WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

La Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v. Luis Monteiro, Ibermusics

Case No. D2021-2817

1. The Parties

Complainant is La Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco, Monaco, represented by De Gaulle Fleurance & Associés, France.

Respondent is Luis Monteiro, Ibermusics, Portugal.

2. The Domain Name and Registrar

The disputed domain name <monacoonlinecasinos.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2021. On August 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 30, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 September 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 21, 2021. On September 1 and 2, 2021, Respondent sent emails indicating preliminary views and suggesting he would be willing to resolve the dispute. On September 8, 2021, Complainant indicated that it was unwilling to settle the matter, particularly because Respondent, being a professional in the field of gambling and having visited Monaco, was, or at least should be, aware of Complainant’s prior rights. The Response was filed with the Center on September 20, 2021.

The Center appointed Christopher S. Gibson as the sole panelist in this matter on September 27, 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.

On October 22, 2021, the Panel extended the Decision due date because of exceptional circumstances.

4. Factual Background

Complainant is a Monegasque company founded on April 6, 1863 by a Sovereign Decree passed by Prince Charles III. Approximately 70 percent of its share capital is owned by the Government of the Principauté de Monaco and its ruling family, namely, the House of Grimaldi. Complainant employs almost 3,500 people and is the largest employer in the Principality of Monaco. Since April 1863, Complainant has been granted by the Prince of Monaco a monopoly for casino and gambling activities (“Privilège des Jeux”) for the territory of the Principality of Monaco and is therefore the sole company entitled to organize games and gambling in Monaco. The most recent renewal of this Privilège des Jeux was granted to Complainant by the Ordonnance Souveraine No. 15.732 of March 13, 2003.

Complainant has been operating the Casino de Monte-Carlo, known interchangeably as the Casino de Monaco, in Monaco for more than 150 years. The casino is known as one of the most luxurious gambling facilities in the world. It has been featured in numerous motion pictures, magazines, and TV shows, and attracts a clientele that comes from European and non-European countries. Complainant also owns and operates three other casinos and gaming rooms in Monaco (the Monte-Carlo Bay Casino, the Casino Café de Paris, and the Sun Casino), a resort including two palaces and two deluxe hotels, 40 conference and banquet rooms, 34 restaurants and bars, three spas, as well as cultural and leisure venues, including the Jimmy’z Monte-Carlo night club, the Salle des Etoiles, the Monte-Carlo Golf Club, and the Monte-Carlo Country Club.

Complainant has registered numerous trademarks including the following trademarks in Monaco:

- word mark CASINO DE MONACO, registered on September 30, 2002, registration no. 02.23234;

- word mark CASINO DE MONTE-CARLO, registered on October 30, 1996, registration no. 96.17407.

The Domain Name was registered on June 24, 2019. At the time of the Complaint, the Domain Name resolved to a website that appeared to be offering an online platform directing users to gambling games including roulette, poker, and bingo.

5. Parties’ Contentions

A. Complainant

(i) Identical or confusingly similar

Complainant contends the Domain Name is confusingly similar to its trademarks, CASINO DE MONTE-CARLO and CASINO DE MONACO, as it contains the terms “monaco” and “casino”, or the synonymous noun for “Monaco”: “Monte-Carlo”. As regards the similarity between the Domain Name and Complainant’s CASINO DE MONTE-CARLO mark, it should be noted that, in the public mind, Monaco is regularly associated and confused with Monte-Carlo, and vice versa. Indeed, in a number of prior UDRP cases, panels have reached this conclusion and held that the replacement of the name “Monte-Carlo” by the name “Monaco” does not sufficiently differentiate a domain name from Complainant’s trademarks.

