The Complainant is La Société des Bains de Mer et du cercle des étrangers à Monaco, of Monte Carlo, Monaco, represented by De Gaulle Fleurance & Associés, of France.
The Respondent is Pablo Palermo of San Isidro, Peru.
The disputed domain name <motecarlopoker.com> is registered with Backslap Domains, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2008. On September 12, 2008, the Center transmitted by email to Backslap Domains, Inc. a request for registrar verification in connection with the disputed domain name. On September 12, 2008, Backslap Domains, Inc. 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 September 23, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant duly filed an amended Complaint on September 24, 2008. The Center verified that the Complaint together with the amended 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 7, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 27, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 29, 2008.
The Center appointed David Perkins as the sole panelist in this matter on November 7, 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 Complainant's Business
4.A.1 The Complainant has operated the world famous Casino de Monte Carlo in the Principality of Monaco since 1863, when it was granted a monopoly for casinos and gambling in the territory of the Principality. That monopoly, known as Privilege des Jeux, was last renewed by Ordonnance Souveraine No. 15,732 on March 13, 2003 for a period of 20 years as from April, 2007.
4.A.2 The “CASINO DE MONTE-CARLO” trademark. The Complainant is the owner of trademark no. 017485, CASINO DE MONTE-CARLO registered in the Principality of Monaco on August 13, 1996 in International Classes 3, 9, 12, 14, 16, 18, 28, 34, 35, 38, 39, 41, and 42.
4.B.1 Pablo Palermo is listed as Registrant, administrative, technical and billing contact for the disputed domain name. That domain name was created on September 21, 2004.
4.B.2 In the absence of a Reply, what is known of the Respondent is fairly limited to what appears from the Complaint and the amended Complaint.
4.B.3 The disputed domain name resolves to a portal website, which offers links to commercial websites providing gambling services, specifically online poker.
4.B.4 The only other information relating to the Respondent provided by the Complainant is that he has been the respondent in two decisions under the Policy; Academy of Country Music v. Pablo Palermo, WIPO Case No. D2008-0818 and Corporación Radio y Televisión Española S.A. v. Pablo Palermo, WIPO Case No. D2008-0926, which respectively involved the disputed domain names <acmawards.com> and <rtve.com>. In both cases, transfer of those domain names to the complainants was ordered.
5.A.1.1 The Complainant's case is that the disputed domain name is confusingly similar to the registered trademark of which it is the proprietor. This is because the prefix of the disputed domain name “motecarlo”, is an obvious and deliberate mis-spelling of the distinctive “Monte-Carlo” element of its registered trademark. In that respect, the Complainant cites decisions under the Policy where similar mis-spellings of well-known trademarks (known as “typosquatting”) have been held to amount to confusing similarity.
For example, the decision in WIPO Case No. D2001-0489 found the disputed domain name <walddisney.com> confusingly similar to the WALT DISNEY trademark. Similarly, the decision in WIPO Case No. D2000-0587 found the disputed domain names <yahu.com> and <yauoo.com> confusingly similar to the YAHOO trademark and the disputed domain name <geosities.com> confusingly similar to the GEOCITIES trademark. That decision itself referred to earlier cases of typosquatting, namely American Media Operations Inc. v. Erik Simons, eResolution Case No. AF-0134, involving the NATIONAL ENQUIRER trademark and the disputed domain name <nationalenquirer.com>; America Online, Inc. v Asian On-Line This Domain For Sale, NAF Case No. 94636, involving the AOL trademark and 16 disputed domain names all prefixed “ao-l” with the names of various countries, such as <ao-lchina.com>; and Yahoo! Inc. v. Eitan Zviely, et al., WIPO Case No. D2000-0273, involving the YAHOO trademark and 37 disputed domain names where “yahoo” comprised the suffix, such as <atlantayahoo.com> and <bostonyahoo.com>, and simple mis-spellings such as <yahpoo.com> and <yalhoo.com>.
