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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
La Sociйtй Anonyme Des Bains De Mer Et Du Cercle Des Etrangers A Monaco V. Gest Trading S.R.L.
Case No. D 2000-1320
1. The Parties
Complainant is the La Sociйtй Anonyme 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 Gest Trading S.R.L. with a declared address at C. SO Venezia 8, Milano, MI 20121 Italy. Hereinafter referred to as "Respondent".
2. The Domain Name and Registrar
The domain name at issue is: "casino-montecarlo.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
On November 20, 2000, after having receiving Benoit Van Asbroeck’s completed and signed statement of Acceptance and Declaration of Impartiality and Independence, the WIPO Centre 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 has follows:
The Complaint was received by the Center October 9 and 11 by e-mail and hardcopy respectively.
Acknowledgement of Receipt (Complaint) was sent on October 9, and the same day the Center received the Registrar Verification from NSI.
On October 12 the Center’s Formal Requirements Compliance Checklist, and the Center’s Printout of Disputed Webpage were completed.
Notwithstanding due notification to Respondent of the Complaint including Complainant's file, Respondent did not make any response, and Response default was sent to the Respondent on November 6.
Finally, the Notification of Appointment of Administrative Panel was made on November 20.
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 January 20, 1997, Respondent registered the domain name "casino-montecarlo.com".
The disputed URL is not used as a website.
From the file submitted by WIPO to the Administrative Panel, it appears that on October 12, 2000, while trying to retrieve the URL http://www.casino-montecarlo.com, the following error message was encountered "unable to determine IP address from host name. The name server was unable to process this query".
5. Parties’ Contentions
According to 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 to the Complainant's registered trademark. Respondent has merely replaced the word "de" with a dash.
Respondent cannot demonstrate or establish any legitimate interest in the Domain Name. Respondent did not register any trademark related to "Casino de Monte-Carlo". It 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 gambling in Monaco. Complainant alleges that since Respondent did not use the Domain Name, it is obvious that Respondent wants to sell it to someone. However, Complainant does not submit any evidence to support its contention.
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; and,
(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.
The Administrative Panel shall now examine whether the conditions specified under paragraph 4 (a) of the Policy are satisfied here.
1) Right in a trademark - Identity or Confusing Similarity
The Administrative Panel notes that Complainant has registered its trademark very recently (in 1996) and only in Monaco, and does not submit any evidence to prove its rights in any domain name in connection with its trademark.
On November 24, 2000, the Administrative Panel made a search of US registered trademarks using the words "casino", " Monte-Carlo" and/or "Monaco". The inquiry reveals several hundred registered trademarks.
Moreover, Complainant has not submitted any evidence with respect to the notoriety of its trademark.
However, Respondent, by not filing a response, has not addressed these issues.
"Casino de Monte Carlo" is Complainant's verbal registered trademark.
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 "casino-montecarlo.com" is identical to Complainant's trademark.
The deletion of "de" and addition of a dash are not sufficient to avoid confusion.
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 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."
It appears from the file submitted by WIPO to the Administrative Panel that Respondent does not use the Domain Name.
Furthermore, 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 all or part of this 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.
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; (...)
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";
2) Respondent has not established an active web page with the Domain Name ;
In consideration of the above facts, the Administrative Panel finds that, by registering the Domain Name, Respondent prevents Complainant from reflecting its mark 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 "casino-montecarlo.com" must be transferred to Complainant in accordance with the ICANN Policy and Rules.
Benoit Van Asbroeck
Dated: November 30, 2000