Complainant submits that it makes no difference that the order of the words is reversed in the Domain Name. Nor does it matter that the Domain Name includes the additional descriptive word “online”, interposed between the words “monaco” and “casino”. Complainant claims the addition of this descriptive term does not erase the confusing similarity that exists with Complainant’s trademarks, since the Domain Name remains dominated by the words “monaco” and “casino”. See Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v. Netsymmetrics, WIPO Case No. D2005-0339 (regarding the domain names <online-casinomontecarlo.com> and <online-casinos-montecarlo.com>, the panel found the term “online” merely “is a natural indication of the internet presence of an entity”); see also Hoffmann-La Roche Inc. v. Onlinetamiflu.com, WIPO Case No. D2007-1806. Complainant asserts that the term “online” actually strengthens the likelihood of confusion, as it suggests to the Internet user that Complainant’s casino is available online under the Domain Name. This likelihood of confusion is increased by Respondent’s use of the Domain Name in the field of gambling, where Complainant’s CASINO DE MONTE-CARLO and CASINO DE MONACO trademarks are well-known. Internet users may be enticed to believe that there is a connection between Complainant’s trademark and the Domain Name.

Complainant concludes that these circumstances show the Domain Name is confusingly similar to the prior trademarks in which Complainant has rights.

(ii) Rights or legitimate interests

Complainant contends that Respondent has no rights or legitimate interests in respect of the Domain Name. Complainant has searched in trademark databases for possible registrations or applications including the terms “monaco”, “online” and “casinos”, or any trademark whatsoever registered by Respondent. To the best of Complainant’s knowledge, Respondent holds no intellectual property rights for any mark or for the sign “monacoonlinecasinos”. Complainant has never authorized Respondent to use Complainant’s trademark, nor given consent to register and use the Domain Name containing the mark or any part of it. Thus, Complainant contends Respondent cannot claim a legitimate interest, nor make a bona fide use of the Domain Name. This is not only due to the likelihood of confusion, but also because Respondent has registered and is using the Domain Name in bad faith, as discussed below.

(iii) Registered and used in bad faith

Complainant contends the Domain Name was registered and is being used in bad faith. The strong notoriety and world renown of Complainant’s trademarks render it impossible for Respondent to have been unaware that the registration and use of the Domain Name would violate Complainant’s rights. Complainant has been a major actor in the gambling business for over 150 years with its Casino de Monte-Carlo in Monaco, and therefore the trademarks, CASINO DE MONACO and CASINO DE MONTE-CARLO, are well-known especially in the field of casinos and gambling.

Complainant submits that Respondent clearly knew about Complainant’s existence and reputation prior to registering the Domain Name, given Respondent’s use of the Domain Name in the field of business that is identical to Complainant’s business. Respondent confirms on its home page that its website “is an online casino specially designed to provide our clients a pleasant and trustable gambling experience”. The upper banner of Respondent’s website contains a picture of one of Complainant’s main hotels.

Moreover, Complainant states it has a strong policy of protection for its famous marks. In this respect, Complainant observes that many previous UDRP panels have already ordered the transfer of many domain names to Complainant. Respondent should have reasonably been aware of the fact that Complainant has a strong policy in protecting and enforcing its intellectual property rights and preserving its reputation. It is therefore impossible that Respondent’s decision to register the Domain Name – which is confusingly similar to Complainant’s marks – was purely coincidental.

Complainant claims Respondent’s bad faith becomes more obvious when examining how the Domain Name is used. Respondent is offering an online platform directing users to gambling games, including roulette, poker, and bingo. Respondent’s site therefore refers to the same content as Complainant’s main activities and trademarks, CASINO DE MONTE-CARLO and CASINO DE MONACO. Complainant states Respondent benefits from the unique prestige and renown of Complainant’s famous 150-year old casino and services. Complainant submits that Respondent is using the Domain Name in an intentional attempt to attract, for commercial gain, Internet users to his website or other online locations. Given all of the above, Complainant asserts it is obvious that Respondent is trying to create in the mind of the Internet user an association with Complainant and to unfairly benefit from Complainant’s prestige and reputation. Thus, Respondent registered and is using the Domain Name in bad faith, infringing Complainant’s trademark rights.

B. Respondent

Respondent claims that Complainant has acted in bad faith because Complainant never attempted to contact Respondent to resolve this matter before filing the Complaint. Respondent claims Complainant is attempting “to grab the Domain Name from Respondent at zero cost” because Complainant has plans for it – to launch an online gambling website.

