WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
La Societe des Bains de Mer et du Cercle des Etrangers à Monaco v. Darksea Consultants Limited
Case No. D2007-0747
1. The Parties
The Complainant is La Societe des Bains de Mer et du Cercle des Etrangers à Monaco, Monte Carlo, Monaco, represented by De Gaulle Fleurance & Associés, France.
The Respondent is Darksea Consultants Limited, Nicosia, Cyprus.
2. The Domain Name and Registrar
The disputed domain name <monaconightscasino.com> is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2007. On May 25, 2007, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On May 25, 2007, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 4, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 24, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 28, 2007.
The Center appointed Knud Wallberg as the sole panelist in this matter on July 2, 2007. 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 holds the international word mark CASINO DE MONACO, which was registered on December 19, 2002, and the international trademark CASINO DE MONTE-CARLO, registered on January 21, 2002. Both of these international trademarks have been designated and are registered in a number of countries.
The Complainant further holds the United States Federal trademark CASINO DE MONACO, filed on December 24, 2002 and published for Opposition on March 1, 2005.
The Complainant is the founder and manager of the Casino de Monte-Carlo in Monaco and has been operating Casino de Monte-Carlo in Monaco for more than 140 years. Since April 2, 1863, the Complainant has been granted by the authorities of Monaco a monopoly for casino and gambling industries for the territory of Principauté de Monaco and is the sole company that can organize games and gambling in Monaco.
According to the information provided by the Complainant the Respondent is a company active in the online gambling market.
5. Parties’ Contentions
The Complainant alleges that the domain name <monaconightscasino.com> is confusingly similar to the trademark CASINO DE MONACO. The fact that the order of the nouns in the mark has been inverted does not render the domain name dissimilar. Nor does the addition of the generic term “nights” render the disputed domain name legally different from the Complainant’s trademarks as stated in previous decisions under the UDRP involving the Complainant.
The Complainant further alleges that the Respondent has no rights or legitimate interest in respect of the domain name. To the best of Complainant’s knowledge, Respondent holds no intellectual property right over any trademark that contains the terms “casino” and “Monaco”. The Respondent has not received any license or authorizations from the authorities of Monaco to operate a casino in Monaco. The Complainant has never authorized Respondent to use its 140 year old famous mark CASINO DE MONACO or CASINO DE MONTE-CARLO, nor to register or use the disputed domain name. The Complainant does not have any type of business relationship with Respondent.
With respect to the condition that the domain name was registered and is being used in bad faith, the Complainant argues that the Respondent is a professional in the gambling business and that Respondent, as a professional, could not ignore that the registration and use of the disputed domain name would violate Complainant’s rights, in light of the strong notoriety and world renown of the Complainant’s trademarks. The Complainant further refers to Complainant’s website, on which a photo of Complainant’s land-based casino is included and where there is also a depiction of an emblem which is very similar to the official emblem of the Principauté de Monaco. Further, the design of the website bears resemblance to the Complainant’s own website such as in the choice of background colours. This clearly leads the viewer to believe that there is some connection between the casino located in Monaco and the Respondent’s website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements are satisfied:
(i) the domain name is 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 in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <monaconightscasino.com> is confusingly similar with the trademark CASINO DE MONACO. The disputed domain name incorporates the two distinctive (dominant) parts of Complainant’s trademark, namely the nouns “Monaco” and “Casino”. The addition of the term “nights” does not imply that the domain name is distinguished from the trademark to the effect that confusion is avoided. Reference is made to previous decisions under the UDRP such as La Société des Bains de mer et du Cercle des Etrangers á Monaco v. Empire Online Ltd., WIPO Case No. D2006-0289, concerning the domain name <monacogoldcasino.com> and La Société des Bains de mer et du Cercle des Etrangers á Monaco v. Domain Active Pty. Ltd., WIPO Case No. D2005-0527, concerning the domain name <montecarloresort-casino.com>.
In conclusion, the Panel finds that the Complainant has proved that the condition under the Rules, paragraph 4(a)(i) is fulfilled.
B. Rights or Legitimate Interests
The Complainant alleges that the Respondent has no rights or legitimate interests in the domain name. The Respondent has not rebutted this allegation and, based on the record of this case, it is unlikely that any such rights or interests may exist.
The Complainant has thus not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the Complainant’s trademark.
Further, the Panel is of the opinion that the Respondent’s use of the domain name has not been in connection with a bona fide offering of goods or services. On the contrary, it seems clear form the design and content of the corresponding website, which contains picture of Complainant’s casino in Monaco and an imitation of the official emblem of the Principauté de Monaco that Respondent intentionally utilizes, without having the right to do so, the goodwill vested in the Complainant’s trademarks.
The requirements of the Policy, paragraph 4(a)(ii), are also considered fulfilled.
C. Registered and Used in Bad Faith
The Respondent is active within the international gambling industry and in light of the Complainant’s fame and more than hundred years of existence it is inconceivable that the Respondent was not aware of the Complainant and Complainant’s activities under the name Casino de Monaco. Further, due to the renown of the Complainant, the Panel finds that the Respondent could not have been unaware of the fact that it chose a name which could attract Internet users in a manner that creates the possibility of confusion for the consumer as to whether the site is associated with the Complainant and “Casino de Monaco” or not.
In addition, the Panel points to the text on the Respondent’s website, quoted under Section B above. This indicates that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion to the Complainant’s trademark, cf. Rules, paragraph 4(b)(iv).
The Panel concludes that the Complainant has shown that the third condition under the Policy is fulfilled.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <monaconightscasino.com>, be transferred to the Complainant.
Date: July 6, 2007