WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

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

Case No. D2004-0454

 

1. The Parties

1.1 Complainant: Socit des Bains de Mer et du Cercle des Etrangers Monaco, Monte Carlo, Principality of Monaco.

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

1.2 Respondent: Best Creative, Tel Aviv, Israel, with no representative appointed.

 

2. The Domain Name and Registrar

2.1 The dispute concerns the domain name <montecarlo-casinos.com>.

2.2 The registrar with which the domain name is registered is eNom, 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 18, 2004. The Center acknowledged receipt on June 18, 2004.

3.2 The registration was verified on June 18, 2004. On June 22, 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 July20, 2004, she was appointed once the declaration was received.

3.4 Language of the proceeding. The complaint was filed in the 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 agreement is English, the Panel, using the faculties granted by paragraph 11(a) of the Rules, considers that the language of the proceeding must be English.

 

4. Factual Background

It is considered evidenced, since it is supported by documents or statements not contested by the Respondent, that 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 application dated December 30, 2002, for the U.S. Trademark US 76479351 CASINO DE MONTE-CARLO for classes 9, 16 and 28 of the International Nomenclator.

 

5. Parties’ Contentions

A. The Complainant

The Complainant basically alleges:

- That it is the founder of the Casino de Monte-Carlo, 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 a US trademark application 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. Furthermore, the Center has already recognized the rights of the Complainant in its decision related to the domain name <montecarlocasinos.com>.

- That the Respondent has no rights or legitimate interests in the domain name <montecarlo-casinos.com> since the Respondent owns no trademarks including the terms “casino” and “Monte Carlo” in any jurisdiction as evidenced in Annexes G and H of the complaint.

- That, to the best of the knowledge of the Complainant, the Respondent has not used, and is not using, the domain name in dispute to offer any product or service related to gambling or any other type of activity; it offers its sale.

- That the Respondent resides in Israel, 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 name <montecarlo-casinos.com> has been registered and is being used in bad faith. Thus, when typing on the Internet the domain name in dispute, the surfer is redirected to the “www.sedo.com” site, where the Respondent requests bids to sell the domain in question, as evidenced in Annexe I of the complaint.

- That, when the Complainant offered the sum of €100 to purchase the domain, the Respondent made a counteroffer of €900. At the time of filing the complaint, the price was €400.

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

- That the main activity of Mr. Shmuel Sharon and his company, Best Creative, seems to be trading domain names, since this is indicated in the second name of the company, “Domains for sale” (as evidenced in Annexe M) and, even though the registering of and trading of domain names are legitimate activities, this is not the case when dealing with domain names that correspond to well known trademarks.

- That, in consequence, the Complainant requests that the domain name <montecarlo-casinos.com>, subject of this complaint, be transferred to the Complainant.

B. The Respondent

The Respondent did not respond to 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 did not respond to 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 of or confusing similarity between the domain name 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 October 30, 1996, in the Principality of Monaco.

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

<montecarlo-casinos.com>

The disputed domain name includes the two terms to which the Complainant jointly holds exclusive rights “Monte-Carlo” and “Casino”.

The change in the order of the terms “Casino” and “Monte-Carlo”, the elimination of the dash in the name “Monte-Carlo” and the replacement of the word “de” by a dash in the domain name in dispute are not sufficient to prevent the risk of confusion with the trademark. Therefore, the Panel considers that the domain name is similar to the trademark of the Complainant.

The suffix “.com” is not sufficient to differentiate the trademark of the Complainant and the domain name, since this is a compulsory indication of a First Level Domain.

In consequence, the first requisite called for by paragraph 4(a)(i) of the Policy should be considered as met.

6.2.2 Rights or legitimate interests

The Panel must take into account the 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. Britannia Finance et al., WIPO Case No. D2000-1315; Societ des Bains de Mer et du Cercle des Etrangers Monaco v. International Lotteries et al, WIPO Case No. D2000-1327; Societ des Bains de Mer et du Cercle des Etrangers Monaco v. International 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 prevent confusion in the mind of the consumer with the “Casino de Monte-Carlo”.

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

On its part, the Panel, to determine whether 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 or 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 Panel considers that none of these circumstances exist in the current case. On the contrary, the Respondent is only interested in the domain name to obtain profits through its sale. In fact, the Complainant has evidenced that the domain name was automatically redirected to a site that hosts domains for sale, and an offer has been made to the Complainant for a price much higher than the out-of-pocket expenses. This evidences that the Respondent has no rights or legitimate interests in the domain name, and that the Respondent only intends to make profits using the renown of the Complainant’s trademark.

Furthermore, the fact that the Respondent has not appeared in the proceeding shows his lack of interest, since he has not even tried to give reasons that might justify any right in the domain name in question.

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 name in dispute.

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

6.3.1 Registration and use in bad faith

It is necessary to separately analyse 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 to the mark, and took advantage of this circumstance to unduly take possession of a confusingly similar domain name known as a property of the Complainant. 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 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 judging 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 was registered in bad faith, it is necessary to evidence that the behaviour of the Respondent, at the time of applying for the registration of the domain name, was affected by a twofold 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 name, 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 name.

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 name.

Similarly, this Panel considers that, taking into account the renown of Casino de Monte-Carlo worldwide, the Respondent can never, in any case, allege the ignorance of the trademark of the Complainant.

Once this question has been analyzed, paragraph 4(b)(i) of the Policy, states that bad faith has occurred if it is shown 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.

At this point, it should be pointed out again that the Complainant has evidenced that the disputed domain name redirected, on June 7, 2004, to a site for the sale of domain names, expressly stating on the site, in French, that “the domain name is on sale”. (Annexe I).

Similarly, the Complainant has evidenced that the system used to sell this domain name was through on-line auctions (Annexe J).

However, it should be pointed out that, even though as at the date of this decision the disputed domain name does not redirect to any site, it is considered that it has been sufficiently evidenced that, at the time of filing the complaint, the redirection existed and, therefore, that date is the one that the Panel should take into account to assess and analyse the registration and use made of the domain name in question.

Consequently, it is evident for the Panel that the only intention of the Respondent when registering this domain name was to take advantage of the fame and prestige of the trademark of the Complainant, in order to obtain a profit by a sale of the disputed domain name.

That registering a domain name in order to sell it for an amount exceeding the out-of-pocket expenses, as occurred in this case is bad faith, has been acknowledged by the following decisions, among others: Reckitt Benckiser AG v. Nazim Oren, WIPO Case No. D2002-0286; Z-Tel Technologies, Inc., v. Domain Deluxe, WIPO Case No. D2001-1427; ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425; BellSouth Intellectual Property Corporation v. Jaclyn aka Jaclyn Thoms, WIPO Case No. D2001-1409.

Therefore, the conclusion of this Panel is that the registration was made in bad faith.

6.2.3.2 Use in bad faith

In the context of whether the domain name has also been used in bad faith, we have to refer to the principle already established in many decisions. Such decisions set out that the party that makes a registration in bad faith and without a legitimate interest is also using the domain 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).

Moreover, in this case, the use in bad faith is evidenced by the fact that the disputed domain name was redirected to a page for the sale of domain names through the system of online auctions, i.e., for a price exceeding the out-of-pocket expenses of the holder. This circumstance is also of paramount significance to evidence the existence of bad faith use of the disputed domain name.

In summary, the conclusion of this Panel is that both the registration of the domain name in question and its use have been made in bad faith. Consequently, the third requisite called for by Rule 4(a)(iii) of the Policy has been met.

 

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 domain name <montecarlo-casinos.com> be transferred to the Complainant.

 


 

Mara Baylos
Sole Panelist

Dated: August 3, 2004