WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Socit des Bains de Mer et du Cercle des Etrangers Monaco v. None

Case No. D2004-0415

 

1. The Parties

1.1 Complainant: Socit des Bains de Mer et du Cercle des Etrangers Monaco, with official address in Place du Casin, Monte Carlo, Mnaco, Principality of Monaco.

The representative authorized to act in this administrative proceeding is Mr.Julin Horn, of the Law Firm De Gaulle Fleurance & Associs.

1.2 Respondent: “None”, with official address in Englewood, Colorado, UnitedStates of America, with no representative appointed.

 

2. The Domain Names and Registrar

2.1 The dispute concerns the domain names <monte-carlocasinos.net>, <monte-carlogrand.com>, <monte-carlosuncasino.com>, <montecarloroyale.com>, <montecarlosuncasino.com>, <suncasino-monte-carlo.com> and <suncasino-montecarlo.com>

2.2 The registrar with which the domain names are registered is Tucows Inc.

 

3. Procedural History

3.1 A complaint in accordance with the Uniform Domain Name Dispute Resolution Policy, approved by ICANN on August 26, 1999, (hereinafter the “Policy”) and the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the “Rules”), was filed by e-mail with the WIPO Arbitration and Mediation Center, (hereinafter the “Center”), on June 8, 2004. The Center acknowledged receipt on June 8, 2004.

3.2 The registration was verified on June 9, 2004. On July 14, 2004, the Center requested the Complainant amend its Complaint identifying the owner of the domain names and Respondent as “None”. The Complainant complied with such request on July 15, 2004. On July 16, 2004, the Complaint was notified to the Respondent. The Respondent did not submit any response to such complaint within the established term.

3.3 On July 16, 2004, the Center contacted Mara Baylos requesting her statement of acceptance and declaration of impartiality and independence to act as sole panelist in this administrative proceeding, which she accepted on July 19, 2004. On July 20, 2004, she was appointed once the declaration was received.

3.4 Language of the proceeding. The Complaint was filed in English language and the Complainant has not proposed or reasoned the appropriateness of such language as the language of the proceeding. However, considering that the language of the Registration is English, the Panel, using the faculties granted by paragraph 11(a) of the Rules, considers that the language of the proceeding must be the English language.

 

4. Factual Background

The following facts and circumstances are considered evidenced since they are supported by documents or statements not objected to by the Respondent:

4.1. The Complainant is the owner in the Principality of Monaco of the trademark No. 96.17407, “CASINO DE MONTE-CARLO”, applied for on August 13, 1996, and granted on October 30, 1996.

The Complainant is also the owner of the applications for U.S. Trademarks No. US 76479351 “CASINO DE MONTE-CARLO”, applied for on December 30, 2002, for classes 9, 16 and 28; and U.S. 76404532 “CASINO DE MONTE-CARLO”, applied for on May 2, 2002, for classes 41 and 43 of the International Nomenclature.

4.2 The Panel has verified that the data contained in Annex A of the Complaint, where March 31, 2004, appears as the registration date for all the domains involved are true. The Respondent and owner of the domain names in question is “None”, domiciled in Englewood, Colorado, United States. Consequently, the identity of the owner of the domain names does not appear but his address coincides with the address of the administrative contact.

 

5. Parties’ Contentions

A. The Complainant

The Complainant alleges:

- That it is the founder of the Casino de Monte-Carlo and holds the monopoly for casino and gambling industries for the whole territory of the Principality, and has been operating for more than 140 years under the name “Casino de Monte-Carlo”.

- That it is the owner of the trademark CASINO DE MONTE-CARLO in the Principality of Monaco. It has also filed two US trademark applications for the same name.

- That the rights of the Socit des Bains de Mer et du Cercle des Etrangers Monaco in connection with the terms “casino” and “monte carlo” have been recognized by several decisions of the Center.

- That the domain names registered by the Respondent of March 31, 2004, are undoubtedly identical to the Complainant’s prior trademark.

- That the term “casino” in the prior trademark is completely reproduced in five of the seven domain names registered by the Respondent, and the terms “Monte-Carlo” are reproduced in all the seven domain names in dispute.

