WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
La Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v. Registration Private, Domains By Proxy, LLC / James Robinson, Registration Private, Domains By Proxy, LLC / Wilson Tee
Case No. D2019-0939
1. The Parties
The Complainant is La Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco, Monaco, represented by De Gaulle Fleurance & Associés, France.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / James Robinson, Japan, Registration Private, Domains By Proxy, LLC, United States / Wilson Tee, Malaysia.
2. The Domain Names and Registrar
The disputed domain names <montecarlo-asia.com> and <montecarloasia.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2019. On April 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On May 1, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 2, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 7, 2019.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 30, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 31, 2019.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on June 25, 2019. 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. Request for Consolidation
The Complainant contends that the while the names of the registrants of the Domain Names are different, the following facts have become clear, which would make it proper to consolidate the ownership of the Domain Names to a single entity:
a. The Domain Names have a “quasi identical structure”.
b. Both registrants email addresses include the term “gamester” before the “@” symbol.
c. One of the email addresses used in relation to one of the Domain Names corresponds with the name of the company that is linked to the other Domain Name.
d. Both websites are quasi-identical with their identical visual conception, identical logos, direct access to the registration form and the possibility to read it in English or in Chinese.
e. Both websites show exactly the same copyright notice.
f. Both Domain Names share the same registrar, GoDaddy.com, and were registered within a month after each other.
5. Factual Background
The following facts are undisputed.
The Complainant exploits hotels, casinos, nightclubs, restaurants and bars in Monte Carlo, Monaco. The Complainant was founded on April 6, 1863 and employs almost 3,000 people.
The Complainant owns various trademark registrations, including the Monaco Trademark CASINO DE MONTE-CARLO with registration number 96.17407, filed on August 13, 1996, registered on October 30, 1996, and the Monaco Trademark MONTE CARLO with registration number 14.30170 filed on December 31, 2013. As brought forward by the Complainant, under Monegasque law, trademark rights are acquired by use and the filing of these marks by the Complainant was merely a confirmative act. The marks are used for entertainment services, in particular for gambling and casino services. These trademark registrations will be referred to as the “Trademark”.
The Domain Name <montecarloasia.com> was registered on December 19, 2018. The Domain Name <montecarlo-asia.com> was registered on January 28, 2019.
The Domain Name <montecarlo-asia.com> referred to a website on which Internet users can fill out a form and shows a picture of playing cards and nightlights. The Domain Name <montecarloasia.com> shows the exact same website, excluding the background picture of the playing cards and nightlights. These websites will hereinafter referred be to together as the “Website”.
6. Parties’ Contentions
Insofar as relevant, the Complainant contends the following.
The Domain Names are identical or at least highly similar to the Trademark, since they consist of the Trademark, the term “asia” and, in the Domain Name <montecarlo-asia.com>, a hyphen.
To the best of the Complainant’s knowledge, the Respondent holds no rights over any mark consisting “MONTE”, “CARLO” and “ASIA”. In addition, the Complainant has never authorized any third party to register and use the Domain Names. The Respondent cannot claim any legitimate interests or bona fide use of the Domain Names.
The Respondent registered and used the Domain Names in bad faith. The Trademark is well known, especially in the field of gambling. The Website shows elements that refer to gambling. Therefore, the Respondent must have been aware of the Complainant and registered the Domain Names in bad faith. In addition, the Website includes a logo that makes a clear reference to the principality of Monaco, where the head office of the Complainant is situated. The use of these logos are clearly intended to confuse Internet users by creating a connection with the Trademark.
The Respondent did not reply to the Complainant’s contentions.
7. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the Domain Names are 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 Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
A. Preliminary Issue: Consolidation of Multiple Domain Names and Respondents
In the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2, it sets out the situation where a complaint filed against multiple respondents is sought to be consolidated, “panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties”.
As to the second of the two considerations, in the present case the Complainant made a clear request in the amended Complaint that the Domain Names and registrants be consolidated and treated as one, and the Complainant set out in detail the factors which the Complainant believed showed a common control and why it would be fair and equitable to consolidate the Domain Names and registrants.
The Respondent failed to respond to the facts and allegations made by the Complainant. Accordingly, the Panel finds that, should the facts as alleged by the Complainant support the conclusion that “the domain names or corresponding websites are subject to common control”, the Panel finds that consolidation would be fair and equitable to all Parties.
As to the first prong, the Complainant has alleged and provided sufficient supporting facts that the Domain Names are under common control.
The Panel, therefore, having regard to all relevant circumstances, concludes that the consolidation of the two Domain Names asserted by the Complainant and the consolidation of the two registrants is consistent with the Policy and Rules and is fair and equitable to all Parties.
B. Identical or Confusingly Similar
The Complainant must demonstrate that it has rights in a trademark or service mark and, if so, the Domain Names must be shown to be identical or confusingly similar to that mark.
With regard to the term “monte carlo”, the Complainant has sufficiently shown that it has rights in the Trademark. The Panel finds that the Domain Names are confusingly similar to the Trademark. The Domain Names reproduces the Trademark in its entirety, only adding the geographic term “asia” and, in one of the Domain Names, a hyphen.
That addition of the geographic term “asia” and a hyphen are insufficient to avoid any confusing similarity.
In addition, with regard to the generic Top-Level Domain (“gTLD”) “.com”, as it was established in many previous UDRP decisions (see A.P. Møller v. Web Society, WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / email@example.com, WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; and, Crédit Industriel et Commercial SA v. Name Privacy, WIPO Case No. D2005-0457), it does not generally affect the analysis under the first element of the Policy for the purpose of determining whether a domain name is identical or confusingly similar; indeed, the gTLD is a necessary component of the Domain Names.
For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met.
C. Rights or Legitimate Interests
The Respondent did not reply to the Complainant’s contentions.
The Panel has carefully considered the factual allegations that have been made by the Complainant and are supported by the submitted evidence.
Based on the record, there is no evidence of any of the circumstances set forth in paragraph 4(c) of the Policy, such as:
(i) use or preparation to use the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Names (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence in the case file of any other rights or legitimate interests in the Domain Names. There is also no evidence that the Complainant ever permitted in any way the registration or use the Complainant’s Trademark, or to apply for or use any domain name incorporating the Trademark. Moreover, the Website, to which the Domain Names resolve includes a logo of the principality of Monaco, which could give the Internet public the impression that the Domain Names are somehow connected to the Complainant. Hence, the Panel finds that the Website is misleading, which contributes to the lack of rights or legitimate interests.
Furthermore, the use of the Domain Names cannot be considered a bona fide offering of goods or services. In particular, there is no evidence of any use or demonstrable preparation to use the Domain Names in connection with a bona fide offering of goods or services. There is also no evidence of any legitimate noncommercial or fair use of the Domain Names.
Therefore, based on the evidence, the Panel is satisfied that the second element of the Policy is met.
D. Registered and Used in Bad Faith
In light of the evidence filed by the Complainant, the Panel finds that the Trademark is famous for casino services.
Based on the facts of the matter, several unrebutted circumstances indicate that the intention behind the registration and use (e.g., with a login page – as may be used for online casino services) of the Domain Names seems to be to create the false impression that the Domain Names are affiliated with the Complainant (paragraph 4(b)(iv) of the Policy).
Finally, although the lack of a reply by the Respondent as such cannot by itself lead to the conclusion that there is use in bad faith, the cumulative circumstances as outlined in the decision are sufficient for the Panel to find that the use of the Domain Names by the Respondent is in bad faith.
In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Names was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <montecarlo-asia.com> and <montecarloasia.com> be transferred to the Complainant.
Willem J. H. Leppink
Date: July 10, 2019