WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Rohit Katoch
Case No. D2011-0402
1. The Parties
The Complainant is Société des Bains de Mer et du Cercle des Etrangers à Monaco, of the Principality of Monaco, represented by De Gaulle Fleurance & Associés, France.
The Respondent is Rohit Katoch, of Mohali, India.
2. The Domain Name and Registrar
The disputed domain name <monacovipcasino.com> (“the Domain Name”) is registered with Wild West Domains, Inc (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2011. On March 2, 2011, the Center transmitted by email to Go Daddy.com, Inc., the registrar named by the Complainant in the Complaint, a request for registrar verification in connection with the Domain Name. On March 3, 2011, the Registrar transmitted by email to the Center a verification response advising that it is the registrar for the Domain Name, and disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 8, 2011, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed amended Complaints on March 11, 2011 and March 16, 2011.
The Center verified that the Complaint together with the amended Complaints 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 Second Amended Complaint, and the proceedings commenced on March 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 7, 2011. The Respondent did not submit any formal response, but sent emails to the Center on March 19 and 22, 2011, and again on April 1, 2011.
The Center appointed Warwick Smith as the sole panelist in this matter on April 19, 2011. 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 is the Monegasque company, which operates the famous casino in Monte Carlo. Since April 1863 the Complainant has been the only entity legally entitled to organize casino games and gambling in the Principality of Monaco (“Monaco”).
The correct name of the Complainant’s casino is “Casino de Monte-Carlo”, but it is often referred to by the public as the “Casino de Monaco”.
The Complainant holds registered trademarks in the Principality of Monaco, for the word marks CASINO DE MONTE-CARLO and CASINO DE MONACO. The latter mark has been in force since July 2002, and covers a variety of goods and services in international classes 3, 9, 12, 14, 16, 18, 28, 34, 35, 38, 39, and 41.
The Respondent and the Domain Name
The Domain Name was registered on July 28, 2008. It resolves to a website (“the Respondent’s website”) which is concerned with online gambling.
At the time the original Complaint was filed, the registrant of the Domain Name appears to have been Domains by Proxy Inc. However the Registrar advised on March 3, 2011 that the registrant was by then the Respondent, Rohit Katoch.
The Complainant produced an extract from the Respondent’s website, printed on March 2, 2011. The page produced was prominently headed “Monaco VIP Casino best VIP Club Online Casino”, and it contained text extolling the virtues of online gambling (as opposed to gambling in “real-world” casinos). The Respondent’s website also provided links to various third-party online gambling websites and links to various articles on online gambling.
The Respondent’s website, as it stood on March 2, 2011, appeared to be available in a number of different languages. It contained the copyright claim “Copyright © 2010 monacovipcasino.com”.
In accordance with accepted practice, the Panel has visited the Respondent’s website. This visit occurred on April 28, 2011. The home page of the Respondent’s website appeared to be substantially in the same form as that produced by the Complainant in an annex to the Complaint. The Respondent’s website was available in 12 languages, all of them appearing to be European.
5. Parties’ Contentions
The Complainant contends:
1. The Domain Name is confusingly similar to the Complainant’s CASINO DE MONTE-CARLO and CASINO DE MONACO marks. The differences between the Domain Name and the Complainant’s CASINO DE MONACO mark are insufficient to avoid confusing similarity: the Respondent has merely reversed the order of the words “Monaco” and “Casino”, dropped the insignificant “de”, and added the generic term “VIP”. The transposition of words from the word mark, and the addition of a generic term, are insufficient to remove the confusing similarity. Adding the term “VIP” in the Domain Name only increases the similarity between the Domain Name and the Complainant’s CASINO DE MONACO mark, as “VIP” is a descriptive term which reinforces the association between the Domain Name and the Complainant (the Complainant’s casino in Monaco has been known for more than 140 years for its prestigious and wealthy clientele – people who would reasonably be referred to as “VIPs”).
