WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
La Société des Bains de Mer et du Cercle des Etrangers à Monaco v CCX (Monacogoldonlinecasino-Com-Dom)
Case No. D2007-0980
1. The Parties
The Complainant is La Société des Bains de Mer et du Cercle des Etrangers à Monaco, of the Principaute de Monaco, represented by De Gaulle Fleurance & Associes, Paris, France.
The Respondent is CCX (Monacogoldonlinecasino-Com-Dom), Tamarac, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <monacogoldonlinecasino.com> is registered with Dotregistrar.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 4, 2007. On July 6, 2007, the Center transmitted by email to DSTR Acquisition VII LLC d/b/a Dotregistrar.com a request for registrar verification in connection with the domain name at issue. On July 7, 2007, DSTR Acquisition VII LLC d/b/a Dotregistrar.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 July 16, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 5, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 7, 2007.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on August 20, 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
The Complainant operates the Casino de Monte Carlo in the Principality of Monaco and has done so for 140 years. The Complainant has been granted the exclusive right to operate gambling and casino activities in the Principality of Monaco, last renewed by “Ordonnance Souveraine” No 15.732 of 13 March 2003. The Complainant’s international word mark CASINO DE MONACO was registered on December 19, 2002 for goods and services within a number of international classes (9, 16, 28, 41). The Complainant filed an application for a United States federal trademark registration on December 24, 2002, the trademark CASINO DE MONACO being there registered on December 20, 2005 for goods and services within a number of classes (US 02, 21, 22, 100). The Complainant also holds the word mark CASINO DE MONTE CARLO in Monaco and by an international registration.
The domain name at issue was registered on November 29, 2004 and last updated on November 30, 2006. The registration is set to expire on November 29, 2007.
5. Parties’ Contentions
The official name of the Complainant’s casino is in fact the ‘Casino de Monte Carlo’ and not the ‘Casino de Monaco’. However, as well as putting in evidence its trademark registrations for ‘Casino de Monaco’, the Complainant contends that the Casino is frequently referred to in varying publications, some of which are put in evidence, as the CASINO DE MONACO. It is commonly so referred to by the public which views the terms ‘Monte Carlo’ and ‘Monaco’ (the former being in fact a district of the latter) as coextensive or interchangeable. Previous Panels have similarly arrived at the conclusion that domain names including ‘Monaco’ and ‘Casino’ are confusingly similar to the trademark ‘CASINO DE MONTE CARLO. In any case the domain name at issue is confusingly similar to the Complainant’s trademarks as it incorporates both words ‘Casino’ and ‘Monaco’, in an order inverting the French usage but consistent with the English equivalent. The addition of the generic term ‘gold’ does not render the domain name legally dissimilar, and the term ‘gold’ is in any case closely associated with good fortune and thus the aspirations of gamblers. The addition of that term thus does nothing to distinguish the domain name from the Complainant’s trademarks and reputation and rather reinforces confusion. Conclusions to that effect have been reached by previous Panels in analogous disputes. Nor does the addition of the generic term ‘online’ render the disputed domain name legally different from the Complainant’s trademarks as it merely suggests that an Internet version of the Complainant’s Casino is accessible online via the website to which the domain name resolves. Panels have previously concluded that the mere addition of the term ‘online’ does not render a domain name dissimilar from a trademark.
The Respondent has no license or authority from the Complainant to use its trademarks, has no registration for the trademarks, has no geographical link with Monaco, and has not used the trademark in a bona fide manner. The website associated with the domain name is identical to another online casino that was associated with the domain name <monacogoldcasino.com> which was at issue in Panel decision Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Empire Online Ltd, WIPO Case No. D2006-0289. The website is constructed so as to reinforce the impression of a connection with the real world Casino in Monaco, which is evidence of bad faith and does not constitute a bona fide offering of goods or services.
