WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
La Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v. Domain Privacy Service / Trond Nyland
Case No. D2013-1086
1. The Parties
Complainant is La Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco of Monaco, represented by De Gaulle Fleurance & Associés, France.
Respondent is Domain Privacy Service of Provo, Utah, United States of America / Trond Nyland of Stavanger, Norway.1
2. The Domain Name and Registrar
The disputed domain name <monacoslotmachine.com> is registered with FastDomain, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2013. On June 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 17, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 18, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an Amended Complaint on June 20, 2013.
The Center verified that the Complaint together with the Amended 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 Respondent of the Complaint, and the proceedings commenced on June 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 15, 2013.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on July 22, 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
Complainant is a Monegasque company, the majority of the share capital of which is owned by the Government of the Principality of Monaco. Already since April 2, 1863, Complainant has been granted by the Prince of Monaco a monopoly for casino and gambling activities for the territory of the Principality of Monaco and is, therefore, the sole company entitled to organize games and gambling therein (this monopoly was last renewed by “Ordonnance Souveraine n°15.732” dated March 13, 2003).
Complainant has provided evidence that it is the registered owner of two national (Monegasque) trademarks, namely:
• Word mark: CASINO DE MONACO, Monaco Trademark Office, Registration Number: 02.23234, Registration Date: September 30, 2002, Status: Active;
• Word mark: CASINO DE MONTE-CARLO, Monaco Trademark Office, Registration Number: 96.17407, Registration Date: August 13, 1996, Status: Active.
The disputed domain name <monacoslotmachine.com> was registered on October 4, 2012; by the time of the filing of this Complaint, it redirected to a website at “www.monacoslotmachine.com”, offering, inter alia, online gambling services, e.g. an online slot machine.
Complainant requests that the disputed domain name be transferred to Complainant.
5. Parties’ Contentions
Complainant alleges that its trademarks enjoy strong notoriety and worldwide renown.
Complainant asserts that the disputed domain name is identical or at least confusingly similar to Complainant’s CASINO DE MONACO trademark, because (1) both the disputed domain name and the trademark include the term “Monaco” and (2) the term “slotmachine” involves the idea of casino games and is, therefore, conceptually identical with the term “casino”.
Complainant further suggests that Respondent has no rights or legitimate interests in respect of the disputed domain name, because (1) Respondent apparently holds no intellectual property rights in the terms “Monaco” and “slot machine”, (2) Respondent is residing in Utah and has no geographical links with the Principality of Monaco, (3) Respondent has not received any license or authorization from the authorities of the Principality of Monaco to operate a casino therein, (4) Complainant has never authorized Respondent to make use of its 140 years old famous marks nor to register and/or use the disputed domain name nor has Complainant any type of business relationship with Respondent and (5) Respondent cannot claim that he has made a bona fide use of the disputed domain name.
Finally, Complainant claims that the disputed domain name was registered and is being used in bad faith since (1) given the strong notoriety and worldwide renown of Complainant’s trademark, Respondent could not ignore that the registration and use of the disputed domain name would violate Complainant’s trademark rights especially given the fact that Respondent’s website offered online casino games, (2) Respondent, who seems to be active in the online gambling business, should have reasonably been aware of the fact that Complainant has a strong policy in protecting and enforcing its intellectual property rights and preserving its reputation and renown from being unduly used by third parties and (3) Respondent undertook to run a website which was directly competing with Complainant’s activities and, therefore, intentionally attempted to attract, for commercial gain, Internet users to Respondent’s own website by creating a likelihood of confusion with Complainant’s trademark.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That 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.
Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant. Paragraph 5(e) of the Rules provides that if Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel is to decide the dispute solely based upon the Complaint.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <monacoslotmachine.com> is confusingly similar at least with the CASINO DE MONACO trademark in which Complainant has shown to have rights.
It has been held in numerous UDRP decisions and has meanwhile become a consensus view among UDRP panels that the threshold test for identity or confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion (see WIPO Overview of Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2). In this context, UDRP panels typically apply a rather “low threshold” test essentially to establish Complainant’s standing to proceed to the merits of the case under the other elements of the UDRP, namely rights or legitimate interests and bad faith (see Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco vs. Traffic Label Limited, WIPO Case No. D2013-0067; Cheezburger, Inc. v. WeKnowMemes (c/o Dynadot Privacy), WIPO Case No. D2012-2452).