- That the addition of the term “grand” to one of the domain names in question does not detract from the similarity of the domain name to Complainant’s trademark, as this term can be easily associated to the gambling industry, since it forms part of the name of one of the most famous casinos of Las Vegas, the MGM Grand Las Vegas.

- That the addition of the term “sun” to four of the seven domain names of the Respondent referred to concepts such as farniente, beach and holidays, which are often associated with casino names, does not detract from the strong similarity of the domain names in dispute to the Complainant’s trademark, since the disputed domain names also include the words that form part of the trademark of the Complainant, “Monte Carlo” and “casino”. Furthermore, the Complainant has registered two domain names (<suncasinomontecarlo.com> and <sun-casino-monte-carlo.com>), as shown in Annex L, so that Respondent’s domain names could be associated with the With the Complainant.

- That the addition of the term “royale” to one of the seven domain names of the Respondent does neither detract from the strong similarity that exists to the Complainant’s prior trademark, as this term is also commonly used in casino names, associated to luxury. There is again the risk that the public associates the activities of the Complainant and the Respondent.

- That, even though the domain names and the trademark of the Complainant are not identical, they are confusingly similar because of the obvious references to casinos, luxury and Monte Carlo.

- That the Respondent has no rights or legitimate interests in the domain names, since, Respondent owns no trademarks including the terms “casino” and “MonteCarlo” (with or without dash, joined or separated,) in any jurisdiction as evidenced in Annex J.

- That, to the best of the knowledge of the Complainant, the Respondent has not used, and is not using, the domain names in dispute to offer any product or service related to gambling or any other type of business.

- That the Complainant has never authorized the Respondent to use its famous trademark CASINO DE MONTE-CARLO or to register or use the disputed domain names. Furthermore, the Complainant does not have any business relationship with the Respondent and, to the Complainant’s knowledge, the Respondent is not known for operating any business activities in the Principality of Monaco.

- That the Respondent seems to be American, has no link with the Principality and has not received any license or authorization from the authorities of the Principality of Monaco to operate a Casino in Monaco.

- That the domain names in dispute have been registered in bad faith, considering the renowned nature of the distinguishing mark CASINO DE MONTE-CARLO. Another proof of such bad faith is the fact that the owner of the domain names has not mentioned his identity in the Whois database.

- That the registration and use of the terms “casino” and “Monte-Carlo” in the domain names in dispute confuses the public in general as to the business origin of the owner of such domain names.

- That the domain names in dispute are obviously connected with the Complainant and its famous casino, and that the mere use by someone with no direct connection with the Complainant suggests bad faith and opportunism.

- That many decisions of the Center, among them one of the decisions included in Annex F, insist on the fact that “the monopolistic position of the Casino de Monte Carlo is an aggravation in this respect”.

- That given the strong notoriety of the Complainant’s trademark, the Respondent could not ignore that such registrations infringed the Complainant’s rights.

- That, in consequence, the Complainant requests that the domain names <monte-carlocasinos.net>, <monte-carlogrand.com>, <monte-carlosuncasino.com>, <montecarloroyale.com>, <montecarlosuncasino.com>, <suncasino-monte-carlo.com> and <suncasino-montecarlo.com>, be transferred to the Complainant.

B. The Respondent

The Respondent has not answered the Complaint.

 

6. Discussion and Findings

6.1. Applicable rules

Paragraph 15(a) of the Rules instructs this Panel to decide the Complaint on the basis of:

- The statements and documents submitted by the parties. In this case, the Respondent has not answered the Complaint and, therefore, only the statements of the Complainant will be taken into consideration.

- The provisions of the Policy and of the Rules.

- In accordance with any rules and principles of law deemed applicable by the Panel.

6.2. Examination of the prerequisites contained in paragraph 4(a) of the Policy to allow the complaint to proceed

Paragraph 4(a) of the Policy calls for proving the existence of the following requisites to allow the complaint to proceed:

- That the domain name registered by the respondent is identical or confusingly similar to a trademark of products or services on which the complainant is the owner of the rights.