2. The Respondent has no rights or legitimate interests in respect of the Domain Name, having regard to the following matters:
(i) The Complainant has not been able to find any trademark including the words “Monaco”, “vip”, and “Casino”, registered in either India (where the Respondent is located) or in any European country. Nor has any trademark been registered in the name of the Respondent in any of those jurisdictions. To the best of the Complainant’s knowledge and belief, the Respondent holds no intellectual property rights in any mark that contains the terms “Monaco” or “Casino”.
(ii) The Respondent has not been given any license or authorization from the authorities of the principality of Monaco to operate a casino in Monaco.
(iii) The Complainant has never authorized the Respondent to use either of its trademarks, or to register and use the Domain Name. The Complainant has no business relationship with the Respondent.
(iv) For the reasons set out in the next paragraph of these contentions, the Respondent is not making a bona fide use of the Domain Name.
3. The Domain Name was registered and is being used in bad faith. The Complainant relies on the following assertions:
(i) The world renown of the Complainant’s trademarks CASINO DE MONTE-CARLO and CASINO DE MONACO in connection with casino services, attests that the Respondent, who is a professional in the online casino business, could not have been unaware that the registration and use of the Domain Name would violate the Complainant’s rights.
(ii) The Complainant has succeeded in many UDRP proceedings it has commenced involving disputed domain names being used by the respondents in relation to online casinos.
(iii) It is impossible that the Respondent’s decision to register a domain name which is identical or confusingly similar to the Complainant’s trademarks could have been purely coincidental or fortuitous. The Complainant’s trademarks are well known in the casino and gambling business, and the Respondent deliberately decided to register a domain name which was confusingly similar to the Complainant’s marks.
(iii) The Respondent’s bad faith is also demonstrated in the use which the Respondent has made of the Domain Name. The Domain Name is used to allow Internet users to access online casinos, and the Respondent therefore benefits from the unique prestige and renown of the Complainant’s famous casino and from the attractiveness of the Complainant’s trademarks (probably the most ancient and prestigious casino trademarks in the world).
(iv) Internet users who type the Domain Name in their Internet browsers could legitimately believe that they would access a website which was an official website of the Complainant, or that they would at least access a website which would have a link to a website operated by the Complainant, or which would be endorsed by the Complainant. Contrary to that belief, typing the Domain Name into a user’s Internet browser simply takes the Internet user to a website at which he or she is referred to online casino activities.
The Respondent did not file any formal Response. In his (English language) emails sent to the Center, he said that he could not understand the Complaint, and sought an explanation of it in “simple and straight words”, to which the Center responded. However, the Respondent did say (in the April 1, 2011 email) that he bought the Domain Name at a Go Daddy auction, and that that was why the Domain Name was in his possession.
6. Discussion and Findings
A. What the Complainant must prove under the Policy – General
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed 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 disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate.
B. Identical or Confusingly Similar
The Complainant has proven this part of its Complaint. It is the registered proprietor of the mark CASINO DE MONACO in the Principality of Monaco, and the Panel is satisfied that the Domain Name is confusingly similar to that mark. Both the Domain Name and the Complainant’s mark contain the words “Monaco” and “Casino” and the Panel accepts the Complainant’s submission that changing the order of those expressions and adding the generic expression “VIP” is insufficient to create any significant difference between the Complainant’s mark and the Domain Name. Likewise removing the “de” is insufficient to “cure” the confusing similarity arising from the use of the expressions “Monaco” and “Casino” in the Domain Name: the Complainant’s casino in Monaco is a world famous institution, and any domain name incorporating the expressions “Monaco” and “Casino”, coupled with only minor generic additions, was inevitably going to create an impression of a connection with, or endorsement by, the Complainant’s casino.
