WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v. Registration Private, Domains By Proxy, LLC / Powermight Technology Limited
Case No. D2017-1364
1. The Parties
Complainant is Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco of Monaco, represented by De Gaulle Fleurance & Associés, France.
Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Powermight Technology Limited of British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Pinsent Masons LLP, France.
2. The Domain Names and Registrar
The disputed domain names <monaco88bo.com>, <monaco88bouat.com>, <monaco88eu.com>, <monaco88eur.com>, <monaco88euro.com>, <monaco88europe.com> and <monaco88uat.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2017. On July 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On July 19, 2017, the Registrar transmitted by email to the Center its verification response 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 e-mail communication to Complainant on July 25, 2017 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 July 31, 2017.
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 August 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 22, 2017. On August 18, 2017, Respondent submitted an email requesting ten additional days to respond to the Complaint. On the same day, the Center invited Complainant to comment on Respondent’s request, and Complainant replied that it agreed with Respondent’s request. Accordingly, on August 22, 2017, the Center notified the Parties that the due date to file the Response was extended to September 1, 2017. Respondent did not submit any substantive response by the specified due date. On September 4, 2017, the Center informed the Parties the commencement of panel appointment process.
The Center appointed Robert A. Badgley as the sole panelist in this matter on September 8, 2017. 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
Since 1863, Complainant has enjoyed a monopoly of all casino and gambling activities (le Privilège des Jeux) in the Principality of Monaco. One of Complainant’s registered trademarks is CASINO DE MONACO, registered in Monaco on July 1, 2002 (registration number R02.23234). Complainant also holds other Monegasque trademarks, registered on May 26, 2009, for the word marks MONACOPOKER, MONACOBET, and MONACOGAMING.
Each of the Domain Names was registered on May 29, 2017. Four of the Domain Names resolved for a period of time to a website offering gambling services. At Respondent’s site, the visitor is invited to “Open a Monaco88 account to have our variable promotions, to enjoy the best gaming experience at the safe and trustable gaming environment.” Three of the Domain Names resolved to an inactive website. The Domain Names do not currently resolve to an active website.
5. Parties’ Contentions
Complainant contends that it has established all three elements required under the Policy for a transfer of the Domain Names. With respect to the number “88” contained in each Domain Name after the word “monaco” and before the suffix (usually a geographical indicator), Complainant asserts that the number 88 “is considered especially lucky in the Chinese culture.” Complainant submits among its annexes a New York Times article in which it is reported that the number 8 is the luckiest number in the Chinese culture and multiple 8s betoken good fortune.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names:
(i) the Domain Names are 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 Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the marks CASINO DE MONACO, MONACOBET, MONACOPOKER, and MONACOGAMING through registration and use. The Domain Names are confusingly similar to these marks, since they incorporate a dominant feature of the marks, i.e., “monaco”, and add the number “88,” which is suggestive of luck, and a suffix of letters either suggestive of Europe (“euro”) or otherwise of little meaning.
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Names, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Names, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Names. Respondent has not been authorized by Complainant to use its marks as a domain name or in any other manner. Respondent has not come forward to explain its bona fides, if any, with respect to the Domain Names. Respondent directed some of the Domain Names to websites purporting to offer gambling services, creating the impression that the services were somehow sponsored by or affiliated with Complainant. This is not a legitimate use of the Domain Names.
Complainant has established Policy, paragraph 4(a)(ii).
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 the Domain Names in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations 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 its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Names 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) that Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line 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 concludes that Respondent has registered and used each of the Domain Names in bad faith. It is very likely that Respondent had Complainant and its marks in mind when registering these seven Domain Names on the same day four months ago. The Panel concludes on this record that Respondent is in bad faith within the meaning of the above-quoted Policy paragraph 4(b)(iv), by directing four of the Domain Names to a website purporting to offer gambling services. Respondent’s website creates the false impression that the gambling services available at the site are somehow affiliated with or sponsored by Complainant. The Respondent’s passive holding of the remaining three Domain Names, in the circumstances of this case, is also evidence of registration and use in bad faith.
Complainant has established Policy paragraph 4(a)(iii).
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 <monaco88bo.com>, <monaco88bouat.com>, <monaco88eu.com>, <monaco88eur.com>, <monaco88euro.com>, <monaco88europe.com> and <monaco88uat.com> be transferred to Complainant.
Robert A. Badgley
Date: September 17, 2017