WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
La Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v. Joseph, Joseph Thompson
Case No. D2020-2041
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 Joseph, Joseph Thompson, Sweden.
2. The Domain Name and Registrar
The disputed domain name <grandcasino-montecarlo.com> (the “Domain Name”) is registered with Hostinger, UAB (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2020. On August 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 5, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named the Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 5, 2020, 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 August 10, 2020.
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 August 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 3, 2020.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on September 10, 2020. 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 founded on April 6, 1863, and employs today almost 3,000 people and is the largest employer in Monaco. The Complainant is the sole corporation with the state permission to operate casinos in Monaco. The Casino de Monte-Carlo is the most famous of the Complainant’s venues. The Complainant also runs a number of hotels, spas and entertainment venues such as nightclubs, restaurants and bars, as well as other products and services including casino and gaming, nightclub services, sports activities and cultural activities.
The Complainant owns trademark registrations, such as the word trademark CASINO DE MONTE-CARLO filed with the Monaco Trademark Office, on August 13, 1996, with the trademark number 96.17407 and renewed on October 10, 2006, and the word trademark MONTE CARLO filed with the Monaco Trademark
Office on December 31, 2013, and registered under trademark number 14.30170.
The Domain Name was registered on February 9, 2020. The Domain Name has resolved to a website offering gambling services. At the time of the Complaint, and the time of drafting the Decision, the Domain Name resolved to an error page.
5. Parties’ Contentions
The Complainant provides evidence of trademark registrations. The Complainant argues that the Domain Name is identical or at least highly similar to the Complainant’s CASINO DE MONTE-CARLO. This strong similarity is not erased by the minor differences existing between the Domain Name and the Complainant’s trademark as the difference is restricted to the addition of the common adjective “grand”, and the omission of the preposition “de”.
The Complainant asserts that the Respondent is not authorized to use the Complainant’s trademark. The Respondent is not commonly known by the Domain Name. To the Complainant’s knowledge, the Respondent holds no intellectual property right including over any mark consisting of MONTE, CARLO, GRAND, CASINO alone or together. In addition, the Respondent cannot claim any use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. On the contrary, the Respondent has created a likelihood of confusion with the Complainant’s well-known trademark to attract Internet users to the Respondent’s gambling website.
The Complainant believes the Respondent was aware of the Complainant’s activity and trademark, due to the well-known character and reputation of the Complainant’s trademark, and the Respondent’s use of the Domain Name. By registering the Domain Name, the Respondent was seeking to create a likelihood of confusion with the Complainant’s well-known trademark to attract Internet users to believe that there is an affiliation between the Complainant and the Respondent’s website operated under the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark CASINO DE MONTE-CARLO.
The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name incorporates the Complainant’s trademark, with the addition of “grand”, and the omission of the preposition “de”. The placement of the hyphen is different in the Domain Name from the Complainant’s trademark. These minor differences do not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. For the purpose of assessing under paragraph 4(a)(i) of the Policy, the Panel may ignore the generic Top-Level Domain (“gTLD”) “.com”; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register the Domain Name containing the Complainant’s trademark or otherwise make use of its mark. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired unregistered trademark rights. The Respondent cannot establish rights in the Domain Name as it has not made use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering. The Respondent’s use of the Domain Name is not bona fide. It created a likelihood of confusion with the Complainant’s well-known trademark.
The Panel finds that the Complainant has made out an unrebutted case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Respondent must have been aware of the Complainant when the Respondent registered the Domain Name. The Panel agrees with the Complainant that the Respondent by registering the Complainant’s trademark in the Domain Name was seeking to create a likelihood of confusion with the trademark to mislead Internet users to believe that there is an affiliation between the Complainant and the Respondent’s website operated under the Domain Name.
For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of paragraph 4(a)(iii) 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 Domain Name <grandcasino-montecarlo.com> be transferred to the Complainant.
Date: September 12, 2020