The generic suffix “.com” is not taken into account in the comparison required by paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the Center’s online document WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”) as follows:
“a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP… If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
In this case, the Complainant has not authorized the Respondent to use any expression which is confusingly similar to its trademarks, whether in a domain name or otherwise: there is no connection between the Complainant and the Respondent at all. Nor is there sufficient evidence, in the view of the Panel, to show that the Respondent might have a basis for a right or legitimate interest in the Domain Name under paragraph 4(c)(ii) of the Policy. Although the Respondent’s website refers to “Monaco VIP Casino” as the “Best VIP Club Online Casino”, the Respondent’s website seems only to provide information about certain casino games, articles about online gaming and links to third party websites at which an Internet user may gamble – it does not appear to be an online casino itself. Nor is there sufficient evidence to show that any “VIP Club” known as “Monaco VIP Casino” actually exists at the Respondent’s website (or indeed that the Respondent’s website hosts a “VIP Club” known by any other name).
Furthermore, copyright in the Respondent’s website is claimed not by “Monaco VIP Casino”, but by that expression followed by “.com”. The addition of the “.com” in a part of the Respondent’s website where one would have expected to find the name of a person or corporation (the legal owner of the claimed copyright) further calls into question the existence of any business or organization known as “Monaco VIP Casino”: it seems improbable to the Panel that there would be two separate businesses or organizations, one known as “Monaco VIP Casino” and the other known as “Monaco VIP Casino.com”. Certainly there is no basis in these circumstances for the Panel to say that the Respondent’s use of one or other of those names has been such as to provide a basis for the “commonly known by” defense.
The foregoing combination of circumstances provides sufficient prima facie proof that the Respondent has no rights or legitimate interests in respect of the Domain Name, so the burden of production shifts to the Respondent. The Respondent not having submitted any Response, the Complainant’s prima facie proof is sufficient to make out its case under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant 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 disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location.
The Complainant has also made out this part of its Complaint.
The Complainant’s “Monte Carlo Casino” is world famous and the Respondent is clearly very interested in gambling (he having gone to the trouble of establishing the Respondent’s website). The Respondent’s website is available in 12 different languages, all of which appear to be European, and the reference to “Monaco” in the Domain Name and on the Respondent’s website is unexplained. In the absence of a formal Response or rebuttal on this point, the Panel can only assume that it was intended to refer to the principality of Monaco, and that the expression “Monaco VIP Casino” was intended to evoke the casino operated by the Complainant in Monaco. The Respondent must therefore have been aware of the Complainant and its casino in Monaco when he registered the Domain Name.
In those circumstances, the Respondent could not have failed to appreciate that a significant number of Internet users coming across the Domain Name would assume that it was connected in some way, or at least endorsed by, the owner or operator of the famous casino in Monaco. If the Respondent did appreciate that fact, he must be taken as also having intended that those Internet users would make that (false) assumption.
In the absence of a formal Response, the Panel can only conclude that the Respondent must be deriving some commercial reward for providing the links on the Respondent’s website to the third party casino websites (why would the Respondent provide those links if he were not getting some return for so doing?). The circumstances therefore fall within paragraph 4(b)(iv) of the Policy – by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s CASINO DE MONACO mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
For completeness, the Panel notes that the Respondent, in his emails to the Center, professed not to understand what the Complaint was about. That statement seems to the Panel to have been disingenuous. The Respondent saw fit to acquire a domain name which quite clearly evoked the famous casino in Monte Carlo, and he has created a website at that domain name focused entirely on gambling, with website access offered in what appear to be European languages only (there is not, for example, any version of the Respondent’s website available in Punjabi or Hindustani, or in any other Indian language). The English language text on the Respondent’s website is competently written. Furthermore, the Panel notes that the first part of the contact email address which the Respondent provided in the WhoIs particulars for the Domain Name, is the expression “europound”. That expression, being a combination of two major European currencies, serves only to reinforce the Panel’s impression that the Respondent has been targeting the European online casino market, and has traded off the fame of the Complainant’s casino in order to generate increased web traffic to the Respondent’s website.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <monacovipcasino.com> be transferred to the Complainant.
Dated: May 2, 2011