WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v. Banana banana.

Case No. D2021-4320

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 Banana banana, Thailand.

2. The Domain Names and Registrar

The disputed domain names <montescarlo.com> (“Disputed Domain Name”) and <montecarlo168.net> (“Additional Domain Name”) are registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2021. On December 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 22, 2021, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on January 5, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 25, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 27, 2022.

The Center appointed Nicholas Weston as the sole panelist in this matter on February 2, 2022. 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 February 8, 2022, counsel for the Complainant sent an email to the Center requesting permission to add the Additional Domain Name to the proceeding on the alleged basis that it refers to the Complainant’s MONTE-CARLO trademark exactly as the Disputed Domain Name, that the addition of the number 168 was insufficient to avoid a likelihood of confusion with the Complainant’s prior marks, and that the Respondent had published identical content to the Additional Domain Name website.

On February 9, 2022, the Center forwarded by email the Complainant’s email request to the Panel. On February 17, 2022, the Panel instructed the Center to send to the Registrar a request for registrar verification in connection with the Additional Domain Name. On February 18, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Additional Domain Name. On February 22, 2022, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is the registrant of the Additional Domain Name. On February 22, 2022, the Center provided the Panel with the registrar verification for the Additional Domain Name from the Registrar confirming the Additional Domain Name was registered to the Respondent.

On February 22, 2022, the Panel issued Procedural Order No. 1 (the “Order”), granting the Complainant’s request to add the Additional Domain Name to this proceeding. The Order:

(i) provided the Respondent with an additional 7 days to communicate whether it intended to make a Further Response in relation to the Additional Domain Name;

(ii) explained that if the Respondent timely communicated intent to provide a Further Response in relation to the Additional Domain Name, the Panel would allow the Respondent an additional 20 days from the issuance of the Order to provide a Further Response;

(iii) explained that the Panel’s decision would be issued within 10 days of receipt of the Further Response or the date the Further Response was due;

(iv) explained that if the Respondent did not timely communicate intent to provide a Further Response, the Panel would issue its decision within 14 days of the issuance of Order; and

(v) specified that any Further Response must only relate to the Additional Domain Name and not to the Disputed Domain Name <montescarlo.com> involved in the proceeding.

Having regard to section 4.12.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the Panel considered that it was fair and practical, and that it was not prejudicial to the Respondent for the Additional Domain Name, <montecarlo168.net>, to be considered as part of this proceeding.

4. Factual Background

The Complainant is a company organized under the laws of Monaco, formed originally by a sovereign decree in 1863, and is the largest employer in Monaco. The Complainant holds a monopoly on casino gaming services in the Principality and operates numerous venues. It has operated the world-famous Casino de Monte-Carlo for nearly 160 years. The Complainant holds registrations for the trademark MONTE-CARLO in numerous jurisdictions, which it uses to designate casino related services in class 41. Monaco Trademark Registration No. 14-30170, for the mark MONTE-CARLO, for example, was registered on December 31, 2013. Monaco trademark No. 96.17485, for the mark CASINO DE MONTE-CARLO, has been registered since October 30, 1996.

The Disputed Domain Name <montescarlo.com> was registered on October 5, 2021. The Additional Domain Name, <montecarlo168.net>, was registered on October 6, 2021. The Disputed Domain Name and the Additional Domain Name each resolve to online casino and gaming websites.

5. Parties’ Contentions

A. Complainant

The Complainant cites its registered trademarks including Monaco Trademark Registration No. 14-30170 for the mark MONTE-CARLO, and other trademark registrations internationally for variations of that mark as prima facie evidence of ownership.

The Complainant submits that its rights in the mark MONTE-CARLO predate the Respondent’s registration of the Disputed Domain Name. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the MONTE-CARLO trademark and that the similarity is not removed by the additional letter “s” or the addition of the generic Top-Level Domain (“gTLD”) “.com”. It further submits that the Additional Domain Name is confusingly similar to its trademark, because the Additional Domain Name incorporates in its entirety the MONTE-CARLO trademark and that the similarity is not removed by the additional number “168” or the addition of the gTLD “.net”.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and the Additional Domain Name because the Respondent is not a licensee of the Complainant; is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy; and given the use of the Disputed Domain Name and Additional Domain Name to resolve to casino and gambling websites, is not using the Disputed Domain Name and Additional Domain Name in connection with a bona fide offering of goods or services.

Finally, the Complainant alleges that the registration and use of the Disputed Domain Name and the Additional Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the Complainant’s prior and well-known trademarks.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

7. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:

(i) that the Disputed Domain Name and the Additional Domain Name are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and the Additional Domain Name; and
(iii) that the Disputed Domain Name and the Additional Domain Name have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark MONTE-CARLO. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see WIPO Overview 3.0, section 1.2.1).

Turning to whether the Disputed Domain Name and the Additional Domain Name are identical or confusingly similar to the MONTE-CARLO trademark, the Panel observes that:

1. the Disputed Domain Name comprises: (a) a reproduction of the Complainant’s trademark MONTE-CARLO; (b) with the letter “s” inserted between the two words; (c) followed by the gTLD “.com”.

2. the Additional Domain Name comprises: (a) a reproduction of the Complainant’s trademark MONTE-CARLO; (b) with the number “168” added; (c) followed by the gTLD “.net”.

It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains, WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name and the Additional Domain Name, specifically: “montescarlo” and “montecarlo168”, respectively.

