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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
La Societe Anonyme Des Bains De Mer Et Du Cercle Des Etrangers A Monaco v. Internet Marketing Associates.
Case No. D2000-1317
1. The Parties
Complainant is the S.A. La Sociйtй Des Bains de Mer et Du Cercle Des Etrangers а Monaco, having its registered offices 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 Internet Marketing Associates with a declared address at 583 San Mateo Avenue, San Bruno, CA, 94066 USA. Hereinafter referred to as "Respondent".
2. The Domain Name and Registrar
The domain name at issue is: "casinomonaco.com" (hereinafter referred to as "the Domain Name").
The Registrar of the Domain Name at issue is Network Solutions Inc. (NSI), 505 Huntmar Park Drive, Herndon, VA 20170, USA (hereinafter referred to as "Registrar").
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, in accordance with the Rules for the Policy, approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules for the Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The complaint was received by the Center by email on October 4, 2000 and in hard copy on October 5, 2000. Receipt was acknowledged on October 9, 2000. On October 10, 2000 registration details were sought from the registrar. On October 13, 2000 registration details were confirmed by the registrar, which stated that its Service Agreement version 4.0 applied. That agreement incorporates the Policy and requires the registrant to submit to administrative proceedings under the Policy.
On October 18, 2000 the Center satisfied itself that the complainant had complied with all formal requirements, including payment of the prescribed fee, and formally notified the respondent by post/courier and email of the complaint and of the commencement of this administrative proceeding and sent copies to the complainant, the registrar and ICANN.
The last day specified in the notice for a response was November 6, 2000. No response was filed. On November 8, 2000 the Center notified the respondent that it was in default and that the Center would proceed to appoint an administrative panel.
On November 10, 2000, the Center invited Benoit Van Asbroeck to serve as panelist. On November 14, 2000, Mr. Van Asbroeck accepted the appointment and submitted a Statement of Acceptance and Declaration of Impartiality and Independence. On November 15, 2000 the Center transmitted the case file to the panel and notified the parties of the projected decision date.
The panel is satisfied that the complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the panel agrees with the Center’s assessment concerning the complaint’s compliance with the formal requirements; the complaint was properly notified in accordance with paragraph 2(a) of the Rules; no response was filed and the administrative panel was properly constituted.
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 March 26, 1999, Respondent registered the domain name "casinomonaco.com".
The disputed URL is not used as a website.
From the file submitted by WIPO to the Administrative Panel, it appears that on November 8, 2000, WIPO was informed of Mr. Aaron Lang's new e-mail, i.e. email@example.com. The same day WIPO sent an e-mail to Mr Aaron Lang, Respondent's administrative contact, to notify him of Respondent's default in the current administrative proceedings.
Mr. Aaron Lang answered the same day "I'm not sure what this is all about, but if the casino wants the domain name, they can have it. It is not being used, nor will it be used".
5. Parties’ Contentions
According to Paragraph 4(b) (i) (s.i.c.)of the Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 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 Monaco". The Domain Name is not used.
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 gambling in Monaco.
No response was submitted.
6. Discussion and Findings
Pursuant to paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the "Rules"), the Administrative Panel shall issue its decision on the basis of the statements and documents submitted in accordance with the Policy, these 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;
(2) that the Respondent has no legitimate interests in respect of the domain name; and
(3) that the domain name has been registered and is being used in bad faith.
Considering that Respondent's administrative contact mail dated November 8, 2000 should be read as showing the respondent’s willingness to offer free of charge the Domain Name to Complainant, the Administrative Panel may follow such declaration and may as a result require that the registration of the Domain Name "casinomonaco.com" be transferred to Complainant. However, in order to grant the request for transfer of the challenged domain name, the Administrative Panel shall examine whether the conditions specified under paragraph 4(a) of the Policy are satisfied here.
1) Right in a trademark - Identity or Confusing Similarity
In the absence of a Response of Respondent, registering a trademark in a single small country is sufficient to meet the requirements of Paragraph 4 (a) (i) of the Policy. However, the scope of the trademark affects the test of bad faith under Paragraph 4 (a) (iii). As a result, Complainant has in this case rights in the trademark "Casino de Monte-Carlo".
The domain name "casinomonaco.com" is confusingly similar to Complainant's trademark. For the Administrative Panel, it is not relevant to distinguish "Monaco" from "Monte Carlo" since Monte Carlo is commonly associated with the State of Monaco.
With regard to avoiding confusion, addition of the top level domain name ".com" is irrelevant.
2) Respondent’s rights or legitimate interests in the Domain Name
According to Complainant's allegations, not disputed by Respondent, Complainant has not licensed or otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating its mark.
By not submitting a response, respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4 (c) of the Policy, any rights or legitimate interest in the Domain Name. To the contrary, it appears clearly from its administrative contact's mail dated November 8, 2000 that Respondent does not intend to use the Domain Name.
3) Registration and Use in Bad Faith
Several facts must be taken into consideration :
a) 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";
b) Respondent's administrative contact has recognised in his e-mail dated November 8, 2000 that the Domain Name is neither being used nor will it be used;
In consideration of the above facts, the Administrative Panel finds that, by registering the Domain Name, Respondent prevents Complainant from reflecting its trademark in a corresponding domain name.
In view of the foregoing and pursuant to Paragraph 4 (b) 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 "casinomonaco.com" must be transferred to Complainant in accordance with the ICANN Policy.
Benoit Van Asbroeck
Dated: November 30, 2000