WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

La Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v. Traffic Label limited

Case No. D2013-1840

1. The Parties

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

The Respondent is Traffic Label limited of St. Albans, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Names and Registrar

The disputed domain names <bgmonaco.com>, <crapsmonaco.com>, <crapsmontecarlo.com>, <montecarlobets.com> and <roulettemonaco.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2013. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 29, 2013, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and provided 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 11, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was December 1, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 2, 2013.

The Center appointed Edoardo Fano as the sole panelist in this matter on December 10, 2013. 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 paragraph 7 of the Rules.

The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.

Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent.

The language of the proceeding is English, being the language of the Registration Agreement as per paragraph 11(a) of the Rules.

4. Factual Background

The Complainant is a Monegasque company, whose seventy percent of share capital is owned by the government of the Principauté of Monaco. In 1863, the Complainant was granted a monopoly for casino and gambling activities for the territory of the Principauté of Monaco by the Prince of Monaco and is therefore the only company entitled to organize casino games and gambling in Monaco. The Complainant owns the following trademark registrations:

- Monaco Trademark Registration No. 96.17407 CASINO DE MONTE-CARLO, applied for on August 13, 1996, renewed October 10, 2006 with registration date December 29, 2006.

- Monaco Trademark Registration No. 02.23234 CASINO DE MONACO, applied for on July 1, 2002 and

registered on September 30, 2002;

The Complainant is operating since 1863 in the field of gambling and casino services, more recently also online at the website “www.montecarlocasino.com”.

The Complainant provided evidence in support of the above.

The disputed domain names <bgmonaco.com> (registered on February 4, 2007), <crapsmonaco.com> (registered on November 29, 2008), <crapsmontecarlo.com> (registered on November 29, 2008), <montecarlobets.com> (registered on April 2, 2001) and <roulettemonaco.com> (registered on November 29, 2008) all point to webpages offering online casino games, black jack, poker, roulette, slot machines as well as several links to other online casino game websites.

5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed domain names <bgmonaco.com>, <crapsmonaco.com>, <crapsmontecarlo.com>, <montecarlobets.com> and <roulettemonaco.com> are confusingly similar to its

trademarks CASINO DE MONTE-CARLO and CASINO DE MONACO, being a combination of the generic terms “bg” (standing for backgammon), “craps”, “bets” or “roulette” and the Complainant’s trademarks.

Moreover, the Complainant affirms that the Respondent has no rights or legitimate interests in respect of the disputed domain names since it has not been authorized by the Complainant to register and/or use the disputed domain names and it is not making a noncommercial or fair use of the disputed domain names.

The Complainant submits that the Respondent has registered and is using the disputed domain names in bad faith.

The Complainant further asserts that its trademarks enjoy substantial reputation and the Respondent could not have registered the disputed domain names without knowledge of the Complainant’s trademark rights, especially as a professional in the online casino business.

Furthermore, the Complainant argues that the Respondent is using the disputed domain names to intentionally attempt to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s trademarks.

Finally, a further proof of the Respondent’s bad faith is that, in response to two cease and desist letters sent by the Complainant in July 2013, the Respondent offered to transfer the disputed domain names for a payment equal to the cost of a UDRP proceeding.

B. Respondent

The Respondent has made no formal substantive reply to the Complainant’s contentions and is in default; in reference to paragraphs 5(e) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward.

A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences by the panel, in accordance with paragraph 14(b) of the Rules, may be drawn (see also Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC v. MARK FREEMAN, WIPO Case No. D2000-1080; ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al., WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No. D2007-0288).

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant is the owner of the registered trademarks CASINO DE MONTE-CARLO and CASINO DE MONACO and that the disputed domain names <bgmonaco.com>, <crapsmonaco.com>, <crapsmontecarlo.com>, <montecarlobets.com> and <roulettemonaco.com> are confusingly similar to the Complainant’s trademarks.

Regarding the addition of the generic terms “bg” , “craps”, “bets” and “roulette”, the Panel notes that it is now well established that the addition of generic terms to a domain name does not necessarily distinguish the domain name from a trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713). The addition of the terms “bg”, “craps”, “bets” and “roulette” does not therefore prevent the disputed domain names from being confusingly similar to the Complainant’s trademarks.

In fact, the use of generic terms referring to gaming activities instead of the term “casino”, when associated with the terms “Monte-Carlo” and “Monaco”, makes a direct reference to the Complainant’s trademarks (see, e.g., Société des Bains de Mer et du Cercle des Etrangers à Monaco v. International Lotteries, WIPO Case No. D2000-1327; Société des Bains de Mer et du Cercle des Etrangers à Monaco v.International Services Inc. et al., WIPO Case No. D2000-1328)

It is also well accepted that a top-level domain suffix, in this case “.com”, may be ignored when assessing the confusing similarity between a trademark and a domain name (see, e.g., VAT Holding AG v Vat.com, WIPO Case No. D2000-0607).

The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain names are confusingly similar to the Complainant’s trademarks, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Respondent has failed to file a Response in accordance with the Rules, paragraph 5.

The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. It asserts that the Respondent is not using the disputed domain names for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.

The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain names. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain names.

The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that [the respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that the complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the domain name; or

(ii) that [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

(iii) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site 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] web site or location.”

As regards to the registration in bad faith of the disputed domain names, the registration of the Complainant’s trademarks has been proved and the Panel finds that the Respondent knew or must have known the Complainant and/or its trademarks, especially because the added generic terms “bg”, “craps”, “bets” and “roulette”, all refer to the Complainant’s business activity; therefore, in this Panel’s opinion, the disputed domain names were registered in bad faith.

As regards the use in bad faith, the webpages at the disputed domain names all refer to online casino games and gambling with several links to other websites dedicated to online casino games and gambling activities, that is the Complainant’s business activity.

The above, together with the Respondent’s offer to sell the disputed domain names to the Complainant in exchange for the cost of a UDRP proceeding, suggests to the Panel that the Respondent intentionally registered and uses the confusingly similar disputed domain names in order to attract, for commercial gain, Internet users to its websites, in accordance with paragraph 4(b)(iv) of the Policy, or alternatively to resell them to the Complainant, in accordance with paragraph 4(b)(i) of the Policy.

The Panel finds that the Complainant has presented sufficient evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain names in bad faith.

The Panel therefore finds that the Policy, paragraph 4(a)(iii) has been satisfied.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <bgmonaco.com>, <crapsmonaco.com>, <crapsmontecarlo.com>, <montecarlobets.com> and <roulettemonaco.com> be transferred to the Complainant.

Edoardo Fano
Sole Panelist
Date: December 18, 2013