WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

SAM Marques de l’Etat de Monaco and Gouvernement de la Principauté de Monaco v. John Swartz

Case No. D2013-0099

1. The Parties

The Complainants are SAM Marques de l’Etat de Monaco of Gabian, Monaco and Gouvernement de la Principauté de Monaco of Monaco, represented by Cabinet Granger, France.

The Respondent is John Swartz of North Miami, Florida, United States of America, represented by the Law Office of Jerry D. Haynes, P.A., United States of America.

2. The Domain Name and Registrar

The disputed domain name <montecarlovodka.com> (the “Disputed Domain Name”) is registered with Register.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2013. On January 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 16, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant and providing the contact details for the Disputed Domain Name.

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 January 31, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2013. The Response was filed with the Center on February 20, 2013.

The Center appointed Gabriela Kennedy as the sole panelist in this matter on February 27, 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 the Rules, paragraph 7.

4. Factual Background

The Complainants are the Gouvernement de la Principauté de Monaco (i.e. the Government of the Principality of Monaco, the “Principality”) and SAM Marques de l’Etat de Monaco (i.e. SAM Marks of the State of Monaco, “SAM”), a state owned company. According the Complaint, the Principality has assigned several trade marks to SAM, who are in charge of the management, protection, marketing and use of such trade marks.

The Respondent is an individual based in Florida, United States of America, and is in the liqueur business. As at the date of this Decision, the Disputed Domain Name resolves to a website which states that a vodka named Monte Carlo Vodka (the “Vodka”) will be available soon (the “Website”).

The Disputed Domain Name was created on December 19, 2010.

5. Parties’ Contentions

A. Complainant

The Complainants’ contentions can be summarised as follows:

(a) The Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights:

(i) the Complainants own unregistered rights for MONTE-CARLO through the use of the MONTE-CARLO trade mark;

(ii) the Complainants own several trade marks for MONTE-CARLO, including:

i. Monegasque trade mark No. 10.27960 for classes 1 to 45 inclusive, filed on June 2, 2010 and registered on July 14, 2010;

ii. International trade mark No. 1069076 for classes 9, 12, 14, 16, 18, 25, 28, 35, 38, 39, 41 and 43 with effect in Australia, Bahrain, Belarus, Switzerland, China, France, Georgia, Israel, Japan, Liechtenstein, Republic of Korea, Morocco, Norway, Oman, Singapore, San Marino, Syrian Arab Republic, Turkey, Ukraine, United States of America, and the European Union, registered on December 1, 2010 with a priority date of June 2, 2010; and

iii. International figurative trade mark No. 748152, registered on December 12, 2000.

(iii) the Complainants operate several domain names for or incorporating the MONTE-CARLO trade mark;

(iv) the Disputed Domain Name incorporates the Complainant’s MONTE-CARLO trade mark in its entirety;

(v) the addition of the generic term “vodka” to the Disputed Domain Name does not detract from the confusing similarity with the MONTE-CARLO trade mark;

(vi) the Complainants’ MONTE-CARLO trade marks were registered prior to the registration of the Disputed Domain Name and cover the manufacturing and marketing of vodka; and

(vii) the addition of the generic top-level domain (“gTLD”) extension “.com” is irrelevant in determining identity or confusing similarity to the trade mark.

(b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name:

(i) there is no evidence to suggest that the Respondent is commonly known under the Disputed Domain Name;

(ii) the Respondent has no relationship whatsoever with the Complainants and the Complainants have not authorised the Respondent to use the MONTE-CARLO trade mark;

(iii) the Complainants’ MONTE-CARLO trade marks predate the registration and use of the Disputed Domain Name;

(iv) the Complainants’ MONTE-CARLO trade mark is well-known and widely used around the world;

(v) the Respondent has not used the Disputed Domain Name in connection with a bona fide offering of goods, and has not used the Disputed Domain Name for a legitimate noncommercial purpose. The Disputed Domain Name resolves to a website where counterfeit MONTE-CARLO bottles of vodka can be purchased; and

(vi) the Respondent is not making a fair use of the Disputed Domain Name but is using it to mislead consumers on the identity of the owner of the Website and the origin of the Vodka. The Respondent is therefore trading on the goodwill of the Complainants’ MONTE-CARLO trade mark.

(i) the Complainants MONTE-CARLO trade mark has no meaning in any language; and

(ii) the Complainants’ MONTE-CARLO trade mark is well-known throughout the world, including in the United States of America, where the Respondent is based. The Respondent has therefore registered the Disputed Domain Name in order to create confusion with the Complainants’ well-known MONTE-CARLO trade mark.

B. Respondent

(a) The Disputed Domain Name is not identical or confusingly similar to a trade mark or service mark in which the Complainant has rights:

(i) the Respondent has a pending United States of America trade mark application for MONTE CARLO WORLD’S MOST PRESTIGIOUS VODKA; and

(ii) while the Disputed Domain Name incorporates the MONTE-CARLO trade mark in its entirety, it also incorporates the term “vodka” and the Website is used to promote the Vodka.

