WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Socit des Bains de Mer et du Cercle des trangers Monaco v. Michael Svendsen

Case No. D2007-1492

 

1. The Parties

The Complainant is Socit des Bains de Mer et du Cercle des trangers Monaco, of Monte Carlo, Monaco, represented by De Gaulle Fleurance & Associs, France.

The Respondent is Michael Svendsen, Herlev, Denmark.

 

2. The Domain Names and Registrar

The disputed domain names <monacocasino.name> and <monacogoldcasino.name> are registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2007. On October 12, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On the same day, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and inter alia confirming that the Uniform Domain Name Dispute Resolution Policy applies to both of the domain names. 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 October 16, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 5, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 6, 2007.

The Center appointed Thomas Hoeren as the sole panelist in this matter on November 21, 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 Socit des Bains de Mer has been operating the Casino de Monte Carlo in Monaco for more than 140 years at the date of this complaint. The Socit des Bains de Mer is the founder and manager of the Casino that has been granted by the authorities of the Principaut de Monaco a monopoly for casino and gambling industries for the territory of the Principaut de Monaco, and is therefore the sole company that can organize games and gambling in Monaco (Privilege des Jeux, renewed for the last time by the Ordonnance Souveraine n 15.732 of March 13, 2003, a copy of this Ordonnance is attached at Annex [C]).

The Complainant has registered several trademarks including the international word mark “CASINO DE MONACO” which was registered on December 19, 2002, and the comparable United States Federal trademark application filed on December 24, 2002.

 

5. Parties’ Contentions

A. Complainant

The Complainant makes the following allegations: The domain names <monacocasino.name> and <monacogoldcasino.name> are nearly identical to the trademarks owned by the Complainant.

Furthermore, the Complainant also submits that the Respondent has no rights or legitimate interests in respect of the domain names in dispute: The Respondent is not a franchisee or otherwise affiliated with the Complainant; he has not registered any trademark including the words “casino” and “monaco” in the United States of America or any of the European countries.

Finally, the Complainant submits that the dispute domain names in question were registered and are being used in bad faith by the Respondent. The Respondent is a professional in the gambling business. Apart from the disputed domain names, the Respondent has registered at least one other domain name used in relation with online gambling, <newcarribeancasino.com>. Where entering the disputed domain names into an Internet browser, Internet users are automatically redirected to an online casino, the “Lucky Nugget Online Casino” situated at “www.luckynugget.com”. Such use of the disputed domain names to point to an unrelated online casino clearly demonstrates that the Respondent has intentionally attempted to attract Internet users to an on-line location by creating a likelihood of confusion with the Complainant’s trademarks.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:

“A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it seems applicable.”

Paragraph 4(a) of the Policy states that, for a complaint to be granted, the Complainant must prove each of the following:

(i) that the domain name registered by the Respondent is identical or confusingly similar to the trademarks or service marks in which the Complainant has rights; and

(ii) that the Respondent has no rights or no legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is used in bad faith

A. Identical or Confusingly Similar

The disputed domain names are similar to the Complainant’s trademarks since it consists in the use of the similar Complainant’s prior trademarks. The WIPO Panel already stated in a similar matter Socit des Bains de Mer et du Cercle des Etrangers Monaco v. Darksea Consultants Limited, WIPO Case No. D2007-0747 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 distinctiveness of these terms have been contested in the case Socit des Bains de Mer et du Cercle des Etrangers Monaco v. Lucan Toh and Max Wright ( WIPO Case No. D2007-0249 - <casinograndmonaco.com> et. al.).

Though the disputed domain names are not identical to the trademarks owned by the Complainant, they are confusingly similar to the Complainant’s trademarks. In comparing Complainant’s marks to the domain name, the prefix “www” is not to be considered a factor of differentiation as it has no distinguishing capacity when included in a domain name, being the acronym of “world wide web” (see Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; Ticketmaster Corporation v. Woofer Smith, WIPO Case No. D2003-0346).

The inversion of the order of the two terms and the omission of the preposition “de” merely reflects a difference in usage or placement of the adjectively used term (monaco) in relation to the principal term (casino) between the French and the English language (see La Socit des Bains de Mer et du Cercle des Etrangers Monaco v. Domain Active Pty. Ltd., WIPO Case No. D2005-0527 regarding the domain name <montecarloresortcasino.com>).

