WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v. Domain Privacy Service FBO Registrant, The Endurance International Group, Inc. / David Anderson
Case No. D2020-2541
1. The Parties
The Complainant is Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco, Monaco, represented by De Gaulle Fleurance & Associés, France.
The Respondent is Domain Privacy Service FBO Registrant, The Endurance International Group, Inc., United States of America (“United States”) / David Anderson, Malta.
2. The Domain Name and Registrar
The disputed domain name <24monaco.com> is registered with FastDomain, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2020. On October 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 1, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 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 October 6, 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 October 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 9, 2020.
The Center appointed Antony Gold as the sole panelist in this matter on November 17, 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 is a company incorporated in the Principality of Monaco which was founded in 1863. Since that date, the Complainant has been the sole corporation with state permission to operate casinos in the principality, where it is the largest employer. Its main shareholders are the Principality of Monaco and its ruling family, the House of Grimaldi. The Complainant operates the well-known Casino de Monte-Carlo as well as a number of other casinos and gaming rooms and additional enterprises such as hotels, restaurants and bars.
The Complainant is the owner of a number of trade marks for both CASINO DE MONACO and CASINO DE MONTE-CARLO in addition to trade marks which combine the word “monaco” with terms associated with betting and gambling. The Complainant’s marks include, by way of example, Principality of Monaco trade mark, registration number R02.23234, for CASINO DE MONACO, filed on July 1, 2002 and registered on September 30, 2002 in classes 3, 9, 12, 14, 16, 18, 28, 34, 35, 38, 39 and 41.
The disputed domain name was registered on June 16, 2020. It resolves to a website which comprises an online platform for a variety gaming products, including slot, “live casino” and sports games. The home page is branded “24Monaco” in a stylized format in which the number “24” is positioned within a crown. The opening section of the “About us” section of the Respondent’s website states that: “24Monaco.com is the Casino Operator you were looking for. We gathered almost all iGaming products out there and we offer them via a second to none platform […]”.
5. Parties’ Contentions
The Complainant says that the disputed domain name is confusingly similar to its CASINO DE MONACO trade mark. The mere addition of the number “24” to the word “monaco” does not prevent it from being confusingly similar to the Complainant’s trade mark as this number simply indicates that Internet users can play on the Respondent’s gambling platform 24 hours a day. Moreover, the content of the Respondent’s website affirms an intention on its part to target the Complainant’s business in the Principality of Monaco in that its website uses a crown logo in conjunction with the words “24 monaco”, which is clearly an allusion to the Complainant.
The Complainant says also that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Complainant has not found any trade mark registration or application owned by the Respondent for a trade mark, comprising or consisting of “24monaco” or “monaco”, in any searchable jurisdiction. Accordingly, the Respondent holds no intellectual property rights over any trade mark that contains “24monaco”. The Complainant has never authorized the Respondent to register and use the disputed domain name. Furthermore, the Respondent cannot claim a legitimate interest or bona fide use of the disputed domain name. This is not only due to the likelihood of confusion but because no actual or contemplated bona fide or legitimate use of the disputed domain name can be claimed by the Respondent.
Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. The strong reputation and world renown of the Complainant’s trade marks renders 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 has been a major figure in the gambling business for over 150 years and its Casino de Monte-Carlo in Monaco, and therefore its trade marks for CASINO DE MONACO and CASINO DE MONTE-CARLO, are well known, especially in the field of casinos and gambling. The Respondent should reasonably have been aware that the Complainant has a strong policy of protecting its intellectual property rights and reputation, not least when the Respondent has claimed on its website to be a “casino operator” that “gathered almost all iGaming products”. It is impossible for the Respondent’s decision to register a domain name confusingly similar to the Complainant’s trade mark to be fortuitous or coincidental.
The disputed domain name is also being used in bad faith, for the reasons set out at paragraph 4(b)(iv) of the Policy, in that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location by offering an online gambling website, the name of which unduly benefits from the Complainant’s notoriety. Not only is the Respondent using the disputed domain name for a platform offering online slot and live casino games, but it is using its trading style in conjunction with a logo comprising a crown, which is a symbol associated with principalities such as the Principality of Monaco. The crown device is clearly aimed at leading Internet users to believe that there is an affiliation between the Complainant and the website operated under the disputed domain name. The Respondent has therefore tried to create an association with the Complainant and to benefit unfairly from the Complainant’s prestige and reputation.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided details of its CASINO DE MONACO trade mark registration, which establish its rights in this mark.
