WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v. Sasa Cvetanovic, Privacy Protect, LLC (PrivacyProtect.org) / Mirza Tafilovic
Case No. D2021-2181
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 Respondents are Sasa Cvetanovic, Russian Federation, and Privacy Protect, LLC (PrivacyProtect.org), United States of America / Mirza Tafilovic, Serbia.
2. The Domain Names and Registrars
The Domain Name <monacobet.online> is registered with Ascio Technologies Inc. The Domain Name <monacobet.top> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (collectively with Ascio Technologies Inc., hereinafter referred to as the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2021. On July 7, 2021, the Center transmitted by emails to the Registrars requests for registrar verification in connection with the Domain Names. On July 7 and 8, 2021, the Registrars transmitted by emails to the Center their verification responses 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 July 26, 2021, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 30, 2021.
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 Respondents of the Complaint, and the proceedings commenced on August 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on September 16, 2021.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on September 21, 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
The Complainant was founded on April 6, 1863. It employs today almost 3,500 people and is the largest employer in Monaco. The Complainant is the sole corporation with state permission for casino and gambling activities in Monaco. 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 Monaco trademark number 09.27373 MONACOBET and Monaco trademark number 09.27370 MONACOSPORTBET, both registered on July 15, 2009.
The Domain Name <monacobet.top> was registered on January 21, 2021, and the Domain Name <monacobet.online> was registered on January 22, 2021. At the time of the Complaint, and the time of drafting the Decision, the Domain Names resolve to websites with the content of betting and casino games.
5. Parties’ Contentions
The Complainant argues that even if the Domain Names were reserved by two separate individuals, the complaint should be handled jointly, as both Domain Names resolve to exactly the same content in the field of betting and casino games.
The Complainant provides evidence of trademark registrations. The Complainant argues that the Domain Name is identical to the Complainant’s trademark MONACOBET, and confusingly similar to other of the Complainant’s trademarks.
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 rights in MONACOBET or similar. 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 argues that the Respondent was aware of the Complainant’s activity and trademark, due to the reputation of the Complainant’s trademark, and the Respondent’s use of the Domain Names. By registering the Domain Names, the Respondent was seeking to create a likelihood of confusion with the Complainant’s trademark to attract Internet users to believe that there is an affiliation between the Complainant and the Respondent’s website operated under the Domain Names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Procedural matters
The Complainant argues that the Domain Names are under common control. The Panel has examined the evidence in the case file and notes that the Respondents have not – despite given the opportunity – argued to rebut the Complainant’s case for consolidation. The Panel notes the nature of the trademark and the Domain Names, and the fact that the Domain Names resolve to the identical content. Further, the Panel notes that the Domain Names were registered on the same day and the WhoIs information disclosed by the Registrars is apparently false, considering the non-deliverable nature of the Center’s communications sent to the physical addresses. The Panel concludes that the Domain Names are likely subject to common control. Consolidation is fair and equitable to the Parties. Based on the evidence, and consideration of procedural efficiency, the Panel will allow the consolidation as requested by the Complainant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2.
In light of the above, the Respondents may be referred to collectively as the Respondent hereafter.
B. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark MONACOBET.
The test for confusing similarity involves the comparison between the trademark and the Domain Names. In this case, the Domain Names are identical to 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 Domains (“gTLD”) “.top” and “.online”; see WIPO Overview 3.0, section 1.11.
The Panel finds that the Domain Names are identical to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register the Domain Names containing the Complainant’s trademark or otherwise make use of its mark. There is no evidence that the Respondent has registered the Domain Names as a trademark or acquired unregistered trademark rights. The Respondent cannot establish rights in the Domain Names, as it has not made use of, or demonstrable preparations to use, the Domain Names in connection with a bona fide offering. The Respondent’s use of the Domain Names are not bona fide. On the contrary, the Respondent has created a high risk of implied affiliation through the construction and use of the Domain Names that are identical to the Complainant’s trademark. See WIPO Overview 3.0, section 2.5.1.
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 Names in accordance with paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Respondent must have been aware of the Complainant when the Respondent registered the Domain Names, as the Domain Names have resolved to a webpage offering similar services as the Complainant and entirely consist of the Complainant’s trademark without modification or addition. The Panel agrees with the Complainant that the Respondent by registering the Complainant’s trademark in the Domain Names 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 websites operated under the Domain Names. Moreover, the Respondent has not provided any evidence of actual or contemplated good faith use.
For the reasons set out above, the Panel concludes that the Domain Names were registered and are 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 Names <monacobet.online> and <monacobet.top> be transferred to the Complainant.
Date: September 29, 2021