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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
La Sociйtй Anonyme des Bains de Mer et du Cercle des Etrangers а Monaco v. Thomas Proud
Case No. D2000-1316
1. The Parties
Complainant is La Sociйtй Des Bains de Mer et Du Cercle Des Etrangers а Monaco, having its registered office at Place du Casino, Monte Carlo, MC 98000 Monaco, Principautй de Monaco. Complainant is represented by Sociйtй d'avocats August & Debouzy, Attorneys, having their principal place of business at 6 avenue de Messine, 75008 Paris, France (hereinafter referred to as "Complainant").
Respondent is Mr. Thomas Proud, a citizen of the United Kingdom, having his mailing address at 31 St Andrews Court, Queen Street, Gravesend, DA 12 2ER, Kent, U.K. Respondent is represented by himself (hereinafter referred to as "Respondent").
2. The Domain Name and Registrar
The domain name at issue is: <casinodemonaco.com> (hereinafter referred to as "the Domain Name").
The registrar of the Domain Name at issue is Internet Names Worldwide, a division of Melbourne IT. ltd, level 2, 120 King Street Melbourne Vic 3000, Australia (hereinafter referred to as "Registrar").
3. Procedural History
On November 15, 2000, after having receiving Benoit Van Asbroeck’s completed and signed statement of Acceptance and Declaration of Impartiality and Independence, the WIPO Arbitration and Mediation Center (the "Center") transmitted to the parties a Notification of Appointment of Administrative Panel.
The procedural history prior to the appointment of the Administrative Panel can be summarised as follows:
On October 4, 2000, the Center received a copy of the Complaint from Complainant via email and on October 5, 2000, the Center received the hardcopy of the Complaint. On October 9, 2000 the Center sent an Acknowledgment of Receipt of Complaint to Complainant. The Complainant paid the required fee.
The Center verified that the Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
On October 16, 2000 the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainant.
On November 28, 2000, the WIPO Arbitration and Mediation Center notified to the parties the following administrative procedural order:
"After perusal of Defendant’s response and file, the administrative panel would like to reopen the debates for eventual filing of complementary elements. According to Paragraph 10 and 12 of the Rules for Uniform Domain Name Dispute Resolution Policy, the seized Administrative Panel orders the defendant to submit before the WIPO Arbitration and Mediation Center within 6 working days as from the notification of the present ruling (i.e. December 3, 2000), the following items:
- An access to the content of the site which the defendant intends to localize under the disputed URL "casinodemonaco.com" and which is, according to the defendant, nearly finalized (hereinafter "the Content"). In other words, the Administrative Panel wishes to be able to surf on this content via Internet;
- A printed copy of each screen of the Content"
On November 30, 2000, Respondent sent complementary information to the WIPO Arbitration and Mediation Center.
The language of the administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
The Complaint is based upon Complainant's claimed rights in the trademark "Casino de Monte-Carlo" registered with the Monaco Trademark Office. A copy of the registration certificate of the trademark appears in Exhibit D of Complainant's file.
Complainant has had a monopoly on games and gambling in Monaco since 1863.
On June 22, 2000, Respondent registered the domain name <casinodemonaco.com>.
Complainant apparently does not offer internet casino facilities.
The disputed domain name is not yet used for a website, which is currently under construction.
The intended website shall provide betting and casino facilities. It appears from the complementary information provided by Respondent that the implementation process is nearly completed.
5. Parties’ Contentions
According to Paragraph 4(i) of the Uniform Domain Name Dispute Resolution Policy, adopted by ICANN on August 26, 1999 (hereinafter referred to as "the Policy"), Complainant requests a transfer in its favour of the Domain Name since it cumulatively meets the conditions listed under Paragraph 4 (a) of the Policy.
Complainant contends that the Domain Name is identical or at least very similar to the Complainant's registered trademark.
According to Complainant, it would be wrong to focus solely on the term "Monte Carlo" since the Casino of Monaco is known equally under the two terms.
Respondent cannot demonstrate or establish any legitimate interest in the Domain Name. Respondent did not register any trademark related to "Casino de Monaco". Respondent has not established an active web page with the Domain Name.
The Domain Name has been registered and used in bad faith taking into account the famous character of Complainant's trademark and its monopoly in the area of gambling in Monaco.
The distinctive mark "casino de monaco" is unfit for trademark protection. Casino is a generic word, and Monaco is a geographical locution which cannot be protected.
Monaco and Monte Carlo are not synonymous. Monaco is a state and Monte Carlo is a resort covering one of the four sections of the state of Monaco.
Prior registration of the Domain Name, a free Internet trademark search, not duly documented, has revealed nothing.
Respondent has a legitimate interest in the Domain Name for the following reasons :
- he has registered the Domain Name with the intention of providing a gaming service to the public;
- he has entered into affiliation with the Casino Affiliate Network which is reported as an "establishment licensed for gaming";
- the intended site under construction will soon be operational;
- he has never tried to sell or to offer for sale the Domain Name.
6. Discussion and Findings
Pursuant to paragraph 15(a) of the Rules, the Administrative Panel shall issue its decision on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy provides that a Complainant must cumulatively establish each of the following three conditions to successfully challenge a registered domain name:
(1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) that the domain name has been registered and is being used in bad faith.
The Administrative Panel shall now examine whether the conditions specified under paragraph 4 (a) of the Policy are satisfied here.
