Complainant is La Société des Bains de Mer et du cercle des etrangers à Monaco, of the Principality of Monaco, represented by De Gaulle Fleurance & Associés, France.
Respondent is 24-7 Home And Leisure of Saint Kitts and Nevis.
The disputed domain name <themontecarloonlinecasino.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2008. On October 21, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On October 21, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. As the registration of the disputed domain name was set to expire during these proceedings, Complainant renewed the registration. On October 29, 2008, the registrar confirmed the disputed domain name had been renewed and would remain locked pending this proceeding.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 30, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 19, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 21, 2008.
The Center appointed William F. Hamilton as the sole panelist in this matter on December 4, 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.
In 1863, the Principauté de Monaco granted the Société des Bains de Mer et du cercle des étrangers à Monaco a casino and gambling monopoly within Monaco. For over 140 years, the Société has operated a casino and gambling business in Monaco.
The Société owns the mark CASINO DE MONTE-CARLO, registered on August 13, 1996 and renewed on October 10, 2006, with the Monaco Trademark Office. Complainant is referred to by the public as both the Casino de Monaco and Casino de Monte Carlo.
The Respondent registered the domain name <themontecarloonlinecasino.com> on October 19, 2001. The domain name currently resolves to a website offering a variety of links primarily related to gambling, resort and tourist locations.
Complainant asserts that the disputed domain name <the montecarloonlinecasino.com> is confusingly similar to its mark CASINO DE MONTE-CARLO, that Respondent has no rights or legitimate interests in the disputed domain name, and that the name was registered and is being used in bad faith to attract unsuspecting Internet users.
Respondent did not reply to Complainant's contentions.
Under paragraph 4(a) of the Policy, Complainant must prove each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Complainant must carry its burden of proof by a preponderance of evidence. Bootie Brewing Company v. Deanna D. Ward and Grabebootie Inc., WIPO Case No. D2003-0185.
The disputed domain name is confusingly similar to the Complainant's mark. The disputed domain name is composed by merely reversing the order of “Monte Carlo” and “Casino”, dropping the insignificant “de,” and adding the definite article “the” and the term “online”. It is well-established that the transposition of words from a word mark and the addition generic terms is insufficient to avoid confusion. Société des Bains de Mer et du Cercle des Etrangers à Monaco v. LaPorte Holdings, LLC., WIPO Case No. D2005-0526 (transfer <ontecarlorestortandcasino.com>); Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Mark Bolet, WIPO Case No. D2006-1245 (transfer <monaconetcasino.com>; La Société des Bains de Mer et du cercle des étrangers à Monaco v. Oded Keinan, Traffic Label Limited, WIPO Case No. D2008-1388 (transfer <kasinomontecarlo.com> and <montecarlokasino.com>; Hoffmann-La Roche Inc. v. One Step Closer, Bob Dilan, WIPO Case No. D2008-0719 (addition of generic term “online” insufficient to avoid confusion); Telstra Corporation Limited v. Heaydon Enterprises, WIPO Case No. D2000-1672 (adding the definite article “the” insufficient to avoid confusion).
Paragraph 4(c) of the Policy sets out in particular, but without limitation, three circumstances which, if proved by Respondent, shall be evidence of Respondent's rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii), namely:
(i) before any notice of the dispute to Respondent, Respondent's use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial 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 Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name. As an initial matter, Respondent has not provided an explanation for its use of Complainant's mark. Next, Respondent's use of the domain name is not authorized. Respondent has never been a licensee of Complainant. Moreover, it is apparent that Respondent intends to utilize the disputed domain name for commercial gain. There is no evidence that Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
In the absence of any such explanation from Respondent for its use of Complainant's mark or the disputed domain name, and where, as here, Complainant's mark and name is well-known, Respondent can have no rights to or legitimate interests in the disputed domain name. Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (bad faith and a lack of rights or legitimate interest found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”); Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397).
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on-line locations, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or locations or of a product.
The Panel has no difficulty in concluding that the Respondent registered and is using the disputed domain name to attract Internet users to the Respondent's website by confusing Internet users in violation of Policy paragraph 4(b)(iv). As Respondent operates another website related to the gambling industry, it is beyond doubt that the Respondent was aware of Complainant's well-known mark and domain name. Respondent has merely reversed words found in the Complainant's mark and added two generic terms. Such blatant transposition strongly suggests an intentional effort to exploit the good will associated with Complainant's mark. The disputed domain name, in fact, resolves to a website composed of a listing of links promoting competitive resort, gambling, and tourist related locations and activities.
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 <themontecarloonlinecasino.com> be transferred to the Complainant.
William F. Hamilton
Dated: December 18, 2008