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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. Tenko Indonesia

Case No. D2015-1086

1. The Parties

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

The Respondent is Tenko Indonesia of Kapubaten Gresik, Jawa Timur, Indonesia.

2. The Domain Name and Registrar

The disputed domain name <montecarlocasinospools.com> (the "Domain Name") is registered with CV. Jogjacamp (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 24, 2015. On June 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 26, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 2, 2015.

The Center verified that 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 the Respondent of the Complaint, and the proceedings commenced on July 7, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 27, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 28, 2015.

The Center appointed Alan L. Limbury as the sole panelist in this matter on August 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 Monegasque company solely entitled to organize games and gambling in the Principality of Monaco. Since April 2, 1863 it has operated the Casino de Monte-Carlo, one of the most renowned and prestigious casinos in the world. It is the proprietor of the Monegasque registered trademarks CASINO DE MONTE-CARLO, filed with the Monaco Trademark Office on August 13, 1996, No.17485 and renewed on October 10, 2006, No. R96.17407 and MONTE CARLO, registered on December 31, 2013, No. 14.30170. Those marks have been used by the Complainant since 1863 for gambling and casino services and are now also used by the Complainant's licensee, BetClic Everest Group, for an online gambling website at "www.montecarlocasino.com". The CASINO DE MONTE-CARLO mark is famous in the field of casinos and gambling.

The Domain Name was registered on May 28, 2015. It resolves to a website offering online casino games. That website appears virtually identical to the Complainant's licensee's website.

5. Parties' Contentions

A. Complainant

Although this Complaint relates only to the Domain Name, the Complaint is written as if more than one domain name were in dispute. This summary of the Complainant's submissions is confined to matters relevant to the Domain Name.

The Complainant says the Domain Name is identical or confusingly similar to its trademarks and that the Respondent has no rights or legitimate interests in the Domain Name, which was registered and is being used in bad faith.

As to legitimacy, the Complainant says the results of a trademark search indicate that the Respondent holds no intellectual property right over any mark that associates the terms "Monte-Carlo" and "casino" with the term "pools"; the Complainant has never authorized the Respondent to use its famous mark CASINO DE MONTE-CARLO nor to register and use the Domain Name; the Complainant has no business relationship with the Respondent; and the use being made of the Domain Name is such that the Respondent can claim no legitimate interest nor any bona fide use of it.

As to bad faith registration, the Complainant says the Respondent's deliberate decision to register the Domain Name associating the words "Monte-Carlo" and "casino" with the term "pools" is clearly proof of bad faith registration. The strong notoriety and world renown of the Complainant's trademarks attest that the Respondent could not ignore that the registration and use of the Domain Name would violate the Complainant's rights especially when the Respondent's website offers online casino games.

As to bad faith use, the Complainant says the Respondent's website has such similarity with the look and feel of the Complainant's licensee's website that it is obvious that the Respondent was aware of the Complainant and its reputation in its trademarks and of the Complainant's official online gaming website. The Respondent is therefore using the Domain Name intentionally to attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of its website.

B. Respondent

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

6. Discussion and Findings

To qualify for cancellation or transfer, the Complainant must prove each element of paragraph 4(a) of the Policy, namely:

(i) the 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 Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the Complainant. See Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International PLC v. Mark Freeman, WIPO Case No. D2000-1080 and Altavista Company v. Grandtotal Finances Limited et. al., WIPO Case No. D2000-0848.

A. Identical or Confusingly Similar

The test of identity or confusing similarity under the Policy is confined to a comparison of the Domain Name and the trademark alone, independent of the products or services for which the Domain Name is used or other marketing and use factors, usually considered in trademark infringement (see Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698; AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327). Confusion in this context, in the sense of bewilderment or failing to distinguish between things, may be regarded as a state of wondering whether there is an association, rather than a state of erroneously believing that there is one. An appropriate formulation might be: "Is it likely that, because of the similarity between the domain name on the one hand and the Complainant's trademark on the other hand, people will wonder whether the domain name is associated in some way with the Complainant?": SANOFI-AVENTIS v. Jason Trevenio, WIPO Case No. D2007-0648.

It is well established that the top level domain ".com" does not generally affect a domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).

The words "monte carlo casino" convey the same meaning as the CASINO DE MONTE-CARLO mark. The lack of spacing between those words, the additional letter "s" and the descriptive term "pools" do not adequately distinguish the Domain Name from that mark. See Wal-Mart Stores, Inc. v. Gerry Senker, WIPO Case No. D2006-0211 (finding <competewithwalmart.com> confusingly similar to WAL-MART).

The Panel finds the Domain Name to be confusingly similar to the Complainant's CASINO DE MONTE-CARLO mark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate its rights to or legitimate interests in the Domain Name for purposes of paragraph 4(a)(ii) of the Policy, i.e.

(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business or other organization) has been commonly known by the Domain Name, even if the Respondent has acquired no trademark or service mark rights; or

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

The CASINO DE MONTE-CARLO mark is distinctive and famous. The Complainant's assertions and the results of its trademark search are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in the Domain Name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and the cases there cited. The Respondent has made no attempt to do so.

The Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the Domain Name in bad faith for purposes of paragraph 4(a)(iii) of the Policy. Of relevance here is sub-paragraph (iv):

(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 its website or location.

The Panel finds that the Domain Name <montecarlocasinospools.com> could not have been registered without knowledge on the Respondent's part of the Complainant and its famous CASINO DE MONTE-CARLO mark. The Domain Name resolves to a website that appears in virtually every respect to be an imitation of that of the Complainant's licensee, offering the same services. Such use clearly falls within the terms of sub-paragraph 4(b)(iv) of the Policy set out above and the Panel has no hesitation in finding that the Respondent registered and is using the Domain Name in bad faith.

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 Domain Name <montecarlocasinospools.com> be transferred to the Complainant.

Alan L. Limbury
Sole Panelist
Date: August 18, 2015

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