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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v. Evgeniy M Roman

Case No. D2014-0546

1. The Parties

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

The Respondent is Evgeniy M Roman of Kyiv, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <monaco-online-casino.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2014. On April 4, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 8, 2014, the Registrar 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 April 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 29, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default.

The Center appointed Ladislav Jakl as the sole panelist in this matter on May 13, 2014. 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.

On April 8, 2014 the Registrar confirmed that the language of the registration agreement for the disputed domain name is English. Therefore, in accordance with paragraph 11 of the Rules, the language of the administrative proceedings is English.

4. Factual Background

The Complainant is the owner of trademark CASINO DE MONTE-CARLO, No. 96.1747, filed on August 13, 1996 with the Monaco Trademark Office. The Complainant also owns the trademark CASINO DE MONACO, No. 02.23234, which was registered on September 30, 2002 with the Monaco Trademark Office.

The disputed domain name was registered on January 10, 2014.

5. Parties’ Contentions

A. Complainant

The Complainant introduces that the disputed domain name <monaco-online-casino.com> is confusingly similar to the Complainant’s trademarks CASINO DE MONTE-CARLO and CASINO DE MONACO as it contains both terms ”Monaco” and ”Casino”, or the synonymous noun for “Monaco” and “Monte Carlo”, of the Complainant`s trademarks. As regards the similarity between the terms “Monte Carlo” and “Monaco”, the Complainant refers to previous UDRP panel decisions, according to which the replacement of these terms is not capable to sufficiently differentiate the disputed domain name from the Complainant’s trademarks (La Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v. Thomas Proud, WIPO Case No. D2000-1316). The adjunction of the descriptive term “online” in the disputed domain name <monaco-online-casino.com> does not erase the strong similarity that exists with the prior trademarks of the Complainant (Repsol YPF S.A. v. Talk2middle TOP Domain Reg, WIPO Case No. D2008-0556; Hoffmann-La Roche Inc. v. Onlinetamiflu.com, WIPO Case No. D2007-1806). Moreover, the presence of dashes between each term composing the disputed domain name is relevant and adds no distinctiveness and the presence of these dashes even increases the likelihood of confusion with the trademarks of the Complainant (Dr. Grandel GmbH v. West End Internet Services, WIPO Case No. D2005-0853; The Coca-Cola Company v. Bernard Peters, WIPO Case No. D2007-0478; DI EI Industrie-Electronic GmbH and TR Electronic v. E-Orderdesk, WIPO Case No. D2007-0961; Mrs. Eva Padberg v. Eurobox Ltd., WIPO Case No. D2007-1886). The Complainant concludes that the disputed domain name is confusingly similar to the Complainant’s trademarks.

As to rights or legitimate interests in respect of the disputed domain name, the Complainant essentially contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has been registered no trademark in any of the European countries and to the best of Complainant’s knowledge, the Respondent holds no intellectual property rights over any trademark that contains the terms “Monte-Carlo” or “Monaco”. In addition, the Respondent is domiciled in Ukraine, it has no geographical link with the Principality of Monaco where the Complainant and its casinos are located. The Complainant further introduces that it has never authorized the Respondent to use its trademarks CASINO DE MONTE-CARLO and CASINO DE MONACO, nor to register and use the disputed domain name containing such trademarks, and that the Complainant does not have any type of business relationship with the Respondent. Therefore, the Respondent cannot claim that it has legitimate interest or made bona fide use of the disputed domain name. The Complainant concludes that the Respondent in this case has no rights or legitimate interests in the disputed domain name.

Furthermore, the Complainant essentially argues that the disputed domain name is also being used in bad faith, as the Respondent has registered the disputed domain name in bad faith because it has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the Complainant´s trademarks. Moreover, the Complainant argues that the Respondent uses the disputed domain name in connection with online casino that offers gambling games and that this website is directly competing with Complainant’s activities. In addition, a picture of the “Casino de Monte-Carlo” is represented on the website at the disputed domain name and some visual elements from the official website “www.montecarlocasino.com”, operated by BetClic Everest, the Complainant’s official licensee, are reproduced on it, such as the picture of the same blond woman with the dress or the same color gradation on the right of the “Casino de Monte-Carlo”. Those elements, in the Complainant’s opinion, create a strong likelihood of confusion to Internet users and it is obvious that the Respondent is passing off the Complainant’s trademarks in order to attract Internet users to its own gambling website. The Complainant further states that the Respondent is a professional in the online casino business. The Complainant concludes that all these elements show that the disputed domain name has been registered and is being used in bad faith by the Respondent.

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain name is 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 name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant.