Respondent argues that Complainant is relying on its offline activities, and not online activities, claiming Complainant does not have an online gambling website. Respondent states that he contacted a person living in Nice, France, who in turn called the Monte Carlo Casino asking for the URL of the casino’s website for online gambling, but was told there was no information about an online gambling website for the casino. According to Respondent, counsel for Complainant stated that Complainant has an online gambling website, but it is not working. Respondent emphasizes that despite 150 years of existence, the Internet is only 30 years old and the online gambling industry started in approximately 2003. Respondent claims under intellectual property laws, trademarks do not protect domain names. For these reasons, Respondent claims Complainant’s trademarks are not being violated by the Domain Name, nor is it possible to have any confusion between them, as there is no competition between Respondent’s website and Complainant’s gambling website, which does not exist.

Respondent states that the Domain Name does not use the words “Monte Carlo” in any form, and there is no similarity between the Domain Name and “Monte Carlo” or “Monte Carlo Casino”. Thus, there is no possible confusion between the Domain Name and “Monte Carlo Casino”, neither online nor offline. Regarding Casino De Monaco, Respondent states this name is written in the French language, but Respondent’s Domain Name inverts the word order. Respondent claims that when visiting Complainant’s website at <montecarlosbm.com>, the native language is French, but Respondent’s website content is written in English and indexed in search engines in English, so there is no confusion. Further, Respondent contends the word “Monaco” is a place name, and place names cannot be used exclusively, even by government entities. In view of this, Respondent contends that Complainant’s position, contending that the word Monaco cannot be used online by an entrepreneur, is an abuse. Respondent acknowledges that in Monaco there is a gambling monopoly for offline gambling, but urges that there is a difference between online and offline gambling, especially because online gambling draws players located worldwide and Complainant does not have a worldwide monopoly on gambling. Further, Respondent claims he is “a simple affiliate”, does not have any casino software installed on his server, does not own a license to operate a casino, and is an affiliate of online casinos that do not accept French players.

Respondent asserts that the logos and contacts on his website are different from those on Complainant’s website. Further, regarding the header from Respondent’s website, which shows one of Complainant’s hotels, Respondent explains that this is an image he obtained from Google for free, and the image does not show exclusively the hotel owned by Complainant. Instead, the image shows a view of the Monaco, or at least a big part of it. Further, there is no logo or mark on the building that Complainant claims is its property showing any link to the Monte Carlo Casino. Respondent states that his intention was to show Monaco as a city and tourism destination that is inspiring for the glamour context, but not to imitate the Monte Carlo Casino.

In addition, Respondent denies that he is trying to align his project to Complainant’s trademarks. He emphasizes that when he registered the Domain Name, it was freely available, as were other domain names that included Complainant’s name and trademarks. He states that Complainant should have better procedures in place for registering such domain names.

Respondent concludes that despite polite communications with Complainant’s lawyer, Complainant has been aggressive and unfair. Respondent states he is open to accept an agreement to settle this dispute, but it must be established with fair criteria and fair proposals.

6. Discussion and Findings

In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:

(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) Respondent has registered and is using the Domain Name in bad faith.

A. Identical or Confusingly Similar

Complainant has demonstrated that through registration and extensive, long-standing use, it has well-established rights and significant reputation in its CASINO DE MONACO and CASINO DE MONTE-CARLO trademarks for gaming and related services, and the operation of casinos. See Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Universal Spheres Inc., WIPO Case No. D2010-0822.

The Panel observes that the Domain Name incorporates the terms “casino” and “monaco” in their entirety, while inverting their order, adding the word “online” between them and a “s” to the word “casino”, and also dropping the French preposition “de”. This presentation in the Domain Name does not avoid confusing similarity with Complainant’s CASINO DE MONACO mark. The Panel agrees with the analysis in Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Rohit Katoch, WIPO Case No. D2011-0402, where the panel stated as follows:

“Both the Domain Name and the Complainant’s mark contain the words ‘Monaco’ and ‘Casino’ and the Panel accepts the Complainant’s submission that changing the order of those expressions and adding the generic expression ‘VIP’ is insufficient to create any significant difference between the Complainant’s mark and the Domain Name. Likewise removing the ‘de’ is insufficient to ‘cure’ the confusing similarity arising from the use of the expressions ‘Monaco’ and ‘Casino’ in the Domain Name: the Complainant’s casino in Monaco is a world famous institution, and any domain name incorporating the expressions ‘Monaco’ and ‘Casino’, coupled with only minor generic additions, was inevitably going to create an impression of a connection with, or endorsement by, the Complainant’s casino”.