(b) The Respondent has rights or legitimate interests in respect of the Disputed Domain Name:

(i) the Respondent is using the Disputed Domain Name in connection with a bona fide offering of goods, in particular the Vodka;

(ii) the Facebook and Twitter page for the Respondent’s goods demonstrate use of the MONTE CARLO WORLD’S MOST PRETIGIOUS VODKA trade mark;

(iii) the Respondent applied for the MONTE CARLO WORLD’S MOST PRESTIGIOUS VODKA trade mark on July 8, 2011 and submitted a statement of use on September 20, 2012 alleging a first use date of June 1, 2012. These dates predate the commencement of this proceeding and provides demonstrative preparations for use of the Disputed Domain Name in connection with a bona fide offering of goods; and

(iv) the Respondent is commonly known by the Disputed Domain Name.

(i) the Complainants have not provided any example of goods or services related to vodka that the Complainants market and/or manufactures;

(ii) the Complainants have not demonstrated any circumstances which indicate that the Respondent registered the Disputed Domain Name for the purpose of selling, renting or transferring the Disputed Domain Name to the Complainants or to any competitor of the Complainants. The Respondent has registered the Disputed Domain Name for the purpose of offering bona fide goods and services, in particular the Vodka, and has no intention or desire to sell or rent the Disputed Domain Name to the Complainants or any competitor of the Complainants;

(iii) the Respondent has not registered the Disputed Domain Name to prevent the Complainants from reflecting their MONTE-CARLO trade mark. In fact, the Complainants have shown that they have registered several other domain names which incorporate their MONTE-CARLO trade mark; and

(iv) the Respondent has not intentionally attempted to attract Internet users based upon a likelihood of confusion with the Complainants’ MONTE-CARLO trade mark. The Complainants do not manufacture and/or sell alcoholic beverages and have not submitted any evidence to show that they intend to produce such goods.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainants to show each of the following three elements:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights;

(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 by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Complainants have rights in respect of the MONTE-CARLO trade mark on the basis of Monegasque trade mark No. 10.27960, registered on July 14, 2010, and International trade mark No. 1069076 registered on December 1, 2010 with a priority date of June 2, 2010.

It is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the gTLD extension, in this case “.com” can be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing Ltd., WIPO Case No. D2006-0762).

The Disputed Domain Name incorporates the Complainants’ MONTE-CARLO trade mark in its entirety. Except for a hyphen between “Monte” and “Carlo”, the only difference between the Disputed Domain Name and the Complainants’ mark is the inclusion of the generic term “vodka”. It is well established that in cases where the distinctive and prominent element of a disputed domain name is the complainant’s mark and the only addition is a generic term or hyphen that adds no distinctive element, such an addition does not negate the confusing similarity between the disputed domain name and the mark (see Oakley, Inc. v. Joel Wong/BlueHost.com- INC, WIPO Case No. D2010-0100; Diageo Ireland v. Guinnessclaim, WIPO Case No. D2009-0679; and The Coca-Cola Company v. Whois Privacy Service, WIPO Case No. D2010-0088).

The Panel finds that “Monte Carlo” is the distinctive and prominent component of the Disputed Domain Name and the addition of the generic term “vodka” and hyphen does nothing to distinguish the Disputed Domain Name from the Complainants’ trade mark.

The Panel accordingly finds that the Disputed Domain Name is confusingly similar to the MONTE-CARLO trade mark in which the Complainants have rights, and that element 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Complainants contend that the Respondent is not connected or associated with the Complainants and is not on any other basis licensed or authorised to use their MONTE-CARLO trade mark. The Panel accepts that the Complainants have not licensed or otherwise authorised the Respondent to use the MONTE-CARLO trade mark. The Panel also notes that there is no evidence that the Respondent has been commonly known by the Disputed Domain Name and finds that the use of the Website to market and/or sell the Vodka precludes any argument that the Disputed Domain Name is being used for legitimate noncommercial or fair use purposes. As such, the Respondent (at least if it wishes to bring itself within the express circumstances described in paragraph 4(c)(i) of the Policy) needs to demonstrate that it acquired rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy through use of the Disputed Domain Name in connection with a bona fide offering of goods or services.

Previous UDRP panels have held that the use of a domain name comprising of a geographic indicator is analogous to the use of a generic or descriptive term in a domain name (see Junta de Andalucia Consejeria de Turismo, Comercio y Deporte, Turismo Andaluz, S.A. v. Andalucía.Com Limited, WIPO Case No. D2006-0749, the “Andalucia Case”), and that a respondent may be able to establish rights or legitimate interests in a disputed domain name if the respondent can show that it used the disputed domain name in connection with the geographic meaning of the word. In the Andalucia Case, the panel there held that the respondent had legitimate rights or interests in the disputed domain name as he was “using a geographic indication to describe his product/business or to profit from the geographic sense of the word without intending to take advantage of the complainant’s right in that word”.

