was registered owner of the trademark CASINO DE MONTE-CARLO for the Principaut de Monaco.

It is the Panels opinion that the Domain Name registered by the Respondent while as it may not be identical to the Complainants trademark, it is nevertheless, by the ideas that it suggests, confusingly similar to it. The "Casino" part of the Domain Name is identical to the first term in its trademark, Casino de Monte-Carlo. The "monaco" part of the Domain Name is confusingly similar to the third term of its trademark, Casino de Monte-Carlo. The Panel believes that the substitution of the term of the trademark, "Monte-Carlo", by the term "Monaco" in the Domain Name "casinomonaco.net", does not suppress this strong similarity between the two terms, as it is very common to use one or the other term indifferently to designate the Principaut and thus, are synonyms.

The Panel is also of the opinion that the Complainant has acquired substantial goodwill and reputation in relation to its business activities of organising games and gambling in Monaco as well as managing the Casino of Monte-Carlo. The Complainant provided evidence to the effect that it has the exclusive right in exploiting the aforementioned activities. The Panel, applying its judicial knowledge, is of the opinion that even though Monaco is the Principaut and Monte-Carlo is the city within this Principaut, these terms are used interchangeably by the public at large. The words ("monaco" and "casino") used together create a strong similarity and impression that could easily induce the general public into believing that the Domain Name, the Domain Name proprietor and any web site operated from the Domain Name are associated with the Complainant.

The Panel, upon reading the Respondents Response, is of the opinion that other than denying that the Domain Name is identical or similar to the Complainants trademark, there has been no explanation or evidence offered by the Respondent to establish the contrary. Contrary to the Respondents view, the Panel is of the opinion that there may be a likelihood of confusion between the terms "monaco" and "monte-carlo" amongst the average ordinary person. Furthermore, the Panel is of the opinion that the Respondents argument that the term "casino" in the Complainants mark is generic, does not eliminate the likelihood of confusion between the Complainants trademark and the Domain Name. In view of the above, the Panel concludes that the Complainant has met the burden of proof as established by paragraph 4(a)(i) of the ICANN Policy.

No Rights or Interest

Paragraph 4(a)(ii) of the ICANN Policy addresses the question as to whether or not the Respondent has any rights or legitimate interests vested in the Domain Name. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (i) use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has commonly been known by the Domain Name; and (iii) legitimate non-commercial or fair use of the Domain Name.

The Respondent has alleged that it is the legally registered owner of the Domain Name. The Respondent states that it has been exploiting the domain name with a web site and that it has made a strong investment in developing this web site, to which are registered almost seven hundred members. Moreover, the Respondent maintains that the legitimate interest of the Respondent is clearly separate from the business of the Complainant.

The Panel is of the opinion that the Respondent has not produced any evidence to support its claim that it was using the Domain Name in connection with a bona-fide offering of services. The activities associated with the Respondents site are not as such different from the Respondents business since both businesses mainly involve some form of gambling. The Panel is of the opinion that the mere fact that the Respondent incurred expenses and has invested a sum of money in the Domain Name does not concur a legitimate right or interest to the Respondent.

The Panel is of the opinion that the Complainant has unloaded its burden to demonstrate that the Respondent had no legitimate right and that there is no evidence to support any finding of a legitimate right or interest in the Domain Name on behalf of the Respondent. While the Respondent has shown that it has made use of the Domain Name, the Panel is of the opinion that the Respondent has not shown use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services, nor has he shown that he has commonly been known by the Domain Name nor has he shown a legitimate non-commercial or fair use of the Domain Name.

Bad Faith

Pursuant to paragraph 4(a)(iii) of the ICANN Policy it is incumbent upon the Complainant to prove that the Respondent has registered and is using the Domain Name in Bad Faith. Paragraph 4(b) of the ICANN Policy provides a number of non-exhaustive circumstances which, if found to be present, are evidence of the registration and use of a Domain Name in bad faith. In particular, paragraph 4(b)(iv) of the ICANN Policy holds that, if the circumstances indicate that by using the Domain Name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondents web site then this is evidence of bad faith registration and use on behalf of the Respondent.

The Panel is of the opinion that the present case is an illustration of the kind of bad faith which the ICANN Policy addresses at paragraph 4(b)(iv). It is apparent that the only intent of the Respondent was an attempt to appropriate the goodwill of the Complainant and to cause confusion amongst anyone who became aware of the Domain Name into believing that this Domain Name, its proprietor or any potential web site, were associated with the Complainant, and to redirect traffic intended for the Complainant for his own purposes.

The Respondent has alleged that he has not acted in bad faith given the fact that the Domain Names web site has been exploited since a date prior to the Complainant deciding to produce the Complaint. The Respondent also has alleged that there is no evidence of the Complainant having a trademark CASINOMONACO. While these two statements could be correct, the Panel is of the opinion that the exploitation of the web site prior to the submission of the Complaint alone, does not remove the element of bad faith. Furthermore, it is the Panels opinion that the Complainant does not need to have a registered trademark bearing the exact designation of the Domain Name for there to be bad faith; a trademark conveying a strong enough similarity between the two terms will suffice.

The Respondent has stated in his Response that he is not acting in bad faith due to the fact that there is a weak possibility to attract people to the Domain Name because of the notoriety of the Complainants trademark, and that if an average internet user would search for the terms "monte-carlo" and "casino", they would not be led to the Domain Name. The Panel is of the opinion that the Domain Name could in fact attract internet users due to its suggestion of affiliation with the Complainants Mark. Furthermore, the Panel proceeded to enter the key words "monte-carlo" and "casino" in a very popular search engine and found there were numerous references to web sites referring to Monaco and its gambling activities. When the key words "monaco" and "gambling" were entered, three out of the first six sites that were found referred to the city of Monte-Carlo and its casino. This is illustrative of the confusion that is likely to result given the similarity between the Domain Name and the Complainants trademark.

Furthermore, the Panel is of the opinion that the Domain Name is so obviously connected with the Complainant and its services that its very use by someone with no connection with the Complainant suggests "opportunistic bad faith" (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net Case No. D2000-0226 and Veuve Cliquot Ponsardin, Maison Fonde en 1772 v. The Polygenix Group Co., Case No. D2000-0163).

Therefore, in light of the above the Panel concludes that the Complainant has met the burden of proof and has proven that the Respondents actions have been in bad faith pursuant to paragraph 4(b)(iv) of the ICANN Policy.

 

7. Decision

For the foregoing reasons, the Panel finds and accordingly doth orders:

- that the Domain Name registered by the Respondent is confusingly similar to the trademark to which the Complainant has rights;

- that the Respondent has no rights or legitimate interests in respect of the Domain Names; and

- that the Domain Name has been registered and is being used by the Respondent in bad faith.

Accordingly, pursuant to paragraph 4(i) of the ICANN Policy, the Panel orders that the registration of the Domain Name:

casinomonaco.net

be transferred to the Complainant by the Registrar, Register.com Inc.

 


 

Jacques A. Lger, Q.C.
Single Panelist

Dated: December 13, 2000