It is also well established that where, on a side-by-side comparison of the Disputed Domain Name and the Additional Domain Name and the textual components of the relevant trademark (to assess whether the mark is recognizable within the Disputed Domain Name and the Additional Domain Name), if at least a dominant feature of the relevant mark is recognizable in the Disputed Domain Name and the Additional Domain Name, then the Disputed Domain Name and the Additional Domain Name will normally be considered confusingly similar to that mark for purposes of UDRP standing (see WIPO Overview 3.0, section 1.7).

In the absence of a reply, and in line with previous UDRP panel typosquatting decisions that have considered a domain name comprised of a trademark with a random letter inserted, the Panel finds the Disputed Domain Name consists of an obvious and intentional misspelling of the Complainant’s trademark of the type that is considered by many previous panels to be confusingly similar to the relevant mark for purposes of the first element. (See, for example Société des Bains de Mer et du Cercle des Etrangers à Monaco v. I. Bancorp Europe et al., WIPO Case No. D2000-1323; WIPO Overview 3.0, section 1.9).

Further, the mark is recognizable within the Additional Domain Name on a side-by-side comparison of the Additional Domain Name and the relevant trademark, and the addition of the number “168” would not typically prevent a finding of confusing similarity (see WIPO Overview 3.0, sections 1.7 and 1.8). Accordingly, the Panel also finds that the Additional Domain Name is confusingly similar to the Complainant’s trademark

The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy for both the Disputed Domain Name and the Additional Domain Name.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in a disputed domain name. The Policy also places the burden on the complainant to establish the absence of respondent’s rights or legitimate interests in a disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case (see WIPO Overview 3.0, section 2.1).

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and the Additional Domain Name because each instance is not the Respondent’s name, there is no license from the Complainant to use the Complainant’s trademark, there is no evidence of the Disputed Domain Name or the Additional Domain Name being used in connection with a bona fide offering of goods and services, and the evidence is that each redirects to an online casino.

The uncontested evidence is that the Respondent has not made, and is not currently making, a legitimate noncommercial or fair use of the Disputed Domain Name and the Additional Domain Name, without intent for commercial gain to misleadingly divert consumers pursuant to paragraph 4(c)(iii) of the Policy. Nor, alternatively, does paragraph 4(c)(i) of the Policy apply. In that regard, the Complainant contends that the use of the Disputed Domain Name and the Additional Domain Name to direct Internet traffic to online casino and gaming websites does not constitute a bona fide offering of goods or services, but rather, that the Respondent is attempting to unfairly capitalize on the reputation and goodwill of the Complainant’s trademark.

Furthermore, the nature of the Additional Domain Name, by reproducing the Complainant’s mark and having regard to the associated website content, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.

This Panel accepts that the Complainant has made out a prima facie case that the Respondent lack rights or legitimate interests in the Disputed Domain Name and the Additional Domain Name and, in the absence of a Response by the Respondent, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The third element of the Policy that the complainant must also demonstrate is that a disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.

The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name and the Additional Domain Name in bad faith.

On the issue of registration, it is implausible that the Respondent might have registered the Disputed Domain Name and the Additional Domain Name without knowing of the Complainant and its trademark MONTE-CARLO. See Société des Bains de Mer et du Cercle des Etrangers à Monaco v. LaPorte Holdings, LLC, WIPO Case No. D2005-0526. The Panel is satisfied that the Respondent is, or should have been, aware of the Complainant’s reputation and trademark MONTE-CARLO when it registered the Disputed Domain Name and the Additional Domain Name (see WIPO Overview 3.0, section 3.2.2).

This Panel finds that there is no reason for the Respondent to have registered the Disputed Domain Name and the Additional Domain Name other than to trade off the reputation and goodwill of the Complainant’s well-known trademark (see Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403 (which held that the domain name in question was “so obviously connected with the Complainant and its products that its use by someone with no connection with the Complainant suggests opportunistic bad faith”).

Further, a gap of several years between registration of a complainant’s trademark and respondent’s registration of a disputed domain name (containing the trademark) can indicate bad faith registration (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Respondent registered the Disputed Domain Name and the Additional Domain Name 158 years after the Complainant established trademark rights in its mark.

On the issue of use, the Complainant’s evidence is that the Disputed Domain Name and the Additional Domain Name each redirect Internet users to an online casino or gambling website that appears likely to confuse consumers into believing that the website is somehow associated with the Complainant (see WIPO Overview 3.0 at sections 3.1.3, 3.1.4, 3.2.1).

In respect to the Disputed Domain Name, the Panel observes that the letter “s” inserted between the two words in the Complainant’s trademark after the letter “e” and before the letter “c” is almost adjacent to those letters on a QWERTY keyboard, thus increasing the risk of a typographical error and inference of opportunistic typosquatting.

In the absence of any evidence to the contrary, this Panel accepts the Complainant’s evidence and finds that the Respondent has taken the Complainant’s trademark MONTE-CARLO and incorporated it in the Disputed Domain Name along with the letter “s”, without the Complainant’s consent or authorization, for the purpose of capitalizing on the reputation of the trademark and the Complainant’s rights.

This Panel also accepts the Complainant’s uncontested evidence with respect to the Additional Domain Name and finds that the Respondent has taken the Complainant’s trademark MONTE-CARLO and incorporated it in the Additional Domain Name along with the number “168”, without the Complainant’s consent or authorization, for the purpose of capitalizing on the reputation of the trademark and the Complainant’s rights.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

8. Decision

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 <montescarlo.com> and the Additional Domain Name <montecarlo168.net>, be transferred to the Complainant.

Nicholas Weston
Sole Panelist
Date: March 3, 2022