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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
La Sociйtй des Bains de Mer et du Cercle des Etrangers а Monaco v. Martimi Bt.
Case No. D2000-1318
1. The Parties
The Complainant is La Sociйtй des Bains de Mer et du Cercle des Etrangers а Monaco, located Place du casino, Monte Carlo, 98000 Monaco, Princedom of Monaco, hereinafter the "Complainant".
The Complainant’s representative in this administrative proceeding is the Sociйtй d’avocats August & Debouzy with office at 6, avenue Messine, 75008 Paris, France.
The Respondent is Martimi BT. located Palicsi u. 59, Budapest, Pest 1031, Hungary, hereinafter the "Respondent" represented in this proceeding Sбr йs Tбrsai Ügyvйdi Iroda, with office at Böszörmйnyi u. 20-22., Budapest 1126, Hungary.
2. Domain Name and Registrar
The domain name at issue is "casino-monaco.com", hereinafter referred to as the "Domain Name", registered with the registrar Easyspace Ltd. on May 25, 2000,
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complainant’s complaint on October 9, 2000 (electronic version) and October 11, 2000 (hard copy).
On October 9, the acknowledgment of receipt of the complaint was sent and a request for registrar verification was transmitted to the registrar, Easyspace Ltd.
On October 12, 2000, the registrar transmitted via email to the Center its verification response, confirming that a copy of the complaint had been sent to the Registrar, that the Domain Name is registered with Easyspace and that the Respondent is the current registrant of the Domain Name. He provided the full contact details, confirmed that the Uniform Domain Name Dispute Resolution Policy applies to the Domain Name and indicated that the current status of the Domain Name is registrar locked.
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 Disputes Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Complainant made the required payment to the Center.
The formal date of the commencement of this administrative proceeding is October 13, 2000. On that date the Center transmitted to Respondent Notification of Complaint and Commencement of the Administrative Proceeding, via post/courier, fax and e-mail, in accordance with the following contact details:
Att: Mr Alexander Marti
Palicsi u. 59
Fax: +38 27 348849
The Center advised that the response was due by November 1, 2000.
On this very same day, the Center acknowledged Receipt of the response and communicated this notification to the Respondent and the Complainant.
In view of the Complainant’s designation of a single panelist, the Center invited Mr. Geert Glas to serve as a panelist.
Having received Mr. Geert Glas’ Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Geert Glas was formally appointed as the Sole Panelist, on November 13, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
The Administrative Panel shall issue its Decision based on the complaint, the response, the evidence presented, the Policy, the Rules and the Supplemental Rules.
4. Factual Background
Since April 1863, Complainant has a monopoly for casino and gaming industry in the territory of the Princedom of Monaco pursuant to the "Ordonnance Souveraine" of April 2, 1863 and renewed for twenty years by the "Ordonnance Souveraine" 8.834 on March 24, 1987. It exercises this business in the City of Monte-Carlo in its premise known as "Casino de Monte-Carlo".
Complainant is moreover the owner of the word mark "Casino de Monte-Carlo", filed in August 13, 1996 with the Monaco trademark office for goods and services of classes 3, 9, 12, 14, 16, 18, 28, 34, 35, 38, 39, 41 and 42.
Since its creation on April 7, 1999, the Respondent has registered several domain names consisting of the juxtaposition of the word "Casino" and the name of a country such as "casino-britain.com ", " casino-poland.com", " casino-amerika.com" etc.
On May 25, 2000, Respondent registered the Domain Name with Easyspace.
The Domain Name resolves to an "under construction" web page.
On October 2, 2000, Respondent sold the Domain Name by a sale agreement to Cybinter Kft., and therefore is not longer the proprietor of the Domain Name. This sale agreement concerns indeed eight domain names registered by the Respondent, and based on the same pattern of "casino + country name".
However, due to paragraph 8 of the ICANN Policy, transfer of the Domain Name to a new holder during a pending administrative proceeding is forbidden, and therefore Respondent is still considered in this proceeding as being the actual registrant.
Cybinter Kft is a Hungarian company founded on September 1, 2000. According to its Business Plan, its objective would be to provide web pages on the Internet for small and medium sized enterprises and its activity would cover, among others, Internet, PC and casino games.
5. Parties Contentions
Complainant contends that Respondent has registered the Domain Name which is identical, or at least very similar to Complainant’s trademark "Casino de Monte-Carlo". According to Complainant, the word "casino" is used in an identical way in both the Domain Name and its trademark.
The substitution of the term "Monte-Carlo" in the trademark by the term "Monaco" in the Domain Name does not diminish the identity or similarity since it is very common to use one or the other term indifferently to designate the Princedom of Monaco and both words are therefore perfect synonyms.
Complainant is also of the opinion that Respondent has no rights or legitimate interests in respect of the Domain Name because it did not file or register any trademark containing the words used in the Domain Name.
Complainant also affirms that because Respondent has no intellectual or commercial property rights over the "casino-monaco" sign, it cannot invoke any copyright.
