World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société des Bains de Mer et du Cercle des Etrangers à Monaco v. United Publishing Co., Ltd

Case No. D2012-0210

1. The Parties

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

The Respondent is United Publishing Co., Ltd of Suratthani, Thailand.

2. The Domain Name and Registrar

The disputed domain name <montecarlobeachhotel.org> is registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2012. On February 7, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On February 8, 2012, GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that the 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 February 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 5, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 6, 2012.

The Center appointed Christos A. Theodoulou as the sole panelist in this matter on March 13, 2012. 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 in these proceedings is Société des Bains de Mer et du Cercle des Etrangers à Monaco (referred hereunder as “SBM”), a company organized under the laws of Monaco. The Complainant is a well-known Monegasque company with approximately 70% of its share capital owned by the Government of the Principauté de Monaco.

The Complainant is the owner of the Monte Carlo Beach Hotel built in 1928 and entirely redesigned in 2009. The above hotel is famous worldwide, according to the uncontested allegations of the Complainant, as one of the most luxurious hotels in the world offering among others prestigious rooms and suites, seasonal restaurants and other amenities. SBM is the owner, among others, of the following trademarks and domain names:

1. The Monegasque trademark MONTECARLO BEACH HOTEL No. 01.22214 filed on February 16, 2001 and renewed on January 26, 2011 with the Monaco Trademark Office.

2. According also to the uncontested allegations of the Complainant and the proof submitted by itself, it is the owner of seven domain names including <montecarlobeachhotel.com>, <montecarlobeachhotel.eu>, <montecarlobeachhotel.asia> and <montecarlobeachhotel.me>. According to the Complainant all lead to the official website dedicated to its Monte Carlo Beach Hotel.

The Panel is unaware of any further information relative to this case with regard to the Respondent, except that given by the Complainant and mentioned above.

The disputed domain name <montecarlobeachhotel.org> was registered by the Respondent in October 2011.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the disputed domain name and has not been commonly known by the domain name and that the Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Before engaging in the threefold discussion of paragraph 4(a) of the Policy, the Panel will briefly address the procedural issue related to the default of the Respondent. The implications of a default in this case are telling: since the Complainant has the burden of proof, according to paragraph 4(a) of the Policy (“In the administrative proceeding, the Complainant must prove that each of these three elements are present”), the Panel may not just grant the Complainant’s request automatically, but it has to examine instead the evidence presented to determine whether or not the Complainant has proved its case, as required by the Policy. See FNAC v. Gauthier Raymond, WIPO Case No. D2004-0881; Sonofon A/S v. Vladimir Aleksic, WIPO Case No. D2007-0668; Gaudi Trade SpA v. Transure Enterprise Ltd, WIPO Case No. D2009-1028.

The Panel shall now proceed to the analysis of the evidence in this case, based on the three elements of paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

The Complainant has presented sufficient evidence that it owns the rights in the trademark MONTE CARLO BEACH HOTEL. It is also the owner of the domain name <montecarlobeachhotel.com>.

The mere fact that the Respondent has added to the mark MONTE CARLO BEACH HOTEL the suffix “.org” does not affect the essence of the matter: the disputed domain name is identical to the trademark of the Complainant and in the circumstances of this case is by itself sufficient to establish criterion of confusing similarity for purposes of the Policy, as many panels have found in the past. See e.g., Oki Data Americas, Inc. v. ASD, Inc, WIPO Case No. D2001-0903; Koninklijke Philips Electronics N.V. v. K. Harjani Electronics Ltd. WIPO Case No. D2002-1021; DFDS A/S v. NOLDC INC, WIPO Case No. D2006-1070; American Automobile Association, Inc. v. Bladimir Boyiko and Andrew Michailov, WIPO Case No. D2006-0252.

In view of the above, the Panel finds that the Complainant has discharged its burden of proof on this point and holds that the disputed domain name <montecarlobeachhotel.org> is identical or confusingly similar to the Complainant’s trademark MONTE CARLO BEACH HOTEL.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exhaustive list of three circumstances which, if found by a panel to be proved based on its evaluation of the evidence presented, shall demonstrate a registrant’s rights to or legitimate interests in a domain name. These examples are discussed in turn below, with regard to the specific facts of this case.

(i) Use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute: in the Panel’s view, the Respondent is not using the disputed domain name to make any bona fide offering of goods or services.

(ii) An indication that the Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark rights. In this case, there is no such indication from the present record.

(iii) Legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks at issue. Again, in this case there is no such indication from the record.

Further, according to the uncontested allegations of the Complainant, the Respondent appears to have no trademark registrations including the word “Monte Carlo” and “Beach” in Europe or, in Thailand where the Respondent is located.

Furthermore, it is to be noted that the Respondent did not present evidence of any license by the Complainant, with whom there seems to exist no relationship whatsoever.

As a conclusion on this point, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant’s argumentation is based on the four circumstances mentioned in paragraph 4(b) of the Policy, in order to demonstrate the Respondent’s bad faith registration and use of the disputed domain name.

In reviewing the present case, it appears that the Respondent has used the disputed domain name as a parking website where ads are referred in connection with hotels in Monaco in particular. The Respondent tries to benefit from the reputation of the Complainant and its famous hotel and trademark.

The Panel also notes the default of the Respondent, which in the present circumstances “reinforces the inference of bad faith registration and bad faith use”. The Hongkong and Shanghai Banking Corporation Limited v. Bill Lynn, WIPO Case No. D2001-0915.

The bad faith of the Respondent may also be reinforced through a simple, logical process, as well, in the sense that it would, indeed, be highly unlikely that the Respondent would register randomly and unintentionally a domain name, that is identical to the Complainant’s MONTE CARLO BEACH HOTEL trademark. Rather, it seems to this Panel more likely that such registration and use would be motivated by hoped-for capitalization on the trademark connotations of the disputed domain name.

As a consequence to the above, the Panel finds that the Respondent registered and uses the disputed domain name in bad faith.

Accordingly, the Panel finds that the Complainant has successfully proven that the disputed domain name is identical or confusingly similar to trademarks and service marks in which it has rights, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent registered and uses the disputed domain name in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <montecarlobeachhotel.org> be transferred to the Complainant.

Christos A. Theodoulou
Sole Panelist
Dated: March 15, 2012

 

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