However in the current case, the Vodka has no affiliation with the city of Monte Carlo or the Principality of Monaco, and is in fact distilled and bottled in Cognac, France. In addition, the Panel notes that each bottle of the Vodka bears the words “Monte Carlo” in large font, along with a logo which is similar to the coat of arms of the Principality of Monaco. As such, the Panel finds that the Respondent is taking advantage of the fame of the Complainants MONTE-CARLO trade mark for the purpose of marketing and/or selling the Vodka. The Respondent therefore cannot be said to have used the Disputed Domain Name in connection with a bona fide offering of goods or services.

Further, the Complainants submit that the Respondent is not commonly known by the “Monte Carlo” name. While the Respondent submit that it has a pending US trade mark application for the mark “MONTE-CARLO WORLD’S MOST PRESTIGIOUS VODKA” dated July 8, 2011, the Panel notes that in §2(a) (15 U.S.C. §1052) of the US Trade Mark Law: Rules of Practice & Federal Statutes (“US Trade Mark Law”), trade mark applications shall be refused if they consist of a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of goods and is first used by the applicant in connection with wines or spirits on or one year after the date the WTO Agreement (dated April 15, 1994) enters force in the United States. In addition, §2(b) (15 U.S.C. §1052) of the US Trade Mark Law prohibits the registration of a trade mark comprising of the coat of arms of any US State, municipality or foreign nation. As a result, the Panel does not find it likely that the Respondent’s pending US trade mark application will be successful or would give the Respondent any legitimate interests in the Disputed Domain Name. Accordingly, in the Panel’s view, the Complainants have made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name and therefore the Respondent now has the burden of demonstrating that it does possess such rights or legitimate interests.

The Panel has taken due note of all of the Respondent’s contentions; however, the Panel does not find sufficient evidence on the provided record to establish that the Respondent could assert rights or legitimate interests in the Disputed Domain Name under the Policy. Accordingly, the Panel finds that the Complainants have satisfied paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainants to establish that the Respondent registered and is using the Disputed Domain Name in bad faith.

The Respondent has no rights or legitimate interests in the Disputed Domain Name, which may in itself be an indication of bad faith. Evidence of bad faith includes knowledge of a well-known trade mark at the time of registration of a domain name by a respondent (see Samsonite Corporation v. Colony Holding, NAF Claim No. 0094313). The Panel accepts that the Complainants’ MONTE-CARLO trade mark is well-known in many jurisdictions in connection with the city of Monte Carlo and the Principality of Monaco. Therefore, the Panel accepts that the Respondent must have known of the Complainants’ MONTE-CARLO trade mark at the time of registering the Disputed Domain Name.

The Complainants assert that the Disputed Domain Name is being used to offer for sale counterfeit goods bearing the MONTE-CARLO trade mark. Irrespective of whether the Vodka can be considered to be counterfeit, the Panel finds that the Respondent’s conduct in registering the Disputed Domain Name to market and/or sell the Vodka without the authorisation, approval or licence from the Complainants amounts to bad faith registration and use under paragraph 4(b)(iv) of the Policy (see Goyard St-Honoré v. Domain Whois Protection Service / Lin Honghai, WIPO Case No. D2012-1159).

Further, as discussed in relation to the Respondent’s lack of rights or legitimate interests in the Disputed Domain Name, the Website, as well as the Vodka, bears a logo which is confusingly similar to that of the coat of arms of the Principality of Monaco. The Panel finds that there is no plausible explanation for the Respondent’s use of the MONTE-CARLO trade mark along with a logo which is confusingly similar to the coat of arms of the Principality of Monaco other than to trade on the Complainants’ goodwill in the trade mark, and to attract for commercial gain, Internet users to the Disputed Domain Name by creating a likelihood of confusion with the Complainants’ MONTE-CARLO trade mark as to the source, sponsorship, affiliation, or endorsement of the Vodka (see Compagnie Générale des Etablissements Michelin v. Pavol Horecny, WIPO Case No. D2009-1554).

Given the degree of fame of the Complainants’ MONTE-CARLO trade mark, the Panel accepts that the Respondent has registered and uses the Disputed Domain Name solely for the purpose of capitalising on the Complainants’ reputation and goodwill to generate profits. In these circumstances the Panel finds that there is no basis on which to infer that the Respondent has used the Disputed Domain Name in any manner or for any purpose otherwise than in bad faith.

Accordingly, the Panel finds that the Complainants have satisfied paragraph 4(a)(iii) of the Policy in respect of the Disputed Domain Name.

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 <montecarlovodka.com> be transferred to the Complainants.

Gabriela Kennedy
Sole Panelist
Date: March 15, 2013