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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sociйtй des Bains de Mer et du Cercle des Etrangers а Monaco v. Externet World Inc.
Case No. D2000-1322
1. The Parties
The Complainant is Sociйtй des Bains de Mer et du Cercle des Etrangers а Monaco, a sociйtй anonyme monйgasque having its registered office at Place du Casino, Monte-Carlo, MC 98000, Monaco.
The Respondent is Externet World Inc., with an address at 6336 Wilshire Blvd, Los Angeles, CA 90048, USA.
2. The Domain Names and Registrar
The domain names at issue are <montecarlo-casino.net> and <montecarlo-casino.org>. The domain name registrar is Network Solutions, Inc.
3. Procedural History
Complainant filed its complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") which was received by email on October 9, 2000, and in hard copy on October 11, 2000.
On October 9, 2000, the Center transmitted a request for register verification to Network Solutions, Inc. in connection with this case.
On October 9, 2000, Network Solutions, Inc. sent via email to the Center a verification response confirming that the Respondent is the registrant and that the contact for administrative, technical, zone and billing is Hostmaster (HO4616-ORG) hostmaster@EXTERNETWORLD.NET.
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").
On October 13, 2000, the Center attempted unsuccessfully to retrieve the URLs of the two domain names at issue.
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 fax on October 13, 2000 and to the technical contact by courier on October 13, 2000. The notification was also sent by email on October 13, 2000 to the Respondent and to the technical contact. On October 20, 2000, the Center sent an email to the technical contact to verify the Respondent’s email address. Notification by email appears subsequently to have been resent to the Respondent to the email address given by the technical contact on October 20, 2000 without receipt of any "undeliverable" notice.
Respondent did not file a response by the due date. The Center sent a notification of respondent default to the Respondent by courier and email on November 6, 2000.
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.
On November 21, 2000, the Complainant requested the proceedings to be suspended. The Center notified the parties on November 24, 2000 of the suspension. On December 26, 2000, the Complainant requested by email to reactivate the proceedings. The Center informed the panelist on January 10, 2001 of the decision to recommence the proceedings.
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…"
"The Respondent registered the domain names "montecarlo-casino.net" and "montecarlo-casino.org" with Network Solutions Inc. on October 6, 1998."
From the file submitted by WIPO to the panelist, on October 13, 2000 while trying to retrieve the URL http://www.montecarlo-casino.org and http://www.montecarlo-casino.net, the following error message was encountered: "unable to determine IP address from host name…The name server was unable to process this query." The panelist has also been unable to access the domains.
5. Parties’ Contentions
Complainant makes the following allegations and provides limited supporting documents for such allegations.
In respect of the domain names being identical or confusingly similar to a trademark or service in which the Complainant has rights, Complainant alleges that:
"This trademark is undoubtedly a renown trademark, as the Principautй de Monaco is inter alia known worldwide for its casino, which is one of its most famous symbol.
…These domain names are, beyond any doubt, identical to the Complainant's prior trademark "Casino de Monte-Carlo" which is completely reproduced by the Respondent domain names "montecarlo-casino.net" and "montecarlo-casino.org", the only differences being the replacement of "de" by a dash.
…All these elements show that the Respondent's domain names are identical to the prior trademark in which the Complainant has rights."
Complainant contends that the Respondent has no rights or legitimate interests in the domain names and relies on the following elements:
"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…
…the Respondent has no Intellectual or Commercial Property rights over the "montecarlo-casino" sign or any similar sign : no copyright can thus be invoked by him.
…the domain names "montecarlo-casino.net" and "montecarlo-casino.org" are not exploited by the Respondent who, although he registered the domain name in October 1998, did not develop any web site at this address.
The Respondent therefore has no rights or legitimate interests in the "montecarlo-casino.net" and "montecarlo-casino.org" domain names."
Complainant further alleges that the domain names were registered and used in bad faith by the Respondent based on the following elements:
"…the renown of the Complainant's "Casino de Monte-Carlo" trademark, show that the domain name "montecarlo-casino.net" and "montecarlo-casino.org" have 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, which is the sole company allowed to organize games and gambles in Monte-Carlo.
Moreover, one should also note that the virtual casinos web sites are multiplying, and that the domain names, "montecarlo-casino.net" and "montecarlo-casino.org", registered in bad faith by the Respondent can consequently be the object of desire of companies that wish to develop this kind of activities. The notoriety of such domain names, together with the feeling of luxury that it evokes in the mind of the average consumer, gives it a considerable commercial value.
All these elements, together with the fact that the domain names have still not been exploited by the Respondent, by developing a web site at these addresses, leads one to strongly believe that the Respondent is waiting to receive a purchase offer from a third party, that could be the Complainant.
However, if the Respondent really intends to use the "montecarlo-casino.net" and "montecarlo-casino.org" domain names by developing a web site at these addresses, and given the strong notoriety of the Complainant's mark, as well as the fact that the Complainant has a monopoly for casino and gaming industries in Monte-Carlo, the Complainant finds that by registering and then using the domain names, the Respondent would intentionally attempt to attract, for commercial gain, Internet users to his web sites, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's web sites. Pursuant to paragraph 4 (b) (iv) of the ICANN Policy, such circumstances may be taken as evidence of bad faith.