In addition, the Panel notes that numerous UDRP decisions have found that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also section 1.7 of the WIPO Overview 3.0, which states, “where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.

Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Regarding the second element of the Policy, section 2.1 of the WIPO Overview 3.0, states, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.

Here, the Panel determines that Complainant has made out a prima facie case, while Respondent has failed to rebut adequately Complainant’s contentions. The Panel finds that Complainant has not authorized Respondent to use Complainant’s CASINO DE MONTE-CARLO and CASINO DE MONACO trademarks; that Respondent is not commonly known by the Domain Name; that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services. Instead, the Domain Name effectively impersonates or suggests sponsorship or endorsement by Complainant for Respondent’s online gaming website, by including the entirety of Complainant’s well-known CASINO DE MONACO trademark (absent the French preposition “de”) as the dominant element in the Domain Name, along with the term “online”, which merely signals an Internet presence or focus for Respondent’s site.

Respondent has suggested that intellectual property rights, such as trademarks, do not apply to protect domain names. However, this view misunderstands the intersection between trademark law and domain names. Indeed, the UDRP was adopted more than 20 years ago as a dispute resolution policy designed specifically to provide international protection for the owners of trademarks, particularly in circumstances where third parties have registered domain names targeting those marks. Moreover, the protection that a trademark affords applies both in the “offline” and “online” contexts. These principles are reflected in the UDRP, paragraph 2(b), which sets forth the representations of a domain name registrant when registering a domain name, providing in relevant part that “to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party” and “[i]t is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. The directives of paragraph 2(b) of the Policy are particularly apposite here, where Respondent was undoubtedly aware of Complainant and chose terms drawn from the dominant elements of Complainant’s well-known CASINO DE MONACO mark for use in the Domain Name to host Respondent’s online gaming website. The Panel’s view is that Respondent has chosen the Domain Name to trade off on the fame of Complainant’s casino in order to generate increased web traffic to Respondent’s site. This is not a bona fide use of the Domain Name.

Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been sufficiently rebutted by Respondent. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. WIPO Overview 3.0, section 3.1, states, “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.

Here, the Panel determines that the Domain Name was registered and is being used in bad faith. There is little doubt that Respondent, when registering the Domain Name, was aware of Complainant and its casino and gaming operations, and intentionally targeted Complainant and its marks, when registering the Domain Name. The Domain Name incorporates the terms “casino” and “monaco” in their entirety, while inverting their order, and adding the term “online”. As discussed above, this does not avoid potential confusion among Internet users. Nor does it matter whether or not Complainant operates an “online” gaming website, as Respondent appears to misapprehend the scope of protection afforded by Complainant’s trademarks. Given the distinctiveness of Complainant’s CASINO DE MONACO and CASINO DE MONTE-CARLO trademarks, the timing of the registration of the Domain Name years after Complainant had establish rights in its marks, and the fact that the Domain Name is so obviously connected with Complainant’s marks, the Panel considers that the only logical conclusion is that Respondent targeted Complainant, its casinos, gaming activities, and marks when registering the Domain Name, rather than Respondent choosing a unique name of his own creation.

This point is further confirmed by Respondent’s use of the Domain Name. The Domain Name directs to Respondent’s own website, which provides access to gaming activities – Respondent appears to be offering an online platform directing users to gambling games, including roulette, poker, and bingo – thus referring to the same content as the Complainant’s trademarks and Complainant’s core business. The circumstances therefore fall within paragraph 4(b)(iv) of the Policy – by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s CASINO DE MONACO mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Moreover, in view of this use by Respondent, although Complainant could have chosen to first contact Respondent in an attempt to settle this dispute, it was under no obligation to do so before filing its Complaint in this case.

In conclusion, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Accordingly, Complainant has satisfied the third element of the Policy.

7. Decision

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, <monacoonlinecasinos.com>, be transferred to Complainant.

Christopher S. Gibson
Sole Panelist
Date: November 8, 2021