- That the respondent has no rights or legitimate interests in respect of the domain name, and

- That the domain name has been registered and is being used in bad faith.

6.2.1. Identity or confusing similarity between the domain names and the Complainant’s trademarks.

The Complainant has evidenced that it is the owner of the trademark CASINO DE MONTE-CARLO, applied for on August 13, 1996, and registered on October30,1996, in the Principality of Monaco.

The Panel will examine the identity of or the similarity between such trademarks and the following domain names:

1. <monte-carlocasinos.net>,
2. <monte-carlogrand.com>,
3. <monte-carlosuncasino.com>,
4. <montecarloroyale.com>,
5. <montecarlosuncasino.com>,
6. <uncasino-monte-carlo.com>,
7. <suncasino-montecarlo.com>.

Seven of the Respondent domain names include the term “Monte-Carlo” and five of them also include the term “Casino”.

The addition of the term “sun” to domain names number three, five, six and seven, along with the terms “Monte-Carlo” and “casino” does not detract, in the opinion of the Panel, from the strong similarity to the Complainant’s trademark. In fact, such registrations reproduce the two terms on which the Complainant jointly holds exclusive rights. Consequently, the addition of the term “sun” cannot detract in any way from the existing similarity, especially due to the fact that this term is commonly used, as evidenced by the Complainant, in the casino industry, since it is a term that easily evokes farniente, beaches, holidays, etc.

Furthermore, the addition of the term “grand” to the domain name number two does not detract from the similarity to the Complainant’s trademark. The Complainant has sufficiently evidenced, in the opinion of the Panel, that such term is strongly linked to the casino industry. Such relationship is evidenced not only by the fact that a renowned casino of Las Vegas is identified with such term, but also due to the large number of entries found with the search engine “Google” when the terms “grand” and “casino” are independently entered, or the joint term “grand casino” (such fact is also confirmed by the circumstance that the “Casino Gran Madrid”, located in Madrid, includes in its name the translation of the term “grand” into Spanish). This Panel has verified, through these searches, that this term is commonly used in the casino industry and, consequently, the addition and association of “grand” to the term “Monte-Carlo” evokes the Casino de Monte-Carlo.

At this point, it should be clarified that while the Complainant will never enjoy an exclusive right to the geographical name “Monte-Carlo”, since such terms belong to the public domain and, therefore, are not available for a particular use, it should be understood that the use of such term, along with certain references or suggestive terms can lead the consumer to automatically think of the services or trademarks of the Complainant and, consequently, the owner of the trademark should be able to prevent the use of such combination, since the consumer might incur in a risk of confusion with respect to the business origin of the domain name that includes such suggestive combination.

Therefore, the Panel considers that the use of the term “Grand” in the disputed domain name suggests a link with the Casino de Monte-Carlo and, furthermore, that it is similar to the trademark of the complainant.

In the context of the domain name number four, the Panel also considers that there is a similarity with the trademark of the Complainant since the term “royale” is normally included in casino names as an indication of luxury and refinement. This point has been evidenced and declared by the Complainant not only through the search made with the search engine “Google”, but also through the existence in Las Vegas of a Hotel Casino that includes the term “royale” in its name. For this reason, the Panel considers that the addition of “royale” to the term “Monte-Carlo” does not eliminate the risk that the public could mix up the origin of the disputed domain name and the services of the Complainant.

The same is applicable with respect to the geographical name “Monte-Carlo” mentioned in the previous paragraph, in the sense of construing that the term “royale”, used jointly with such geographical name, suggests a link with the casino industry and, consequently, it is appropriate to consider the disputed domain name similar to the trademark of the Complainant.

In consequence, the first requisite called for by Paragraph 4(a)(i) of the Policy should be considered as met with respect to the seven disputed domain names.