5.A.1.2 The Complainant says that addition of the descriptive suffix “poker” does not avoid confusing similarity, particularly since that word is so strongly associated with the Complainant's gambling business. In that respect, the Complainant cites an earlier case under the Policy where it was the complainant, Société des Bains de Mer et du Cercle des Etrangers à Monaco v. International Services Inc. et al., WIPO Case No. D2000-1328. That case involved 31 disputed domain names, including domain names comprising the prefix “Monte Carlo” and suffixes descriptive of gaming (for example, <montecarlogambling.net>, <monacogaming.com>, <monacogaming.net>, <montecarlogames.com>, <montecarlogames.net>, <montecarlojackpot.com>, and <montecarlojackpot.net>). These were held to be confusingly similar, since they merely substituted for “casino” (in the CASINO DE MONTE-CARLO trademark) such terms as “games”, “gaming”, “gambling” and “jackpot”, all of which refer to the casino and gaming industry.
5.A.2.1 The Complainant's case is that the Respondent can demonstrate none of the circumstances set out in paragraph 4(c) of the Policy. First, the Complainant has searched on the registries in the United States of America and in 21 European countries but has found no registered trademarks including “Monte-Carlo” in the name of the privacy shield listed as the Respondent in the original Complaint, Security Shield LLC, nor in the name of Pablo Palermo, the current Respondent. From this the Complainant concludes that that the Respondent has no trademark rights in or containing the term “Monte-Carlo”.
5.A.2.2 Second, the Complainant has not licensed or otherwise authorized the Respondent to use either of its famous Casino de Monaco name or CASINO DE MONTE-CARLO trademark. The Complainant has no business relationship with the Respondent. Nor is the Respondent – who is located in Peru – licensed or otherwise authorised by the Principality to operate a casino in Monaco.
5.A.2.3 Third, the Complainant says that the Respondent cannot have used the disputed domain names in connection with a bona fide offering of goods and services, since any such use cannot be bona fide by reason of the domain name being confusingly similar to the CASINO DE MONTE-CARLO trademark. Nor, for the reasons set out in Section 5.A.3 below, can the Respondent be making a legitimate non-commercial or fair use of the disputed domain name under paragraph 4(c)(iii) of the Policy.
5.A.2.4 The Complainant cites the decision in Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055. There the disputed domain name was <guerlain.net> and the mark was the Complainant's well-known GUERLAIN trademark. In that case, the panel stated:
“… in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by the Respondent.”
The same situation, the Complainant says, applies in this case.
5.A.3.1 As to registration in bad faith, the Complainant's case is that – such is the notoriety of the CASINO DE MONTE-CARLO trademark – the Respondent could not possibly have been in ignorance of that mark when registering the confusingly similar disputed domain name.
5.A.3.2 The Complainant also points to the extent of the program it has followed to protect its mark by bringing numerous complaints under the Policy and the likelihood that this program will not have escaped the attention of those active in the Internet business, as the Respondent appears to be. In that respect, there are 55 such complaints listed in an annex to the Complaint, all of which have been filed with the Center. As to 41 of those cases, transfer of the disputed domain names was ordered and as to 13, the disputed domain names were transferred free of charge and the proceedings terminated. Only in one such case was the Complaint denied.
5.A.3.3 Further evidence of registration in bad faith is the actual use to which the confusingly similar disputed domain name has been put. Namely, to generate click-through revenue for the Respondent by using it as a link to online gambling (poker) sites. The circumstances clearly indicate bad faith use of the type prescribed in paragraph 4(b)(iv) of the Policy. Plainly, the Complainant says, the Respondent is passing off his business as being in some way connected with that of the Casino de Monte-Carlo and thereby attracting Internet users to the portal website and thence to various gambling sites having no connection whatsoever with the business of the Complainant.
5.A.3.4 The Complainant cites by analogy Villeroy & Boch AG v. Mario Pigerna, WIPO Case No. D2007-1912, which involved the domain name <villeroy-boch.mobi>. There the domain name linked to various headings, including kitchen and bathroom products, precisely the same product areas for which the complainant is so well-known under its VILLEROY & BOCH trademark. This the panel held amounted to bad faith use.
5.A.3.5 Another such case was The Evening Store.com, Inc. v. Henry Chan, WIPO Case No. D2004-0305. This disputed domain name was <eveningstore.com> and the complainant's trademark was THE EVENING STORE.COM. The complainant sold online ladies' evening wear and formal wear using its <the eveningstore.com> domain name and website. The domain name resolved to a website called “www.eveningstore.com”, which provided links to third party websites also selling ladies' evening and formal wear. Again, this was held to be bad faith use by reason, inter alia, of the confusing similarity of the disputed domain name with the complainant's trademark.