A. Identical or Confusingly Similar

In the Panel’s assessment, there is no doubt that the disputed domain name <monaco-online-casino.com> is confusingly similar to the Complainant’s trademarks CASINO DE MONTE-CARLO and CASINO DE MONACO as it contains both terms “Monaco” and “Casino”, or the synonymous noun for “Monaco”, “Monte Carlo”, of the Complainant’s trademarks. The Panel accepts the Complainant’s arguments that the replacement of these terms is not capable to sufficiently differentiate the disputed domain name from the Complainant’s trademarks (La Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v. Thomas Proud, WIPO Case No. D2000-1316) and that the adjunction of the descriptive term “online” in the disputed domain name <monaco-online-casino.com> does not erase the strong similarity that exists with the prior trademarks of the Complainant (Repsol YPF S.A. v. Talk2middle TOP Domain Reg, WIPO Case No. D2008-0556; Hoffmann-La Roche Inc. v. Onlinetamiflu.com, WIPO Case No. D2007-1806; (Swarovski Aktiengesellschaft v. Jun Qiao, WIPO Case No. D2013-1617). Likewise, the presence of dashes between each term composing the disputed domain name is relevant and adds no distinctiveness and the presence of these dashes even increases the likelihood of confusion with the trademarks of the Complainant (Dr. Grandel GmbH v. West End Internet Services, WIPO Case No. D2005-0853; The Coca-Cola Company v. Bernard Peters, WIPO Case No. D2007-0478; DI EI Industrie-Electronic GmbH and TR Electronic v. E-Orderdesk, WIPO Case No. D2007-0961; Mrs. Eva Padberg v. Eurobox Ltd., WIPO Case No. D2007-1886). Moreover, the inclusion of the generic Top-Level Domain (“gTLD”) suffix “.com” does not avoid confusing similarity of the disputed domain name and the Complainant’s trademark (AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; and Sanofi-Aventis v. Brad Hedlund, WIPO Case No. D2007-1310; Swarovski Aktiengesellschaft v. Luo Li, WIPO Case No. D2012-1604; Swarovski Aktiengesellschaft v. Tiphayne Decultot, WIPO Case No. D2013-1858). The Complainant’s registration and use of the relevant trademarks predate the Respondent’s registration of the disputed domain name.

For all the above cited reasons, the Panel concludes that disputed domain name is confusingly similar to the Complainant’s trademarks and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. Any of the following circumstances, as indicated in paragraph 4(c) of the Policy, in particular but without limitation shall demonstrate rights or legitimate interests:

(i) before the Respondent obtained any notice of the dispute, it has used or has made 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) the Respondent (as individual, business, or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel accepts the arguments of the Complainant, unchallenged by the Respondent, that the Respondent has no rights or legitimate interests in the disputed domain name as the Complainant has never authorized the Respondent to use its trademarks CASINO DE MONTE-CARLO and CASINO DE MONACO, nor to register and use the disputed domain name containing such trademarks, and that the Complainant does not have any type of business relationship with the Respondent. The Respondent has no rights or legitimate interests in the disputed domain name and the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s trademarks in the disputed domain name or in any other manner. There is no evidence that the Respondent, before any notice of the dispute, has used, or has made 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. Moreover, the Respondent cannot establish rights or legitimate interests in the disputed domain name under paragraph 4(c)(i) of the Policy, as it knew at the time of the registration that it could not make any actual use of the disputed domain name without tarnishing the Complainant’s trademarks. Therefore, the Respondent cannot claim that it has rights or legitimate interests in the disputed domain name. The Panel is of the view that the Respondent has used Complainant’s trademarks in the disputed domain name to create the impression that it is associated with the Complainant. Furthermore, the Respondent has used the trademarks of the Complainant on the website at the disputed domain name, where it offers for sale the Complainant’s products without identifying itself as being independent from the Complainant, which supports the contention that the Respondent chose the disputed domain name only because it was seeking to create an association with the Complainant. In the Panel’s view, the Respondent’s use of the Complainant’s trademarks is clearly for the purpose of misleading consumers into believing that the Respondent is associated with the Complainant. For the above cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, if found by the Panel to be present, shall be evidence of both registration and use of the disputed domain name in bad faith. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):

(ii) the Respondent has registered the disputed 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) 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 his website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on that website or location.

The Complainant has submitted evidence, unchallenged by the Respondent, that the Respondent has registered the disputed domain name with the knowledge of the Complainant’s rights in the Complainant’s trademarks and that the Respondent’s bad faith is evidenced by several circumstances indicating that the Respondent must have been aware of the Complainant’s trademarks at the time of the registration of the disputed domain name. In doing so, in the Panel’s considered assessment, the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, and for the purpose of disrupting the business of the Complainant. Furthermore, the Panel notes that the disputed domain name is also being used in bad faith, it 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 trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on that website or location (Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784; F. Hoffmann-La Roche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049).

For the above cited reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith. Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.

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 <monaco-online-casino.com> be transferred to the Complainant.

Ladislav Jakl
Sole Panelist
Date: May 25, 2014

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