WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
La Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v. Vasanthvasan
Case No. D2015-0788
1. The Parties
The Complainant is La Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco, Principality of Monaco, Monaco, represented by De Gaulle Fleurance & Associés, France.
The Respondent is Vasanthvasan of Chennai, India.
2. The Domain Name and Registrar
The Disputed Domain Name <montecarlofunbizz.com> is registered with BigRock Solutions Pvt Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2015. On May 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 4, 2015, 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 May 8, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 29, 2015.
The Center appointed Charné Le Roux as the sole panelist in this matter on June 4, 2015. 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 is a Monaco company founded in April 1863. It operates the well-known and long standing Casino de Monte-Carlo and it has the exclusive rights to provide casino gaming services in the Principality of Monaco. The Complainant’s services and also those offered by its Casino de Monte-Carloextend to casino and gaming services, hotel services, spa services, entertainment services and also sports clubs such as Monte-Carlo Beach Club.
The Complainant owns the registered trade marks CASINO DE MONTE-CARLO, MONTE CARLO, JAZZ A MONTE-CARLO and MONTE CARLO JAZZ, filed at the Monaco Trade Marks Office in August 1996, December 2013 and insofar as the last two marks are concerned, in February 2006. The Complainant offers its entertainment and online gambling and casino services from the domain names <montecarlosbm.com> and <montecarlocasino.com>.
The Disputed Domain Name was registered on December 21, 2014 and the website associated with it offers entertainment and travelling services, with an online casino and lottery service promoted as upcoming services. A corporate address for any enquiries is provided in Malaysia, which corresponds with the address provided for the location of a nightclub also advertised on the website.
5. Parties’ Contentions
A. The Complainant
The Complainant submits that it has acquired rights in its aforestated MONTE CARLO trade marks by virtue of:
a. registrations obtained from the Monaco Trade Marks Office for the said trade marks;
b. its use of its MONTE CARLO trade marks in relation to casino gambling, hotel, spa, sport clubs and entertainment services.
The Complainant also contends that the renown of its CASINO DE MONTE-CARLO trade mark has been acknowledged in several courts around the world.
The Complainant argues that the Disputed Domain Name is identical and/or confusingly similar to its registered trade marks, in that the Disputed Domain Name wholly incorporates the registered trade mark MONTE CARLO and that the terms “fun” and “bizz” also included in the Disputed Domain Name correspond conceptually with the other words in the Complainant’s combination trade marks.
The Complainant contends that the Respondent lacks rights or legitimate interests in the Disputed Domain Name in that:
a. searches conducted by the Complainant of all the searchable jurisdictions and countries for trade mark registrations or applications incorporating the terms “monte carlo”, “fun” and “bizz” brought none to light;
b. searches conducted by a Malaysian patent, design and trade mark agent for a trade name that corresponds with the Disputed Domain Name in Malaysia (since the Respondent’s business address and nightclub is indicated as being in Malaysia) show that there is no company matching the Respondent’s information in Malaysia. In addition, the Malaysian address provided by the Respondent on its website is not an actual address in Kuala Lumpur, Malaysia;
c. the Complainant has not authorized the Respondent to register and use the Disputed Domain Name and since the Disputed Domain Name was registered and used in bad faith, the Respondent can claim no legitimate interest in or bona fide use of it.
The Complainant further contends that the Disputed Domain Name was registered and is being used in bad faith. According to the Complainant, the extent of the Complainant’s operations and trade mark rights make it impossible for the Respondent to have been unaware that the registration and use of the Disputed Domain Name would violate the Complainant’s rights. The Complainant argues that over and above the MONTE CARLO trade mark, the Respondent deliberately selected the terms “fun” and “bizz” to associate the Disputed Domain Name with the Complainant’s registered MONTE CARLO trade mark, in order to cause confusion. The Complainant also points out that the Disputed Domain Name is currently being used for a website that advertises entertainment services.
