WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v. Katie Silva, Peppermill Resort Casino Reno
Case No. D2016-2300
1. The Parties
The Complainant is Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco of Monaco, represented by De Gaulle Fleurance & Associés, France.
The Respondent is Katie Silva, Peppermill Resort Casino Reno of Reno, Nevada, United States of America.
2. The Domain Name and Registrar
The disputed domain name <monacohotelandcasino.com> (“Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2016. On November 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same date, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 21, 2016. In accordance with the Rules, paragraph 5, the due date for filing the Response was December 11, 2016. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on December 12, 2016.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on December 29, 2016. 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 was established in 1863 in the Principality of Monaco. The Complainant provides casino related services. Since April 2, 1863, the Prince of Monaco granted the Complainant a monopoly over casino and gambling activities in Monaco. Therefore the Complainant is the only entitled company to organize gaming and gambling activities in Monaco. The Complainant owns registered rights in Monaco in the CASINO DE MONTE-CARLO trade mark (filed on August 13, 1996) and the CASINO DE MONACO trade mark (registered on September 30, 2002).
The Disputed Domain Name was registered by the Respondent around September 20, 2016. The Disputed Domain Name resolves to a parking page which contains sponsored links.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows:
(a) The Disputed Domain Name is confusingly similar to the Complainant’s registered trade marks. Previous UDRP panels have found that domain names which incorporate the words “monaco” and “casino” are confusingly similar to the Complainant’s CASINO DE MONACO trade mark and CASINO DE MONTE-CARLO trade mark. Reversing the order of the words as they appear in the Disputed Domain Name (i.e. “monacohotelandcasino”) is insufficient to differentiate the Disputed Domain Name from the Complainant’s trade marks. The panel in Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Corril Hoslding N.V., WIPO Case No. D2005-1342 (involving the domain names <grandcasinomontecarlo.com> and <montecarlograndcasino.com>), held that: “Both domain names incorporate the words ‘casino’ and ‘monte carlo’. These two nouns are the most distinctive parts of the domain names and the Complainant’s trademarks. The combination of these words is distinctive for, and brings to mind the Complainant’s business activities. Having inverted the order of these terms in the domain names at issue does not render them dissimilar”. The addition of the generic word “hotel” does nothing to render the Disputed Domain Name dissimilar to the Complainant’s trade marks. In fact, the addition of this word adds to the confusing similarity, as the Complainant operates several hotels in Monaco.
(b) The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant is not aware of any trade mark rights held by the Respondent, and the Respondent is not authorized to use the Complainant’s trade marks.
(c) The Complainant is well known in the casino and hotel industry. The Respondent is a corporate communications manager at the Peppermill Resort Spa Casino in Reno, and therefore must have been aware of the Complainant. The Respondent is also using the Disputed Domain Name to resolve to a parking page which includes advertisements in connection with hotels. Any attempt by the Respondent to actively use the Disputed Domain Name for any other purpose would inevitably confuse users as to the source, sponsorship, affiliation or endorsement of it by the Complainant.
The Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a response does not automatically result in a decision in favor of the Complainant. However, the failure of the Respondent to file a response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(1) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(3) 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 Complainant has rights in the CASINO DE MONACO trade mark and CASINO DE MONTE-CARLO trade mark, based on its Monaco trade mark registrations.
The Disputed Domain Name is confusingly similar to the Complainant’s CASINO DE MONACO trade mark. The main elements of the Disputed Domain Name are the words “casino” and “monaco”. Having inverted the order in which the words appear in the Disputed Domain Name, does not detract from their confusing similarity to the Complainant’s CASINO DE MONACO trade mark. Further, the addition of the generic words “hotel” and “and” in the Disputed Domain Name does nothing to distinguish it from the Complainant’s trade mark. It is well established that where the distinctive and prominent element of a disputed domain name is the complainant’s mark, and the only difference is a generic term that adds no distinctive element, then such a generic term 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).
It is also well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the top-level domain extensions, in this case “.com”, may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
The Panel accordingly finds that paragraph 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 establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that 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 Panel accepts that the Complainant has not authorised the Respondent to use the CASINO DE MONACO trade mark and CASINO DE MONTE-CARLO trade mark, and there is no relationship between the Complainant and the Respondent which would otherwise entitle the Respondent to use such marks. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(1) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or
(2) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trade mark or service mark rights; or
(3) 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 trade mark or service mark at issue.
The Disputed Domain Name currently resolves to a parking page which contains sponsored links. While parking pages may be permissible in some circumstances, under paragraph 2.6 of WIPO Overview 2.0, a parking page would not by itself confer rights or legitimate interests in a domain name. This is especially the case where a domain name was registered with a trade mark owner’s mark in mind in the hope and expectation that confused Internet users searching for the trade mark owner will be directed to the respondent’s parking page for commercial gain. Such activity does not provide a legitimate interest in that domain name under the Policy (Owens Corning v. NA, WIPO Case No. D2007-1143).
The Complainant has been using the CASINO DE MONACO trade mark and CASINO DE MONTE-CARLO trade mark for over 150 years. Further, as stated in Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Domain Active Pty. Ltd., WIPO Case No. D2005-0527, the “Complainant has documented that it is granted a monopoly for casino and gambling industries for the territory of Monaco, and that it therefore is the sole company that can organize games and gambling in Monaco.” In the absence of any explanation by the Respondent to the contrary, the Panel finds that the Respondent must have been aware of the Complainant at the time it registered the Disputed Domain Name, and did so with the intent of confusing and misdirecting Internet users to the Disputed Domain Name (for commercial gain). For the foregoing reasons, the Panel finds that the Respondent has failed to establish any rights or legitimate interests in the Disputed Domain Name.
Accordingly, paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
As stated above, the Complainant has been using the CASINO DE MONACO trade mark and CASINO DE MONTE-CARLO trade mark for over 150 years, prior to the registration of the Disputed Domain Name, and is well known worldwide. It is a well-established principle that registration of a domain name that is confusingly similar to a well-known trade mark by any entity that does not have a relationship to that mark can amount to sufficient evidence of bad faith registration and use (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).
The Complainant is also the only authorized entity that can operate casinos and organize gambling activities in Monaco. Therefore, the Panel finds that in the absence of any evidence to the contrary, the Respondent must have registered the Disputed Domain Name with the Complainant’s trade marks in mind, in order to misdirect Internet users who are searching for the Complainant to the Respondent’s parking page. Any other future use of the Disputed Domain Name by the Respondent would not be able to amount to good faith, as it will inevitably mislead users into believing that it is connected with the Complainant.
The Panel finds paragraph 4(a)(iii) of the Policy is satisfied.
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, <monacohotelandcasino.com>, be transferred to the Complainant.
Date: January 19, 2017