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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sociйtй des Bains de Mer v. Worldnet Companies Inc.
Case No. D2000-1321
1. The Parties
The Complainant is La Sociйtй des Bains de Mer et du Cercle des Etrangers а Monaco ("Sociйtй des Bains de Mer"), a Monaco sociйtй anonyme having its principal place of business in Monte-Carlo, Monaco.
The Respondent is Worldnet Companies Inc., with its principal place of business in Fort Lauderdale, Florida, USA.
2. The Domain Name and Registrar
The domain name at issue is "casino-monte-carlo.net". The domain name registrar is Tucows.com Inc.
3. Procedural History
Complainant filed its complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") which was received on October 9, 2000, by email and on October 11, 2000 in hard copy.
On October 10, 2000, Tucows.com Inc. sent via email to the Center a verification response confirming that the Respondent is the registrant and that the contact for administrative, technical and billing is WNC, Admin firstname.lastname@example.org.
On October 12, 2000, the Center verified that the complaint satisfies 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 (the "Supplemental Rules") and transmitted a request for registrar verification to Tucow.com Inc. in connection with this case.
On October 13, 2000, the Center formally commenced this proceeding and notified Respondent that its response would be due by November 1, 2000. The notification was sent to the Respondent by courier and email. The emails were sent to email@example.com and to firstname.lastname@example.org, with a copy to Idegaulle@augdeb.com. The email to email@example.com was delivered. The email to firstname.lastname@example.org was transferred without receipt of any "undeliverable" notice. Respondent did not file a response by the due date.
On November 6, 2000, the Center sent a notification of respondent default to the Respondent by courier and email.
On November 7, 2000, the Center received an email from the Respondent claiming that it had already responded to the Complainant. This email has been considered part of the record for these proceedings.
Complainant elected a single-member Panel.
On November 20, 2000, after clearing for potential conflicts, the Center appointed Thomas H. Webster as the Panelist, and set December 3, 2000 as the deadline for issuance of a decision.
4. Factual Background
Because there is no response, the following facts are taken from the complaint and are generally accepted as true in the circumstances of this case.
"The Sociйtй des Bains de Mer is the founder and manager of the Casino of Monte-Carlo. Since April 2, 1863, the Sociйtй des Bains de Mer has also a monopoly for casino and gaming industries for the territory of the Principautй de Monaco, and is therefore the sole company that can organize games and gambling at Monaco (Privilиge des Jeux, renewed for the last time by the Ordonnace Souveraine n°8834 of March 3, 1987…) It is moreover the owner of the worldmark "Casino de Monte-Carlo", filed in August 13, 1996, to the Monaco Trademark Office, covering the following products and services in classes 3, 9, 12, 14, 16, 18, 28, 34, 35, 38, 39, 41 and 42…"
"The Respondent registered the domain name "casino-monte-carlo.net" with Tucows.com Inc. on April 16, 1998."
Respondent states in its email of November 7, 2000 to the Center that it offered to sell the domain name to Complainant for $25,000.
5. Parties’ Contentions
Complainant makes the following allegations.
"This domain name is, beyond any doubt, identical to the Complainant's prior trademark "Casino de Monte-Carlo" which is almost completely reproduced by the Respondent domain name "casino-monte-carlo", the only difference being the replacement of the term "de" by a dash.…"
"In searching worldwide for signs that contain the terms "Casino" and "Monte Carlo" (with or without dash, jointed or separated) on the Compumark database, it appears that the Respondent did not file or register any trademark concerning these signs, in any country worldwide …"
"Generally speaking, the Respondent has no Intellectual or Commercial Property rights over the "casino-monte-carlo" sign or any similar sign : no copyright can thus be invoked by him.
The Respondent therefore has no rights or legitimate interests in the "casino-monte-carlo.net" domain name."
"All these elements, and inter alia the renown of the Complainant's "Casino de Monte-Carlo" trademark, show that the domain name "casino-monte-carlo.net" has been registered in bad faith by the Respondent.
Given the strong notoriety of the Complainant's mark as well as the ease for any user of the Internet to assess on its own whether or not the registration and use of a domain name is likely to encroach on another's rights, the Respondent could not ignore that such a registration was made in fraud of the Sociйtй des Bains de Mer's rights.
Moreover, the Respondent used the "casino-monte-carlo.net" domain name by developing an on-line gaming web site at this address…"
"Given the strong notoriety of the Complainant's mark, as well as the fact that the Complainant has a monopoly for casino and gambling industries in Monte-Carlo, the Complainant finds that by registering and by using the domain name for a web site that is directly connected to the gaming industry, the Respondent is intentionally attempting 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 the Respondent's web site.