The Complainant refers, lastly, to previous WIPO UDRP panel decisions, ordering the transfer of many domain names that were held to be identical or confusingly similar to its trade mark and that the Complainant’s strict policy of protecting its trade marks should have been known to the Respondent.
The Complainant requests that the Disputed Domain Name be transferred to it.
B. The Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Disputed Domain Name, the Complainant must prove on a balance of probabilities:
(i) that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which it has rights; and
(ii) that the 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.
A. Identical or Confusingly Similar
The Panel takes account of the fact that one of the trade marks in which the Complainant claims to have acquired rights, namely MONTE CARLO, is also a well-known geographic location, being a district within the Principality of Monaco popular for its sports and leisure events. While there is no specific comment on the protection of geographical terms under the, there is recognition that some geographical terms can be protected under the UDRP if a complainant can show that it has rights in the term and if the term has been used as a trade mark for goods and services other than those that are described by or related to the geographical meaning of the term. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) at paragraph 1.5.
In this instance, the Complainant has obtained a registered trade mark at the Monaco Trade Marks Registry for the term MONTE CARLO, both on its own and in association with other matter for, inter alia, entertainment services, casinos and gaming services. The Panel gives recognition to this registration and absent any challenge by the Respondent, finds that the Complainant has established rights in the trade mark MONTE CARLO for Policy purposes.
The Disputed Domain Name wholly incorporates the registered trade mark MONTE CARLO and, in addition, includes descriptive matter, being the words “fun” and “bizz” but which do not distinguish the Disputed Domain Name from the registered trade mark.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to a mark in which the Complainant has rights. The Complainant has satisfied this Policy requirement.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove a negative, namely that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. This is accomplished as follows:
“Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, the complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interests, the panel then weighs all the evidence with the burden of proof always remaining on the complainant.” See WIPO Overview 2.0 at paragraph 2.1 in this regard.
The facts of this matter are that the Respondent acquired the Disputed Domain Name in December 2014. At that time, the Complainant owned registered trade marks for MONTE CARLO, CASINO DE MONTE-CARLO, JAZZ A MONTE-CARLO and MONTE CARLO JAZZ and had been operational for decades. The website associated with the Disputed Domain Name has images of nightlife entertainment very similar to that incorporated on the website of the Complainant. The website also offers various entertainment services and promotes the future coming of an online casino and online lottery services. An address in Malaysia for the Respondent which corresponds with that of one of its nightclubs was found, through investigations conducted by the Complainant, not to be in existence and neither were the telephone and fax numbers provided. No business name that corresponds with the Disputed Domain Name could be found in the area of the location where the Respondent indicated it conducted business either.
The Panel finds that the Complainant has made out a prima facie case in terms of paragraph 4(a)(ii) of the Policy and that there is a case for the Respondent to answer. However, the Respondent has not filed any answer or come forward with circumstances which indicate that it does have a right or a legitimate interest in the Disputed Domain Name. The Complainant’s contentions therefore stand unchallenged.
Accordingly, the Panel finds that the Complainant has succeeded in meeting the burden of proof under this Policy requirement.
C. Registered and Used in Bad Faith
The Complainant contends that the Respondent’s use and registration of the Disputed Domain Name was in bad faith, since the website associated with the Disputed Domain Name is used in relation to the entertainment industry, demonstrating the Respondent’s intention to lead Internet users to believe that there is an affiliation between the Complainant and the website. Although this was not articulated by the Complainant, it is also clear that the website under the Disputed Domain Name has commercial gain as its driving force, with invitations to Internet users to engage with the Respondent for the various services offered.
The Respondent had an opportunity in this proceeding to demonstrate its rights or legitimate interests, or its good faith conduct, or to challenge the Complainant’s contentions, but elected not to take this up.
Taking all of the circumstances of this case into account, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) 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, <montecarlofunbizz.com>, be transferred to the Complainant.
Charné Le Roux
Date: June 18, 2015