As a technical requirement of registration, the generic Top-Level Domain (“gTLD”), that is “.com” in the case of the disputed domain name, is typically disregarded when assessing confusing similarity. The comparison under the first element of the Policy is therefore between the Complainant’s CASINO DE MONACO trade mark and the “monaco24” component of the disputed domain name. The common element is “monaco”, which is, of course, a place name as well as being part of the Complainant’s mark.
It is appropriate to consider whether the disputed domain name is confusingly similar to the Complainant’s mark in the context of section 1.15 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) which explains that, whilst website content associated with a domain name is normally disregarded for the purpose of a comparison; “[i]n some instances, panels have however taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name”. See also Supercell Oy v. Lombardo Fausto, WIPO Case No. D2017-0701.
The Respondent’s website uses “24 MONACO” as its brand, in circumstances where the Complainant has had a monopoly over the provision of gambling services in the Principality of Monaco for over 150 years and so is intimately and exclusively associated with gambling services in that location. The use by the Respondent on its website of a coronet motif in conjunction with the words “24 MONACO” is evidently intended to suggest that the Respondent’s website, together with the gambling products it offers, have some form of association with the Complainant. This is exacerbated because there is nothing in the Respondent’s website content that might disclaim such a connection. Accordingly, to the extent that there is any doubt as to whether the disputed domain name is confusingly similar to the Complainant’s trade mark, the content of the Respondent’s website establishes that it is clearly being used by the Respondent in order to target the Complainant.
The Panel therefore finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides, without limitation examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue.
So far as paragraph 4(c)(i) of the Policy is concerned, section 2.2 of the WIPO Overview 3.0 provides examples of factors which might point to a bona fide offering of goods and services by a respondent. These include “other evidence generally pointing to a lack of indicia of cybersquatting intent”. The Respondent’s use of the disputed domain name to resolve to a website, branded as “24 MONACO” in conjunction with a crown motif, is clearly intended to mislead Internet users that it is the Complainant’s website, or is operated with its authorization or, at least, to create a resonance between its services and those of the Complainant. This does not constitute use in connection with a bona fide offering of goods and services. As the panel found in Option One Mortgage Corporation v. Option One Lending, WIPO Case No. D2004-1052: “It is undisputed that Complainant and Respondent operate in the same field. Respondent’s use of a confusingly similar Domain Name on a website offering for sale overlapping products and services is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use pursuant to Policy”. Essentially the same considerations apply in these proceedings.
The second and third circumstances outlined above can be dealt with briefly; there is no evidence that the Respondent has been commonly known by the disputed domain name and the use which has been made of it is clearly commercial in character.
As explained at section 2.1 of the WIPO Overview 3.0, once a Complainant has made out a prima facie case that a respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it does have such rights or legitimate interests. In the absence of any response from the Respondent to the Complaint, it has failed to satisfy that burden.
The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance set out in paragraph 4(b)(iv) of the Policy is if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
The use to which the disputed domain name falls has been put within these circumstances in that it resolves to a website which suggests a connection between it and the Complainant. The belief of Internet users that this is the case will be reinforced because of the confusing similarity between the disputed domain name and the Complainant’s CASINO DE MONACO trade mark. The Respondent’s underlying motivation has evidently been to derive commercial advantage from its claimed association with the Complainant and this points clearly to bad faith registration and use. Moreover, having regard to the extent and duration of the Complainant’s commercial activities in the Principality of Monaco, there is no conceivable good faith use which could have been made by the Respondent of the disputed domain name. Finally, section 3.6 of the WIPO Overview 3.0 explains that; “Panels have also viewed a respondent’s use of a privacy or proxy service which is known to block or intentionally delay disclosure of the identity of the actual underlying registrant as an indication of bad faith”. In the light of the other circumstances discussed above, the Panel considers the Respondent’s use of a privacy service as a further indication of bad faith.
The Panel therefore finds that the disputed domain name has been 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 disputed domain name <24monaco.com> be transferred to the Complainant.
Date: December 1, 2020