Indeed, the average Internet user is automatically led to believe that the "casino-monte-carlo.net" web site is somehow connected to the Casino de Monte-Carlo institution and trademark, that belong to the Sociйtй des Bains de Mer…such circumstances may be taken as evidence of bad faith. Furthermore, the Domain name is so obviously connected with the Complainant and its products that its very use by someone with no connection with the Complainant suggests opportunistic bad faith…"
As noted above, the only response received from the Respondent was the email of November 7, 2000. The Respondent did not contest the above allegations of the Complainant.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) 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;
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and used in bad faith.
A. Similarity of the Domain Name and Trademark.
Complainant has established its rights in the trademark "Casino de Monte-Carlo" registered in Monaco and that the Respondent has not registered any such trademark in Europe or the United States.
The evidence submitted by the Complainant indicates that the Complainant does not have any international trademark registrations for this trademark.
In particular, the Complainant has not registered the trademark "Casino de Monte-Carlo" in the United States.
With respect to notoriety, the Complainant has not submitted any evidence.
The panelist is satisfied that Monte Carlo is known for gambling and for having one or more casinos and that the public generally associate "Casino-Monte-Carlo" with the main casino in Monte Carlo. However, Complainant has offered no explanation for the fact that, apparently, it has not registered the trademark "Casino de Monte-Carlo" elsewhere than in Monaco and that even that registration was first made in 1996.
Therefore, there is a lack of evidence in this case of "the strong notoriety of the Complainant's mark" as alleged by the Complainant. This is to be contrasted with the various decisions based on extensive worldwide filings for trademarks, such as Chanel, Inc. v. Estco Technology Group, Case No. D2000-0413 (WIPO, Sept. 18, 2000).
Given that the Respondent is apparently based in the United States, the absence of a U.S. trademark raises the issue of whether the Complainant is also required to have a trademark or service mark in the United States in order to meet the requirements under paragraph 4(a)(i) of the Policy. The Complainant provided no authority on the point.
The issue was raised in Universal Studios, Inc. v. Antonio Paez, Case No. D2000-0569 (WIPO, August 17, 2000) which states: "The Sole Panelist finds that there is no requirement that the trademark or service mark right asserted by the Complainant be in the United States. Here the Complainant has registered its trademark and service mark throughout the Spanish and Portuguese speaking countries of the world. Respondent does not contest the validity of these marks. Therefore, the Sole Panelist finds that the internationally registered marks of the Complainant are sufficient to meet the requirements of the Policy paragraph 4(a)(i)."
In the absence of a response from the Respondent, it would appear that a trademark registered in a single country is sufficient to meet the requirements of paragraph 4(a)(i) of the Policy. However, the scope of the trademark is related to the issue of bad faith under paragraph 4(a)(iii) of the Policy.
This panelist finds that "casino-monte-carlo.net" is confusingly similar to Casino de Monte-Carlo. The deletion of "de" and addition of dashes are not sufficient to avoid confusion.
B. Respondent's Rights and Legitimate Interests.
Respondent is using the domain name in connection with what appears to be a gambling site.
In the absence of explanation from the Respondent, it appears that the Respondent is seeking to 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. See Chanel, Inc. v. Estco Technology Group, Case No. D2000-0413 (WIPO, Sept. 18, 2000); Universal City Studios, Inc. v. G.A.B. Enterprises, Case No. D2000-0416 (WIPO, June 29, 2000).
C. Bad Faith Registration and Use.
In its email of November 7, 2000, the Respondent stated that "I have responded, I told [the Complainant] they can buy the domain for $25,000".
This type of offer to sell a domain name has been found in numerous decisions to be an indication of bad faith on the part of the holder of the domain name: See Metabolife International v. Robert Williams, Case No. D2000-0630 (WIPO, Sept 5, 2000).
Therefore, whatever weaknesses that the Complainant may have with respect to its trademark, it is clear that the Respondent felt that (1) the right to use the domain name in question was valuable and (2) the Complainant should be willing to pay a substantial sum for it, despite the Respondent's lack of legitimate interest in it. This is the type of behavior that the Rules were designed to deal with.
For the foregoing reasons, the Panel holds:
(a) that the domain name casino-monte-carlo.net is confusingly similar to the trademark Casino de Monte-Carlo in which the Complainant has rights;
(b) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) that the Respondent registered and has used the domain name in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the domain name casino-monte-carlo.net should be transferred to the Complainant.
Thomas H. Webster
Dated: November , 2000