In view of its strong notoriety and the monopoly granted to it for more than one century on games and gambling in Monaco, Complainant is of the opinion that the registration of the Domain Name has been made consciously in violation of the Complainant’s rights.
The activities of Complainant relating to its casino in Monaco give the Domain Name a considerable commercial value.
Therefore, Complainant argues that while not developing a web site linked to the Domain Name, Respondent was in reality waiting to receive a purchase offer from Complainant or from any other competitor.
As a subsidiary argument, Complainant contents that, if the Respondent really intended to use the Domain Name by developing a web site, he would intentionally attempt to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with the Complainant’s notorious mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s web site.
Furthermore, Complainant contends that the Domain Name is so obviously connected to its services that its very use by the Respondent suggests an opportunistic bad faith.
Respondent argues that its Domain Name and the Complainant’s trademark are neither identical nor similar in written form, in sound or with regard to any association.
It considers that Complainant has not found any argument or proof to support Respondent’s lack of rights or of legitimate interests in respect of the Domain Name.
It claims that the absence of any trademark rights does not constitute an absence of legitimate rights or interests since rights and legitimate interests are not confined to industrial property. It contends that the right or legitimate interest in the Domain Name is shown by the purpose and business activity of both its company and Cybinter, the company it intends to sell the Domain Name to.
It also contests to be acting in bad faith: its Domain Name is not infringing upon the Complainant’s trademark; the Domain Name is within its normal business policy; it has no intention to sell the Domain Name to the Complainant or any other competitor; the fact that the web site has not been developed does not demonstrate that the Domain Name has not been exploited, on the contrary, preparations for its use have been made by both companies, Respondent and Cybinter.
It affirms that the Domain Name is not obviously connected to the Complainant’s services because the trademark and the Domain Name are not identical or similar and no opportunistic bad faith can be deduced from its existence and intended use.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Administrative Panel as to the principles the Administrative Panel is to use in determining the dispute: "A Panel shall decide a complaint 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 directs that the Complainant must prove each of the following:
(1) that the Domain Name registered by the Respondent is identical or confusingly similar to the trademark in which the Complainant has right; 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.
(a) Identity or similarity
The Domain Name consists primarily of two words, namely "Casino" and "Monaco". However, in order to determine whether there is identity or confusing similarity, both the Domain Name <casino-monaco.com> and Complainant’s trademark (Casino de Monte-Carlo) must be examined and compared as a whole.
While there does not seem to be a visual similarity, such similarity is more clearly present phonetically. Moreover, it cannot be excluded that a conceptual similarity would be deemed to exist between the Domain Name and the trademark.
(b) Rights or Legitimate Interests
The discussion of this point is not necessary since the Panel is of the opinion that Complainant fails on establishing that the Domain Name was registered and used in bad faith.
(c) Registration and Use in Bad Faith
Respondent proceeded to register a considerable number of domain names, by combining the word "casino" with the name of a country. The Panel finds that this pattern of conduct in registering the domain names shows that Respondent registered the Domain Name independently of Complainant’s trademark. In fact, there is no evidence that Respondent knew of Complainant, of Complainant’s trademark or of Complainant’s exclusive rights on providing gambling services in the Princedom of Monaco. Therefore, the Panel finds that Respondent did not register the Domain Name in bad faith.
Furthermore, the Panel finds that in this case, paragraph 4(b), (i) of the Policy is not applicable and that the Respondent did not use the Domain Name in bad faith. Indeed, nothing indicates that Respondent was basing this activity on the inherent value of trademarks belonging rightfully to others thereby trying to get a free ride on somebody else’s goodwill. Consequently, the Panel finds that Respondent did not use the Domain Names in bad faith.
The Panel finds that this case must be distinguished from three other cases where Complainant prevailed. These are:
- Case No. D2000-1320: This case involves the domain name "casino-montecarlo.com". It appears from the decision that the respondent did not submit a response and that the domain name was not in use. Consequently, no legitimate interest was shown and bad faith could be inferred from the circumstances.
- Case No. D2000-1321: The subject matter of this case is the domain name "casino-monte-carlo.net". Here, not only did the respondent not submit any response, but it also appears that he offered to sell the domain name to the complainant. Arbitration case law is of the consistent opinion that such a behavior negates any right or legitimate interest and sustains bad faith.
- Case No. D2000-1332: This case is about "monacogambling.com". Here also, the panelist found that there exists a conceptual similarity between the complainant’s trademark and the domain name at issue. Furthermore, bad faith could be inferred from the respondent’s suspicious name: "Global Productions – Domain For Sale". In addition, the panelist also found that the elements of the case showed obvious "opportunistic bad faith" on the side of the respondent.
In light of the foregoing, the Administrative Panel decides that the Domain Name "casino-monaco.com" registered by Respondent may be confusingly similar to the trademark of Complainant but that Respondent has not registered nor used the Domain Name in bad faith. Therefore, the request for transfer is denied.
Dated: 14 December, 2000