(1).1 Right in a trademark
Complainant registered the trademark "Casino de Monte-Carlo" with the sole Monaco Trademark Office on August 3, 1996.
The Policy does not provide any detail with respect to the scope of the rights that the Complainant would have in the disputed trademark.
According to article 3 of Monaco’s Law n° 1058 of June 10, 1983 on trademarks, which was not quoted by Complainant, the registration of a trademark confers to its registrar as from its registration exclusive rights on the sign at issue.
The Administrative Panel has not been informed of any court decision or pending procedure challenging the validity of the trademark "Casino de Monte-Carlo".
The Administrative Panel considers that neither the Policy nor the Rules give it authority to pass a judgment on the validity of trademarks registered with an official Trademark Office, which is obviously the case of the Monaco Trademark Office.
Consequently the possible descriptive character of the trademark "Casino de Monte-Carlo" and its limited geographical scope are not relevant with respect to the requirements of Paragraph 4 (a) (i) of the Policy.
As a result, the Administrative Panel considers that Complainant has, according to Paragraph 4 (a) (i) of the Policy, rights in the trademark "Casino de Monte-Carlo".
(1).2 Identity or Confusing Similarity
Notwithstanding that Monte Carlo and Monaco are not synonymous, it cannot be reasonably challenged that the two geographical locations are commonly, albeit wrongly, used to describe the same area.
In other words, the distinction between "Monaco" and "Monte Carlo" does not appear to be determining, since Monte Carlo is commonly associated with the State of Monaco.
Moreover, with regard to avoiding confusion, addition of the top level domain name ".com" is irrelevant.
Thus, the Administrative Panel finds that the domain name <casinodemonaco.com> is confusingly similar to Complainant’s trademark.
(2) Respondent’s rights or legitimate interests in the Domain Name
According to Paragraph 4(c) of the Policy, evidence of any of the following circumstances shall demonstrate rights or legitimate interests of Respondent in the domain name at issue:
(i) before any notice was given to Respondent of the dispute, Respondent used, or demonstrably made 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 (as an individual, business, or other organisation) has been commonly known by the domain name, even though it has not acquired any trademark or service mark rights; or
(iii) Respondent is making a legitimate non-commercial 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.
Respondent considers that he has brought evidence of the circumstances described
under Paragraph (c) (i) of the Policy. The Administrative Panel shall now assess this assertion :
2 (i) 1. Preparations to use the Domain Name before any notice
It appears from Respondent’s response, not disputed by Complainant on that item, that at the initiation of the present procedure the intended site was largely constructed. The complementary information submitted by Respondent pursuant to the administrative procedural order notified on November 28, 2000, not challenged by Complainant, shows that Respondent has demonstrably made preparations to use the Domain Name in connection with gaming services.
2 (i) 2. Use of the domain name in connection with a bona fide offering of services
Monaco is inter alia associated with casino facilities. The intended site is undoubtedly in connection with the Domain Name.
The issue is whether this association is bona fide.
The fact that Complainant apparently is not offering online gaming services appears to the Administrative Panel as being not determining in this respect. Online and offline gaming services are potentially in competition and cannot a priori be regarded as different branches of the economy or as different markets (see Case No. 1333/2000).
On the other hand, in the present case Respondent cannot ignore that, contrary to the situation in Las Vegas, the Casino de Monte-Carlo has a monopoly for casino and gaming industries for the territory of the Principautй de Monaco since April 2, 1863 (lastly renewed by Ordonnance Souveraine n° 8834 of March 3, 1987).
Therefore, since it does not appear either from Respondent’s defence or from the nearly finalised preparatory works of the disputed site that Respondent intends to make the Internet users expressly aware that the disputed site has no connection with the Casino de Monte-Carlo and to preclude the access to his site for the Internet users located in the Principautй de Monaco, the Administrative Panel is of the opinion that the association at issue is not bona fide.
The Administrative Panel therefore finds that Respondent has no rights or legitimate interest in the Domain Name.
3) Registration and Use in Bad Faith
According to Paragraph 4 (b) of the Policy, evidence of any of the following circumstances shall demonstrate a bad faith registration and use of the domain name at issue :
(i) circumstances indicating that Respondent has registered or that Respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the 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 domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, Respondent has intentionally attempted to attract for commercial gain, Internet users to his web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of his web site or location or of a product or service on his web site or location.
Several facts must be taken into consideration :
1) When registering the Domain Name, Respondent could not have been unaware of the fact that it chose a name which could attract users in a manner that creates the possibility of confusion for the consumer as to whether the site is associated with the "Casino de Monte-Carlo"; the monopolistic position of the Casino de Monte-Carlo (see supra) is an aggravating circumstance in this respect.
2) Respondent has not taken any measures to avoid such confusion (see supra).
In consideration of the above facts, the Administrative Panel finds that, by registering the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of his web site or location or of a product or service on his web site or location.
In view of the foregoing and pursuant to Paragraph 4 (b) (iv) of the Policy, the Administrative Panel finds that Respondent registered and used the Domain Name in bad faith.
Consequently, the Administrative Panel considers that the three cumulative conditions provided under paragraph 4(a) of the Policy are met in this case.
In light of the foregoing, the Administrative Panel decides that the domain name <casinodemonaco.com> must be transferred to Complainant in accordance with the ICANN Policy.
Benoit Van Asbroeck.
Dated: March 12, 2001