WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Socit des Bains de Mer et du Cercle des trangers Monaco v. Monte Carlo Casino Entertainment

Case No. D2007-1934

 

1. The Parties

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

The Respondent is Monte Carlo Casino Entertainment, Woodlyn, Pennsylvania United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <montecarlocasinoent.com> is registered with Register.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2007. On December 27, 2007, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On January 2, 2008, Register.com 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 January 7, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 28, 2008.

The Center appointed Alistair Payne as the sole panelist in this matter on February 5, 2008. 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 manages and runs a casino and gambling business in Monte Carlo in the principality of Monaco, and has done so for over 140 years. The Complainant holds various trade mark registrations for CASINO DE MONTE CARLO dating back as far as August of 1996 in the principality of Monaco. The Complainant holds an International trade mark registration for CASINO DE MONTE-CARLO since 2002 including a designation for the UK. The Complainant also applied for a US trade mark in 2002 and currently has one US trade mark registered since 2006 although the Panel notes that this trade mark makes no exclusive claim to the word “Casino”.

The Respondent appears to be a US-located business entity, engaged in the provision of gambling services and the hosting of casino related social events, purporting to operate under the name “Monte Carlo Casino Entertainment”. The Respondent registered the Disputed Domain Name for use in its business in 2005.

The Complainant is seeking the transfer of the Disputed Domain Name.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Disputed Domain Name is confusingly similar to registered trade marks in which it has pre-existing rights. The Complainant contends that the Respondent has no rights or legitimate interest in the Disputed Domain Name and that given the renown of the Complainant’s business in the gambling and casino industry, that the Respondent is attempting to gain unfair leverage and exploit the long established reputation of the Complainant.

Given that no authorisation from the principality of Monaco was granted to the Respondent to operate under this title and also given that no link exists between the Respondent and the principality of Monaco, the Complainant contends that the Disputed Domain Name was registered and is being used in bad faith. Finally the Complainant contends that the actions of passing off in relation to its business are further evidence of bad faith on the part of the Respondent.

B. Respondent

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

 

6. Discussion and Findings

If the Complainant is to succeed, it must prove each of the three elements referred to in Paragraph 4(a) of the Policy, namely that:

i. the Disputed Domain Names are identical or confusingly similar to a trademark in which the Complainant has rights; and

ii. the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

iii. the Disputed Domain Names have been registered and are being used in bad faith.

The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in Paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has prior rights in CASINO DE MONTE-CARLO based on its numerous trade marks and the fact that it has operated casino and gambling services for over 140 years in Monaco. During that time it has accumulated a good deal of reputation in that name. The Disputed Domain Name consists of the two predominant parts of the Complainant’s trade marks, albeit in a different order, with the addition of “ent” after “montecarlocasino”. Numerous UDRP decisions provide that inverting the order of words in a disputed domain name where a complainant has trade mark rights in those words does not eliminate confusion among Internet users. (See e.g. Socite des Bains de mer et du Cercle des Estrangers Monaco v LaPorte Holdings, LLC. WIPO Case No. D2005-0526 and La Socit des Bains de Mer et du Cercle des Etrangers Monaco v CCX (Monacogoldonlinecasino-Com-Dom) WIPO Case No. D2007-0980 where the addition of the worlds ‘gold’ and ‘online’ between words making up a trademark did not discharge the onus of confusing similarity). This Panel concludes that the Disputed Domain Name <montecarlocasinoent> is confusingly similar to the Complainant’s trade mark for CASINO DE MONTE-CARLO.

As such, the Complainant has satisfied Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

As noted above, the Panel is satisfied that the Complainant has substantial rights in the CASINO DE MONTE CARLO trade mark. The Complainant has not licensed or granted the Respondent permission to use the Disputed Domain Name which is confusingly similar to its trade mark. The Respondent operates its business from the United States of America and has no visible link with the principality of Monaco. No evidence of pre-existing rights or current trade mark registrations has been provided to support any right that the Respondent may have to use the Disputed Domain Name. As such the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

In light of the Respondent’s default, the Panel has no evidence before it with which to rebut this prima facie case. The Panel acknowledges that the Respondent appears to be carrying on a business under the Disputed Domain Name. However, there is nothing before the Panel to explain why the Respondent chose to operate under a very similar name to the one used by the Complainant. The Panel has not been provided with for example evidence to suggest that the Respondent has obtained an independent reputation trading under the Disputed Domain Name. The Panel, therefore, has concluded that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel notes that a number of years have elapsed since the Respondent registered the Disputed Domain Name. However, there are considerable similarities between the Complainant’s business and the Respondent’s business and there is a lack of evidence explaining the Respondent’s choice of domain name at the time of registration.

As noted above, the Complainant did not give the Respondent permission to use the Complainant’s trade mark for CASINO DE MONTE CARLO or any derivative of that mark. The Respondent could have chosen from a number of other alternative names to represent its on-line business. As the Complainant has a visible and substantial reputation, as is evident from the Complainant’s website, at “www.casinodemontecarlo.com”, the Panel infers that the Respondent was aware of the Complainant’s business and trade mark rights prior to registering the Disputed Domain Name and in the years preceding that registration. The Respondent does not appear to operate a business in Monte Carlo and has not offered the Panel any explanation for the reference to “Monte Carlo” in the Disputed Domain Name. On that basis the Panel finds that on the balance of probability, the Respondent was attempting to attract Internet users to their website by creating a likelihood of confusion with the Complainant’s mark, in order to capitalise on the goodwill attached to the Complainant’s business. As such the Complainant has satisfied the requirements of Paragraph 4(c)(iv) of the Policy.

The Panel is therefore satisfied that the Disputed Domain Name was both registered and used in bad faith and the Complainant has satisfied Paragraph 4(a)(iii) 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 name, <montecarlocasinoent.com> be transferred to the Complainant.


Alistair Payne
Sole Panelist

Dated: February 20, 2008