The Respondent is a professional online casino operator with a number of other online gambling businesses. The Respondent could not fail to be aware of the Complainant’s rights, nor of the Complainant’s strong defence of its rights and reputation. The Complainant had obtained the transfer of the domain name <monacogoldcasino.com> and the closure of the online operation MonacoGoldCasino. The Respondent’s choice of the domain name could in these circumstances not be fortuitous or accidental but was deliberate and in bad faith. Various images and stratagems (such as the chance to win a trip to Monaco) used on the website reinforce the impression that there is a connection between the Respondent’s website and online gambling operation and the Complainant’s casino in Monaco, demonstrating use in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The domain name at issue incorporates the Complainant’s mark CASINO DE MONACO, except for the ‘de’. The terms ‘Casino’ and ‘Monaco’ are also inverted and the ordinary English words ‘gold online’ have been inserted in between. The trademark and the domain name are not identical. However, ordinary English language usage would commonly translate ‘Casino de Monaco’ as the ‘Monaco Casino’, and thus the inversion of those terms in the domain name has no real distinguishing effect. Nor does the addition of the term ‘gold’, as it rather reinforces the association of the domain name with gambling and hence with casinos. The term ‘gold’ in this context evokes inter alia striking it lucky and the sudden acquisition of wealth, all consistent with popular perceptions regarding gambling and casinos. Previous panels have come to similar conclusions: see most relevantly the decision in case Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Empire Online Ltd., WIPO Case No. D2006-0289 relating to <monacogoldcasino.com>. The further addition of the term ‘online’, associated as it is with the very environment the domain name operates in, has no distinguishing effect, and merely reinforces the impression that the domain name is associated with an online version of the real world casino operated by the Complainant.
The Panel concludes that the disputed domain name is confusingly similar to the Complainant’s mark CASINO DE MONACO.
B. Rights or Legitimate Interests
The Respondent has no apparent association with, nor any license or authority from the Complainant to use its trademarks, nor did a search by the Complainant, the results of which are in evidence, reveal that the Respondent owns any registered trademarks incorporating the relevant terms. The Respondent has no apparent geographical connection with Monaco, nor any official Monegasque authorization in relation to conducting a casino, and so has no legitimate interests in using the geographical term on any such basis. The domain name does not reflect the Respondent’s own name, as given in the WHOIS record. Although the Respondent may well have a claim to the use of the term ‘casino’ for the purposes of a bona fide online gambling businesses, this would not extend to the use of the distinctive name ‘Monaco’. Any putative claim to bona fide use is further undermined by the Respondent’s carrying on an online gambling business at the website to which the domain name resolves, where it reinforces the suggestion of a connection with the Casino in Monaco by use of images of and references to the latter, resulting in an impression of a connection which does not in fact exist. In any case, the burden of proof as to bona fide use is (in light of the Complainant’s prima facie case) on the Respondent, and the Respondent has not made a response of any kind.
The Panel therefore holds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Monte Carlo Casino is world renowned, certainly amongst persons interested in gambling and casinos in general. The Casino is also often referred to and commonly known as the Monaco Casino or ‘Casino de Monaco’, as the Complainant establishes by its evidence. The terms are used interchangeably by the public. The Respondent also operates what the Complainant refers to as an ‘ecash company’ for many online casinos. It appears to exploit different websites relating to online casinos, and it operated a website with identical features to the one under consideration here under the domain name <monacogoldcasino.com> which it was ordered to transfer to the Complainant by a previous Panel decision. It is thus inconceivable to this Panel that the Respondent was not aware of the Complainant’s trademarks and reputation, and further of its determination to protect its rights to the exclusive use of the relevant terms. The registration of the domain name at issue was therefore in bad faith.
The website to which the disputed domain name resolves offers online gambling services. It is thus in the same business of gambling services as the Complainant which operates the Casino at Monaco/Monte Carlo. Various images and references used on the Respondent’s website are apt to reinforce the suggestion of a connection with the Complainant’s casino in Monaco: an image of the Casino; the chance to win trips to Monaco; text referring to Monaco and Monte Carlo and suggesting a gambling experience of typically Monegasque luxury and prestige. This amounts to behavior falling within the Policy’s article 4 (b) (iv) in that the Respondent has by using the domain name intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or the services there offered.
The Panel therefore holds that the Respondent has registered and used the domain name in bad faith.
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, <monacogoldonlinecasino.com> be transferred to the Complainant.
William A. Van Caenegem
Dated: September 3, 2007