WIPO Domain Name Decision: D2007-1935

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société des Bains de Mer et du Cercle des Étrangers à Monaco v. Robert Spence

Case No. D2007-1935

1. The Parties

The Complainant is Société des Bains de Mer et du Cercle des Étrangers à Monaco, Monte Carlo, Monaco, represented by De Gaulle Fleurance & Associés, France.

The Respondent is Robert Spence, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <mymontecarlocasino.com> (the “Domain Name”) is registered with GoDaddy.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint (naming “Domains by Proxy” as Respondent) was filed with the WIPO Arbitration and Mediation Center (the “Center”) by e-mail on December 27, 2007, and in hardcopy on January 3, 2008. On December 28, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On December 28, 2007, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 7, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint by email on January 11, 2008 and in hardcopy on January 14, 2008. The Center verified that the Complaint together with the amended Complaint (naming “Robert Spence” as Respondent) 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 14, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 3, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 4, 2008.

The Center appointed Dr. Bernhard F. Meyer as the sole panelist in this matter on February 11, 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.

The Panel is satisfied that Robert Spence is the appropriate Respondent in this case, noting that the Registrar has confirmed Mr. Spence as the Registrant of the disputed domain name, and that his name currently appears in the whois as Registrant. Domains by Proxy would appear to be merely a proxy registration service.

4. Factual Background

The Complainant has been operating the worldwide famous Casino de Monte Carlo in Monaco for more than 140 years. Since April 2, 1863, the Complainant has been granted by the authorities of the Principality of Monaco a monopoly for casino and gambling industries for the territory of the Principality of Monaco.

The Complainant is the owner of the word mark CASINO DE MONTE CARLO, filed on August 13, 1996 and renewed on October 10, 2006, with the Monaco Trademark Office. The Complainant holds numerous other trademarks including international trademarks filed on January 21, 2002 and December 27, 2002, and also an US trademark filed on November 14, 2007.

The Respondent is an individual domiciled in the United States of America. The Respondent is organizing under a company named Monte Carlo Casino Entertainment casino party events.

The Respondent registered the disputed Domain Name on February 12, 2006.

5. Parties’ Contentions

A. Complainant

The Complainant objects to the use of the Domain Name by the Respondent and bases its Complaint on the following grounds:

1. The Domain Name is identical and confusingly similar in their substantive part to the trademark in which the Complainant has rights.

2. The Respondent has no rights or legitimate interests in respect of the Domain Name:

(a) the Respondent has never been authorized by the Complainant to use the CASINO DE MONTE CARLO trademark.

(b) the Respondent has shown no demonstrable use or preparation of use of the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.

(c) the Respondent selected the Complainant’s famous mark to be able to unduly benefit from the renown and attractiveness of this mark.

3. The Complainant further contends that the Domain Name was registered and is being used in bad faith on the basis that:

(a) the Respondent is knowingly passing off on the Complainant’s trademarks and renown in order to attract Internet users for commercial gain;

(b) the Respondent has deliberately sought to create a confusion with the Complainant;

The Complainant requests the Panel to order a transfer of the Domain Name from the Respondent to the Complainant.

B. Respondent

The Respondent was duly notified of the administrative proceedings as stipulated under paragraph 2(a) of the Rules, but did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth three elements that must be established by the Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) The Respondent’s 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 Respondent’s Domain Dame has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Domain Name <mymontecarlocasino.com> combines the geographical indication “Monte Carlo” with the word “Casino”. These two nouns are the most distinctive parts of the Domain Name and the Complainant’s trademark. The combination of these words in any order is distinctive for, and brings to mind the Complainant’s business activities. The Panel thus finds that the change of order of these terms in the Domain Name at issue does not render the Domain Name and the trademark dissimilar (see Société des Bains de Mer et du Cercle des Etrangers à Monaco v. LaPorte Holdings, LLC., WIPO Case No. D2005-0526, September 2, 2005). Likewise, the prefix “my” does not significantly distinguish the disputed Domain Name from the Complainant’s CASINO DE MONTE CARLO trademark.

In view of the above, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark CASINO DE MONTE CARLO. The Complainant has fulfilled the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, the following circumstances can demonstrate rights to and legitimate interests of a Respondent in the Domain Name:

(i) before any notice was given to the Respondent of the dispute, the Respondent used, or demonstrably made preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) The Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even though it has not acquired any trademark or service mark rights; or

(iii) The Respondent is making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant alleges that the Respondent is neither using the Domain Name in connection with a bona fide offering of goods or services nor is he making a legitimate non-commercial or fair use of the Domain Name. The Respondent did not dispute these contentions. According to the printout of the Respondent’s website to which the disputed Domain Name is directed, the Respondent offers services in the field of casino events under the name Monte Carlo Casino Entertainment, and thus, is benefiting from the Complainant’s reputation and goodwill. In addition, the Respondent offers its services under a domain name that is confusingly similar to the Complainant’s CASINO DE MONTE CARLO trademark. The Complainant, however, asserts that there is no contractual or other relationship between the Complainant and the Respondent. This assertion is not contested.

There is nothing before the Panel to establish that the Respondent has been or is commonly known by the disputed Domain Name. To the Panel, it is, thus, apparent that the Respondent intentionally misused the Complainant’s reputation to sell its services consisting of organizing casino events under the alleged patronage of the Complainant for commercial gain. This behavior does not constitute a bona fide offering of goods or services.

For the reasons set forth above, the Panel finds that the Respondent has no legitimate interest in respect of the Domain Name in the sense of paragraph 4(c) of the Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the Domain Name has been used and registered in bad faith if:

(i) circumstances indicating that the Respondent has registered and has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Domain Name; or

(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, 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 location or of a product or service on its website or location.

The Panel is satisfied that the Respondent intentionally attempted to obtain an illegitimate commercial benefit from the use of the Complainant’s reputation and goodwill. The Panel considers that the Respondent selected knowingly the Complainant’s trademark for the Domain Name and is using it in relation to gambling services with the intent of obtaining a commercial benefit on the back of the Complainant’s reputation and goodwill (see Gordon Gaming Corp. IMC, WIPO Case No. D2001-1047, November 1, 2001). The Complainant and the Respondent are active in the same field of business. As a result, the Respondent created a likelihood of confusion with the Complainant’s trademark to attract Internet users for commercial gain. This clearly indicates bad faith.

In summary, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith in accordance with paragraph 4(b)(iv) of the Policy.

In consideration of the above, the Panel holds that the Domain Name is confusingly similar to the registered trademark of the Complainant, 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.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <mymontecarlocasino.com> be transferred to the Complainant.

Dr. Bernhard F. Meyer
Sole Panelist

Dated: February 20, 2008