6.2.2 Rights and legitimate interests

This Panel takes into account many decisions in the context of domain names that use the “Casino de Monte-Carlo” trademark of the Complainant, (for instance, Societ des Bains de Mer et du Cercle des Etrangers Monaco v. Britania Finance et al, WIPO Case No. D2000-1315; Socit des Bains de Mer et du Cercle des Etrangers Monaco v. Internacional Lotteries et al., WIPO Case No. D2000-1327; Socit des Bains de Mer et du Cercle des Etrangers Monaco v. Internacional Services Inc. et al., WIPO Case No. D2000-1328). The exclusive rights derived from the registration of the trademark of the Complainant also cover the combination of the words “Casino” and “Monte-Carlo”, considered jointly and not individually, so that the use of the two terms together could provide confusion in the mind of the consumer to “Casino de Monte-Carlo”.

The Complainant maintains that the Respondent has no rights or legitimate interests in the disputed domain names, because (1) the Respondent does not hold any industrial or intellectual property rights on the terms used in such domain names, (2) the domain names are not being used for a bona fide offering of a product or service, and (3) the Respondent does not hold any authorization or license to use the domain names.

On its part, the Panel, to determine the existence of rights or legitimate interests, should consider Paragraph 4(c), in connection with Paragraph 4(a)(ii) of the Policy, which establishes a series of non-exclusive circumstances that might illustrate the respondent’s rights. Therefore, it could be considered that a right or legitimate interest exists if, before receiving the notice of the complaint: the respondent uses the domain name or has prepared its use; or uses a name corresponding to the domain name through which the respondent offers a bona fide offer of products or services; the respondent is already known by such domain name, even though he has no trademark rights; or the respondent makes a legitimate non-commercial use of the domain name without any intention of confusing consumers or damaging the good name of the trademark for making a profit.

The behavior of the Respondent is not only not covered by any of these assumptions but, on the contrary, what he intends is to take advantage of the appeal of these domain names to automatically redirect the surfer to an Internet-related commercial site, with the clear intention of making a profit.

Furthermore, the Respondent has not taken an active role in the proceeding, failing to provide reasons that evidence his interest or proper right on the disputed domain names.

Similarly, and as affirmed in the Complaint, it is evident that the Respondent has no rights, license or authorization for the trademark that reproduces the domain names in dispute.

These considerations lead the Panel to conclude that the second requisite of Paragraph 4(a)(ii) of the Policy has been met.

6.2.3 Registration and Use in Bad Faith

It is necessary to separately analyze whether the requisites of registration and use in bad faith occur, considering the special circumstances of the case.

6.2.3.1 Registration in Bad Faith

Even though Paragraph 4(a)(iii) of the Policy makes no reference to the need for the trademark right of the complainant to be prior to the date of registration of the domain name, it is evident that, to affirm that there has been bad faith in the registration, the complainant should show that the respondent knew, before the registration of the domain name, the right of the complainant on the mark, and took advantage of this circumstance to unduly take possession of a confusingly similar name, in order to hinder the access to the internet by this latter or for other bad faith purposes. In this respect, Highlight Communications AG v. Auto System Inc., WIPO Case No. D2000-0512. is very illustrative. This decision deals with whether rights acquired subsequently could suggest that a registration of a domain name was made in bad faith. The decision concludes by saying that, even though the Policy does not expressly state it, it should be considered that this issue must be examined when deciding if the registration has been made in bad faith.

Similarly, as supported by Vidisco, S.L. v. Roberto Manso Esteban, WIPO Case No. D2001-0685, to enable the Panel to become convinced that the domain name has been registered in bad faith, it is necessary to evidence that the behavior of the respondent, at the time of applying for the registration of the domain name, was affected by a two-fold component:

- a prior knowledge of the existence of the trademark of a third party; and

- the desire to take advantage of the lack of registration of such name as a domain, in respondent’s own interest.

Consequently, to enable the Panel to reach a conclusion with respect to the existence or non-existence of bad faith when registering the disputed domain names, it is necessary to examine the situation of the rights of the Complainant at the time of the registration, and the eventual knowledge of such right by the Respondent when he registered the domain names.

In this case, the Complainant has evidenced that it applied for the CASINO DE MONTE-CARLO trademark on August 13, 1996, and that the trademark was registered in the Principality of Monaco on October 30,1996. Therefore, such trademark existed prior to the registration of the disputed domain names.

