WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v. WhoisGuard Protected, WhoisGuard, Inc. / allin City
Case No. D2020-3482
1. The Parties
Complainant is Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco, Monaco, represented by De Gaulle Fleurance & Associés, France.
Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama, / allin City, Bosnia and Herzegovina.
2. The Domain Name and Registrar
The disputed domain name <montecarlo365.net> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2020. On December 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 22, 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 Complainant on December 23, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 23, 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 Respondent of the Complaint, and the proceedings commenced on January 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 25, 2021. Respondent did not submit any response. Accordingly, the Center notified the Parties of Respondent’s default on January 26, 2021.
The Center appointed Ingrida Kariņa-Bērziņa as the sole panelist in this matter on February 8, 2021. 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
Complainant is the state-owned company operating the Casino de Monte-Carlo and other casinos and a resort in Monaco. It is the proprietor of Monaco trademark registrations No. 96,17407 for CASINO DE MONTE-CARLO (word mark), registered on October 30, 1996, for goods eservices in classes 3, 7, 9, 12, 14, 16, 18, 28, 34, 35, 38, 39, 41, 42, 43 and 45; and No. 14.30170 for MONTE-CARLO (word mark), registered on February 12, 2014, for services in class 41.
The disputed domain name was registered by Respondent on September 24, 2020. It resolves to a website offering online gambling services.
5. Parties’ Contentions
Complainant’s contentions may be summarized as follows:
Under the first element, Complainant states that it is a company founded in 1863 under the laws of Monaco owned by the Principality of Monaco and the House of Grimaldi. Complainant has been granted a monopoly for the provision of casino gaming services in Monaco and operates the Casino de Monte-Carlo, which is the most famous casino in the world as demonstrated by the frequent references to it in popular culture. Complainant also operates three other casinos and a resort in Monaco, all of which have become famous worldwide. Complainant’s MONTE-CARLO and CASINO DE MONTE-CARLO marks have a strong reputation. The disputed domain name is identical or highly similar to Complainant’s trademarks. The addition of the number “365” does not avoid confusing similarity as this number indicates that Internet users can play on the gambling platform 365 days a year. The content of Respondent’s website also demonstrates an intention to target Complainant’s marks, as the website offers a gambling service.
Under the second element, Complainant states that to the best of its knowledge, Respondent holds no intellectual property rights over any mark that contains “montecarlo365.” Complainant has never authorized Respondent to register and use the disputed domain name.
Under the third element, Complainant states that the strong reputation and world renown of Complainant’s trademarks render it impossible for Respondent to have been unaware that registration and use of the disputed domain name would violate Complainant’s rights. The MONTE-CARLO and CASINO DE MONTE-CARLO marks are well-known, especially in the field of gambling. Respondent’s website contains content and images related to gambling, therefore, it should reasonably have been aware of the notoriety and world renown of Complainant’s marks. Respondent is using the disputed domain name in bad faith as it is used to access a gambling platform, which is Complainant’s core business. Respondent’s games may be paid for in euros, which is Complainant’s location currency. Such actions lead Internet users to believe there is an affiliation between Respondent and the website operated under the disputed domain name. Respondent is trying to unfairly benefit from Complainant’s prestige and reputation.
Complainant requests transfer of the disputed domain name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Given the facts in the case file and Respondent’s failure to file a Response, the Panel accepts as true the contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) Respondent has registered and is using the disputed domain name in bad faith.
A. Identical or Confusingly Similar
Complainant has provided evidence establishing that it has trademark rights in the MONTE-CARLO mark through registration in Monaco. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.
In comparing Complainant’s MONTE-CARLO mark with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar with Complainant’s mark. The disputed domain name contains Complainant’s MONTE-CARLO mark in its entirety. Complainant’s trademark is recognizable within the disputed domain name. The addition of the numeral “365” does not prevent a finding of confusing similarity, since the mark “MONTE-CARLO” is clearly visible within the disputed domain name, and the number “365” is descriptive reference to the number of days in a year. See, for example, F. Hoffmann-La Roche AG v. Domain Admin, Privacy Protection Service INC d/b/a/ PrivacyProtect.org / Conan Corrigan, WIPO Case No. D2015-2316.
Section 1.7 of WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.”
It is the well-established view of UDRP panels that the generic Top-Level Domain (“gTLD”) “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, Respondent’s use 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) Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The circumstances stated in the Complaint, the Amended Complaint and evidence in support set forth in the annexes thereto indicate that, at the time that Respondent registered the disputed domain name, Respondent had no rights or legitimate interests in the disputed domain name. The nature of the disputed domain name, which comprises Complainant’s well-established MONTE-CARLO mark with a non-distinctive element, cannot constitute fair use because Respondent thereby effectively impersonates or suggests sponsorship or endorsement by Complainant, the trademark owner. See WIPO Overview 3.0, section 2.5.2.
The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain name or is using the MONTE-CARLO mark with the permission of Complainant.
The Panel therefore finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
Pursuant to WIPO Overview 3.0., section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Respondent has not filed any Response.
Respondent’s use of the disputed domain name for a commercial enterprise together with Respondent’s failure to rebut Complainant’s contentions or to provide evidence that it is commonly known by the disputed domain name demonstrate a lack of rights or legitimate interests. Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of a disputed domain name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel finds bad faith registration and use under the Policy. The Panel agrees with previous UDRP Panels that the MONTE-CARLO mark may be considered a famous mark. See, for example, Societe des Bains de Mer et du Cercles des Etrangers a Monaco v. Laurance Michaels, WIPO Case No. D2007-1807. It is not credible that Respondent, operator of an online gambling site, was unaware of Complainant’s mark when it registered the disputed domain name.
Considering these circumstances, the Panel finds that such a registration creates a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4, describing the types of evidence that may support a finding of bad faith.
The Panel finds that Respondent has demonstrated bad faith by using the disputed domain name for an online gambling platform, thereby deliberately relying upon a perceived association with Complainant’s MONTE-CARLO marks to attract Internet users for pecuniary gain. Respondent has concealed its true identity by using a privacy service, and there is no plausible actual or contemplated use of the disputed domain name that would not be illegitimate. Respondent is using Complainant’s mark to attract Internet users to a gambling website, actions that clearly demonstrate bad faith registration and use of the disputed domain name. Such a finding is consistent with previous UDRP decisions, such as Societe des Bains de Mer and du Cercle des Etrangers a Monaco v. Lucan Toh and Max Wright, WIPO Case No. D2007-0249.
The Panel finds therefore that Complainant has established the third element under paragraph 4(a) 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 disputed domain name <montecarlo365.net> be transferred to Complainant.
Date: February 22, 2021