5.A.3.6 The Complainant also asserts that registration under a name designed to conceal the Respondent's identity – as is the case here – is another indicia of the Respondent's bad faith. In this respect, the Complainant refers to one of its own earlier complaints, Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Integrity Ltd., WIPO Case No. D2005-0404. That case involved the domain name <luckymontecarlocasino.com>, where the panel found that the registrant had taken steps to conceal its true identity and that such was an act of bad faith.
5.A.3.7 Finally, the Complainant points to two decisions under the Policy in which the Respondent was found to have registered and used the disputed domain names in bad faith. They are: Academy of Country Music v. Pablo Palermo, WIPO Case No. D2008-0818, and Corporación Radio y Televisión Española SA v. Pablo Palermo, WIPO Case No. D2008-0926. The former involved the disputed domain name <acmawards.com> and the trademark ACM. The later involved the disputed domain name <rtve.com> and the trademark RTVE.
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
(i) that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interest in the disputed domain name.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
6.5 For the purposes of determining confusing similarity, it is not appropriate to point to the fact that the disputed domain name is used to promote online poker with the consequent connection between the website to which it provides links and the business of the Complainant. That is relevant to paragraph 4(a)(iii) of the Policy, not to paragraph 4(a)(i). Rather, the appropriate question is whether the mis-spelt “motecarlo” is sufficient in itself to be confusingly similar to the Complainant's CASINO DE MONTE-CARLO trademark. Setting aside the use to which the disputed domain name is put, use of the suffix “poker” with the prefix “motecarlo” clearly indicates the purpose the <motecarlopoker.com> domain name is intended to signify. That is a deliberate mis-spelling of “Monte Carlo” which is synonymous worldwide with the Complainant's casino and the gambling business. In the circumstances, it is impossible to disconnect the meaning of the disputed domain name when assessing confusing similarity.
6.6 Thus, the Panel accepts that this is a clear case of typosquatting of the <walddisney.com> and <yahu.com> category described in paragraph 5.A.1.1 above.
6.7 As to the addition of the descriptive word “poker”, far from avoiding confusing similarity with the Complainant's trademark, (as noted above), it serves to emphasize the confusing similarity. In the circumstances, the Panel finds the disputed domain name is confusingly similar to the Complainant's trademark.
6.8 In light of the finding of confusing similarity and in the absence of a Response, there is no evidence to indicate that the Respondent could establish rights to or legitimate interests in the disputed domain name by demonstrating any of the circumstances set out in paragraph 4(c) of the Policy. Indeed, the evidence is all to the contrary and, accordingly, the Complaint meets the requirement of paragraph 4(a)(ii) of the Policy.
6.9 The worldwide reputation of the Complainant's Casino de Monte-Carlo name and business is such that it would take very convincing evidence from a respondent to show evidence of registration in good faith. Here, moreover, there is no Response. Further, use of the suffix “poker” as part of the disputed domain name links that name even more closely to the Complainant and its world famous trademark.
6.10 Bad faith registration of the disputed domain name is still further evidenced by the use to which the domain name has been part: see, paragraphs 4.B.3 and 5.A.3.3 above. The Panel agrees with the Complainant that such use falls fair and square within the circumstances establishing bad faith use set out in paragraph 4(b)(iv) of the Policy. The previous decisions cited by the Complainant in paragraph 5.A.3.7 are additional illustrations of the type of bad faith the Respondent has shown in this case.
6.11 Where the Panel does not entirely follow the Complainant's case is in relation to the use of a privacy address for the disputed domain. The facts of the earlier case brought by the Complainant ( WIPO Case No. D2005-0404) were very specific to that case and do not, in the Panel's view, support a general principle that use of a privacy address is, in itself, indicative of bad faith registration and/or use.
6.12 That, however, is inconsequential here since, for the reasons set out in paragraphs 6.9 and 6.10 above, the case in relation to bad faith registration and use is so overwhelming. Accordingly, the Panel finds that the Complaint satisfies the twin requirements of paragraph 4(a)(iii) of the Policy.
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 <motecarlopoker.com> be transferred to the Complainant.
Dated: November 17, 2008