Similarly, this Panel considers that, taking into account the renown of Casino de Monte-Carlo worldwide, the Respondent can not, allege its ignorance of the trademark of the Complainant.

Once this prior question has been analyzed, paragraph 4(b) of the Policy, which establishes the circumstances that lead to understand the existence of bad faith in the registration and use of the domain name in question, should be examined if it is evidenced that the respondent has registered and is using such domain name (1) to sell, rent or assign the registration for a certain value, (2) to prevent the owner of the trademark from holding it as a domain name, (3) to disrupt the commercial activities of a competitor or (4) to attract Internet users, for making a profit, by creating confusion with the trademark of a competitor.

In the opinion of the Panel, the object of the registration on the part of the Respondent was to attract users to a general commercial website located at “www.web.com”. In fact, the seven domain names redirect users to the page, which offers different Internet-related services, such as the design of web pages, web hosting, etc.

There is no evidence that the portal to which the disputed domain names are redirected is owned by the Respondent, but as the Respondent does not have a name, it could well belong to him, since it is obvious that the aim, when redirecting to a commercial page, is to attract surfers to a page with the object of making a profit.

This Panel considers that the lack of an answer on the part of the Respondent is a further evidence of the fact that the only intention of the Respondent has been to register domain names linked to the activities of Casino de Monte-Carlo and, consequently, to take advantage of the renown enjoyed by the trademark of the Complainant since 1996, for the sole benefit of the Respondent.

Similarly, it is also necessary to state that the bad faith of the registration is confirmed by the fact that the Respondent has registered domain names very similar to those used by the Complainant.

In fact, the Complainant owns the domain names <suncasinomontecarlo.com> (registered on April 7, 2000) and <sun-casino-monte-carlo.com> (registered on April3,2000), which are being actively used by the Complainant. Consequently, it is evident that the disputed domain names that include the term “sun” have been registered with the only intention of being as similar as possible as those already used by the Complainant this evidences the bad faith of the Respondent when registering all the domain names under consideration since, undoubtedly, the only intention is to offer combinations of domain names that always recall the famous Casino de Monte-Carlo, thus taking advantage of its renown and prestige.

6.2.3.2 Use in bad faith

In the context of whether the domain names have also been used in bad faith, we have to refer to the principle already established in many decisions. Such principle sets out that the party that makes a registration in bad faith and without a legitimate interest is also using the domain name in bad faith. (J. Garca Carrin v. Maria Jos Cataln Fras, WIPO Case No. D2000-0239 Port Aventura, S.A. v. Miguel Garca Quintas, WIPO Case No. D2000-0751, Real Madrid Club de Ftbol v. Lander W.C.S., WIPO Case No. D2000-1805).

Furthermore, the fact that the Respondent redirects all his domain names to the “www.web.com” site, devoted to Internet-related services represents, in the opinion of the Panel, a use of such services that is not in good faith.

In fact, the Respondent uses the domain names, that include the terms of the trademark of the Complainant, to redirect consumers to a portal which has nothing to do with the Casino de Monte-Carlo, but that renders different Internet-related services, so that the Respondent is evidently taking advantage of the knowledge of such distinguishing mark by the public in general to attract the public with subterfuges to a portal that develops a business completely different from the activities by which the Casino de Monte-Carlo is known.

In summary, the conclusion of this Panel is that such redirectioning implies bad faith in the context of the use of the domain names in dispute, on the basis of the third requirement under paragraph 4(a)(iii) of the Policy.

 

7. Decision

Based on the above findings and conclusions, this Panel decides that the Complainant has evidenced the existence of the three elements necessary set out in paragraph 4(a) of the Policy and, consequently, on the basis of paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the registration of the domain names <monte-carlocasinos.net>, <monte-carlogrand.com>, <monte-carlosuncasino.com>, <montecarloroyale.com>, <montecarlosuncasino.com>, <suncasino-monte-carlo.com>, <suncasino-montecarlo.com>, be transferred to the Complainant, Socit Anonyme Des Bains De Mer Et Du Cercle Des Etrangers A Monaco.

 


 

Mara Baylos
Sole Panelist

Dated: August 3, 2004