The addition of the generic term “gold” in the disputed domain name <monacogoldcasino.name> does not render this domain name legally different from the Complainant’s trademarks. As the Complainant demonstrated, the term “gold” is usually associated with wealth and luck much in the same way as casinos. Gold diggers were considered lucky when they found gold as this gave them wealth. In previous times money was measured in the metal value of coins and the gold coins were the most valuable. The casino business is also associated with wealth because of the casinos’ typically prestigious and luxurious interiors. Therefore, a number of WIPO Panels decisions have already taken the view that the addition of the generic term “gold” to a registered trademark does not render such a domain name dissimilar (cf. Socit des Bains de Mer et du Cercle des Etrangers Monaco v. Empire Online Ltd, WIPO Case No. D2006-0289, <monacogoldcasino.com> and Sharman License Holdings, Limited v. Kazagold, WIPO Case No. D2004-0396, <kazaagold.com> and <kazaa-gold.com>).

The Panel finds that the Complainant has proven that the domain names in dispute is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

The Respondent of the disputed domain names has not filed any Response to the Complaint filed. Consequently, the Respondent has not alleged any facts or elements to justify prior rights or legitimate interests of the said domain names. As the complainant demonstrated, no trademarks including the words “Casino” and “Monaco” have been registered by the Respondent in neither the United States of America nor any of the European countries, including Denmark, the Registrant’s country of residence.

Furthermore, the Complainant does not appear to have authorized the Respondent to use its trademarks and in particular to register a domain name composed of the Complainant’s trademarks. The Respondent uses the disputed domain names to divert, for commercial gain, Internet traffic to an online casino not connected in any way to the Complainant’s land-based casino, the “Royal Vegas Online Casino”. The use of the domain name at issue to redirect Internet users to other websites does not of itself constitute a legitimate interest in the domain name (cf. AltaVista Company v. Andrew Krotov, WIPO Case No. D2000-1091, <altavisga.com>; Liseberg AB v. Administration Local Manage Technical, WIPO Case No. D2003-0864, <liseberg.com>).

Thus, the Panel concludes that the Respondent has no rights or legitimate interests, within the meaning of paragraph 4(a)(ii) and (c)(i-iii) of the Policy in respect of the disputed Domain Names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out that certain circumstances may, “in particular but without limitation”, be evidence of bad faith. Here, the Respondent is free riding on the reputation and goodwill embodied in the Complainant’s trademarks in order to attract Internet users for commercial gain and therefore falls within the example given in the Policy’s Paragraph 4(b)(iv).

Because of the strong notoriety and world renown of the Complainant’s trademarks, the Respondent, who appears to be a professional in the online gambling business, could not ignore that the registration and use of the disputed domain names would violate the Complainant’s rights. When entering the disputed domain names into an Internet browser, Internet users are automatically redirected to an online casino, the “Lucky Nugget Online Casino” situated at “www.luckynugget.com”. Such use of the disputed domain names to point to an unrelated online casino shows that the Respondent has intentionally attempted to attract Internet users to an on-line location by creating a likelihood of confusion with the Complainant’s trademarks. Internet users who type in the disputed domain names in their browser would falsely believe that they access a website operated, sponsored, affiliated, or endorsed by the owner of the well-known casino in Monaco, the Complainant. This is a source of likely confusion for Internet users. Creating such likelihood of confusion between the Complainant’s casino and the “Lucky Nugget Online Casino” website is an example of bad faith not only during the registration process of the disputed domain names but also in the use of disputed domain names (see for a similar gaming case La Franaise des Jeux v. Tavenost Voyeurism Inc, WIPO Case No. D2002-0439, <fdjeu.com>).

The panel is thus satisfied that the Respondent registered and is using the domain names in bad faith in accordance with the criteria set out under paragraph 4(b)(iv) of the Policy.

 

7. Decision

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 names <monacocasino.name> and <monacogoldcasino.name> be transferred to the Complainant.


Thomas Hoeren
Sole Panelist

Dated: November 28, 2007