The Panel notes that the disputed domain name as well as the CASINO DE MONACO trademark both include the (geographical) term “Monaco”. The Panel agrees with Complainant’s contentions, which also are in line with a number of recent UDRP decisions, that the Principality of Monaco is quite regularly associated with the casino and gaming industry (see Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Iggi Networks Media Group, WIPO Case No. D2000-1324). Therefore, it is in fact reasonable to argue that the terms “slotmachine” as contained in the disputed domain name and “casino” as contained in Complainant’s CASINO DE MONACO trademark are at least conceptually highly similar as they both refer to gambling activities. This conclusion taken together with the identity of the term “Monaco” leads to the finding of a confusing similarity as required under the UDRP.
Therefore, the first element under the Policy as set forth by paragraph 4(a)(i) in the case at hand is fulfilled.
B. Rights or Legitimate Interests
The Panel is further convinced that on the basis of Complainant’s undisputed contentions, Respondent apparently neither has made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent made a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain.
Complainant asserts, and there is no reason to believe in the contrary, that Respondent has not received any license or authorization from the authorities of the Principality of Monaco to operate a casino therein nor has Complainant ever authorized Respondent to make use of its 140 years old trademarks nor to register and/or use the disputed domain name in any way. Moreover, there are no indications whatsoever apparent that Respondent has its own (intellectual property) rights in the designations “monaco” and/or “slotmachine” or has any other function or the like which might confer any rights or legitimate interests in the disputed domain name under the UDRP.
The Panel rather takes notice of the fact that by the time of the filing of this Complaint, the disputed domain name redirected to a website at “www.monacoslotmachine.com” used, inter alia, to advertise online gambling, e.g. an online slot machine, together with a number of hyperlinks to commercially active websites of third parties, such as “www.amazon.com”. Yet by the time of the rendering of this Decision, the disputed domain name redirects to a typical pay-per-click (PPC) website which provides for various hyperlinks to commercially active websites many of which refer to the Principality of Monaco and the gambling industry.
Against this background, the Panel takes the view that – regardless of the alleged strong notoriety and worldwide renown of Complainant’s CASINO DE MONACO trademark – Respondent (who apparently is active himself in the gambling industry) by the time of the registration and making use of the disputed domain name apparently was well aware of the fact that the Principality of Monaco is famous and well-known for its gambling industry and, thus, intended to exploit for his own (commercial) purposes the goodwill that Monaco, represented by Complainant as the owner of a monopoly for casino and gambling activities for the territory of the Principality of Monaco, has acquired over decades in relation to the gambling industry. Therefore, it may also be concluded that Respondent neither made use of the disputed domain name in connection with a bona fide offering of goods or services nor in a legitimate, noncommercial or fair manner without intent for commercial gain.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 2.0, paragraph 2.1). In the case at hand, Respondent did not reply to Complainant’s allegations as they were included in the Complaint duly notified to Respondent by the Center on June 24, 2013.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and thus the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
The Panel takes the view that the redirection of the disputed domain name, which is confusingly similar to Complainant’s CASINO DE MONACO trademark, to a website which refers to (online) gambling activities that belong to the core of Complainant’s business (either as a website offering an online slot machine or as a typical PPC website referring to the Principality of Monaco and the gambling industry as such), is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website, by creating a likelihood of confusion with Complainant’s CASINO DE MONACO trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or a product thereon. Such circumstances shall be evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Panel clearly notes that Respondent did not undertake to defend his rights under the UDRP, which is designed to resolve rather clear cases of cyber-squatting and, therefore, leaves quite a bit of room for domain name owners to justify the registration and making use of a domain name in which a third party claims rights based on the existence of respective trademarks. In the case at hand, Respondent, however, decided to stay silent which allowed the Panel to decide the case on the basis of Complainant’s assertions only. Moreover, Respondent had made use of a privacy service in order to conceal his true identity, which certainly is not illegal as such, but under the circumstances in the case at hand at least throws a light on Respondent’s overall behavior that supports the finding of bad faith under the UDRP.
Against this background, the Panel finds that also the third element under the Policy set forth under paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) of the Policy.
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 <monacoslotmachine.com> be transferred to Complainant.
Stephanie G. Hartung
Date: July 26, 2013
1 In accordance with Complainant’s Amended Complaint of June 20, 2013, the term “Respondent” as used by the Panel in the case at hand refers exclusively to Trond Nyland who was confirmed by the Registrar on June 17, 2013 to be the underlying registrant of the disputed domain name.