Complainant is Société des Bains de Mer et du Cercle des Etrangers à Monaco of Monte Carlo, Monaco, represented by De Gaulle Fleurance & Associés, France.
Respondent is E-Net Limited of Eccles, Manchester, United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <bestcasinomontecarlo.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2010. On April 16, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On April 17, 2010, 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. 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 April 20, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2010. The Center received two email communications regarding this matter on April 21 and 22, 2010 from the email address used by Respondent; however no formal response was received. Accordingly, the Center notified the Respondent's default on May 11, 2010.
The Center appointed Leon Trakman as the sole panelist in this matter on June 4, 2010. 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.
Complainant is the owner of the Monegasque trademark CASINO DE MONTE-CARLO, filed on August 13, 1996 and renewed on October 10, 2006, with the Monaco Trademark Office.
Respondent registered the disputed domain name <bestcasinomontecarlo.com> on April 1, 2009 with Godaddy.com, Inc. Although the website associated with the disputed domain name is now inactive, the evidence before the Panel indicates that it did, at some point before these proceedings were instituted, revert to an online gambling website.
Complainant contends that, since April 2, 1863, it has been granted a monopoly for casino and gambling activities by the Prince of Monaco for the territory of the Principality of Monaco and is the sole company permitted to organize games and gambling in Monaco (Privilege des Jeux, most recently renewed by the Ordonnance Souveraine no. 15.732 on March 13, 2003.) Complainant alleges that it has operated the Casino de Monte-Carlo in Monaco for over 140 years at the date of the Complaint, that it is famous and known world wide and attracts customers from numerous European and non-European countries.
Complaint contends that the disputed domain name <bestcasinomontecarlo.com> registered by Respondent is confusingly similar to Complainant's trademark; that Respondent has no rights or legitimate interests in the domain name; that Respondent has registered and used the domain name in bad faith; and, that the disputed domain name should be transferred to Complainant.
The Respondent did not reply to the Complainant's contentions.
The Panel holds that the disputed domain name <bestcasinomontecarlo.com> is confusingly similar to Complainant's trademark and renowned name.
The disputed domain name includes both nouns “casino” and “Monte Carlo” that are also included in Complainant's trademark. The addition of the term “best” to the disputed domain name confirms that it is not “identical to” Complainant's trademark. However, it does not render the disputed domain name sufficiently distinctive to avoid the inference that it is “confusingly similar” to Complainant's trademark (See Microgaming Software Systems Limited v. Fox Poker Tour, WIPO Case No. D2009-0854 <microgamingsbest.com>).
The use of the word “best” in the disputed domain name also carries the inference that the disputed domain name provides access to gambling services that would be somehow “better” than Complainant's casino. Given that Complainant is the holder of the sole legitimate trademark in the name Monte Carlo Casino, the disputed domain infers either that it is the “best” among a syndicate of Monte Carlo casinos, or failing that, that it is better than any other casino carrying the name Monte Carlo Casino, whether affiliated or not with the famous trademark and gambling business of Complainant. As a result, both inferences accentuate the confusingly similar nature of the disputed domain name to Complainant's world renowned trademark.
The Panel holds that Respondent has no rights to or legitimate interests in the disputed domain name <bestcasinomontecarlo.com>. Respondent has no apparent trademark registration or application for registration outstanding in either the United Kingdom, where Respondent is domiciled, nor in any European country.
There is no evidence on record that the Respondent has any intellectual property rights over any mark that contains the terms “casino” or “Monte Carlo”.
Respondent does not have any legitimate interest in the Casino in Monte Carlo itself.
Nor is there any evidence on record that Respondent, a United Kingdom domiciliary, has material geographical links to the Principality of Monte Carlo. Respondent has no license or other authorization from the Principality of Monte Carlo to operate a casino in Monaco.
Finally, Complainant affirms that it has not authorized Respondent to register or use its trademark in any capacity whatsoever.
The Panel holds that Respondent has registered and is using the disputed domain name in bad faith.
There can be no doubt but that Respondent must reasonably have been aware of Complainant's trademark and world renowned business in registering and using the disputed domain name for the purpose of attracting Internet users to Respondent's online gambling website.
Conversely, it is unreasonable to assume that, given the long standing reputation and world stature of Complainant's trademark and business, Respondent was unaware of the confusing similarities between the disputed domain name and Complainant's trademark.
It is also unreasonable to determine that the similarities between the disputed domain name and Complainant's famous trademark were coincidental. Respondent must reasonably be assumed to have been fully aware of Complainant's trademark at the time of registering the disputed domain name. It is equally reasonable to assume that Respondent sought to exploit Complainant's reputation by using a confusingly similar name to attract Internet users to Respondent's online gambling website.
Furthermore, it is reasonable to conclude that, in using the disputed domain name, Respondent intended to exploit confusion among Internet users in bad faith in attracting them to access its website. In particular, Respondent's bad faith use included: an intention to confuse web users that its disputed domain name was affiliated with the famous Monte Carlo Casino; or Respondent intended to attract web users to its website based on an association Internet users would likely draw between online gambling and Complainant's famous brand; or Respondent intended to take advantage of Internet users erroneously typing the disputed domain name believing that they were gaining access to the website of the famous Monte Carlo Casino. In imputing any one of these intentions to Respondent, it is reasonable to conclude that Respondent had registered and used the disputed domain name in bad faith.
Affirming the reasonable inference that Respondent was in bad faith is the fact that Complainant has been the target of a series of disputed domain names that are identical or confusingly similar to Complainant's trademark. Complainant has consistently sought to protect its famous brand. As a result, a series of prior WIPO UDRP panels have held that various confusingly similar domain names to Complainant's trademark were registered and used in bad faith. (See, for example, Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Empire Online Ltd, WIPO Case No. D2006-0289 <monacogoldcasino.com> and Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Lucan Toh and Max Wright, WIPO Case No. D2007-0249 involving multiple domain names including the words “grand” and “Monaco” in various combinations). These past circumstances and panel determinations are evidence of a consistent pattern of conduct by a series of respondents, comparable to the conduct of Respondent in the instant case, engaging in bad faith efforts to exploit Complainant's reputation and famous status as a gambling casino.
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 <bestcasinomontecarlo.com> be transferred to the Complainant.
Dated: June 10, 2010