Furthermore, the Domain names are so obviously connected with the Complainant and its products that their very use by someone with no connection with the Complainant suggests opportunistic bad faith…"
Respondent has not submitted a response to these allegations.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the domain names registered by the Respondent are 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 names; and
(iii) That the domain names have been registered and used in bad faith.
A Similarity of the Domain Names and Trademark.
Complainant has established its rights in the trademark "Casino de Monte-Carlo" registered in 1996 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. Rather, the Complainant refers to "Casino de Monte-Carlo" as a "worldmark" without offering any explanation of the term itself.
In particular, the Complainant has not registered the trademark "Casino de Monte-Carlo" in the United States.
With respect to notoriety, the Complainant has failed to submit any evidence.
In a previous case involving the same Complainant, the panelist accepted 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 failed to explain the fact that, apparently, it has not registered the trademark "Casino de Monte-Carlo" elsewhere than in Monaco and that even that registration was very recent: see Sociйtй des Bains de Mer v. Worldnet Companies Inc., Case No. D2000-1321 (WIPO, November 30, 2000).
Therefore, there is a lack of evidence in this case of "the strong notoriety of the Complainant's mark" as alleged by the Complainant. However, the panelist is satisfied that the Casino de Monte-Carlo is well known and associated with the Complainant and that the association is strengthened by the fact that the casino has been in operation for well over a century.
Given that the Respondent appears to be located in the United States, the absence of a U.S. trademark raises the issue of whether the Complainant must also have a trademark or service mark in the United States in order to meet the requirements under paragraph 4(a)(i) of the Policy.
It appears that a trademark registered in a single country is sufficient to meet the requirements of paragraph 4(a)(i) of the Policy: see 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 (WIPO, November 30, 2000) and Universal Studios, Inc. v. Antonio Paez, Case No. D2000-0569 (WIPO, August 17, 2000). However, the scope of the trademark is related to the issue of bad faith under paragraph 4(a)(iii) of the Policy.
With respect to confusion, the panelist does not accept the Complainant's allegation that: "These domain names are, beyond any doubt, identical to the Complainant's prior trademark "Casino de Monte-Carlo…" However, the panelist does accept that <montecarlo-casino.net> and <montecarlo-casino.org> are confusingly similar to Complainant’s trademark for consumers. The changing of the order of the words "Casino" and "Monte-Carlo", the replacement of "de" by a hyphen and the addition of the gTLDs ".net" or ".org" are not sufficient to avoid confusion: see La Sociйtй Anoyme Des Bains De Mer Et Du Cercle Des Etrangers A Monaco v. Gest Trading S.R.L., Case No. D 2000-1320 (WIPO, November 30, 2000), Sociйtй de Bains de Mer et du Cercle des Etrangers а Monaco limited v Piranha Interactive Ltd, Case No. D 2000-1333 (WIPO, December 18, 2000), Sociйtй des Bains de Mer et du Cercle des Etrangers а Monaco v. Intergroweb (Bahamas) Ltd., Case No. D 2000-1325 (WIPO, December 11, 2000), Sociйtй des Bains de Mer et du Cercle des Etrangers de Monaco limited v International Lotteries, Case No. D 2000-1326 (WIPO, January 8, 2001) and CBS Broadcasting Inc. v. Worldwide Webs, Inc., Case No. D2000-0834 (WIOP September 4, 2000). Moreover, "montecarlo-casino" is a reasonable translation into English of the trademark Casino de Monte-Carlo.
Therefore, the Complainant has satisfied the first requirement.
B Respondent's Rights and Legitimate Interests.
Respondent registered the domain names in October 1998 and they are still not in use.
The Complainant has not licensed or otherwise authorized the Respondent to use its trademark or to apply for any domain name incorporating the trademark. Therefore prior to any notice of this dispute, the Respondent had not used the domain names in connection with any bona fide offering of goods or services within the meaning of Paragraph 4 (c) (i) of the Policy.
Nor is there any evidence that the Respondent is commonly known by the domain names or is making a legitimate noncommercial or fair use of the domain names within the meaning of Paragraph 4 (c) (ii) or (iii) of the Policy.
By not submitting a response, the Respondent has failed to demonstrate, pursuant to paragraph 4(c) of the Policy, that it has rights or a legitimate interest in the domain names. Given the fact that the Casino de Monte Carlo is well known, in the circumstances of this case, the Respondent has a burden to show that it has rights and legitimate interests in the domain names. The burden may be lesser where, as here, the trademark is limited, but nevertheless it exists.
Therefore, this panelist concludes that the Respondent has no rights or legitimate interests in the domain names.
C Bad Faith Registration and Use.
The main issue of this case is whether the Complainant has demonstrated that the Respondent has registered and is using the domain names in bad faith.
Cases with respect to this issue have been decided both for and against the Complainant with respect to the trademark in issue. Transfer of the domain name was ordered in 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 (WIPO, November 30, 2000); Sociйtй des Bains de Mer v. Worldnet Companies Inc., Case No. D 2000-1321 (WIPO, November 30, 2000) (decided by this panelist) and Sociйtй Des Bains De Mer Et Du Cercle Des Etrangers A Monaco v. Global Productions –Domain for Sale, Case No. D 2000-1332 (WIPO, December 13, 2000). Transfer of the domain name was not ordered in La Sociйtй des Bains de Mer et du Cercle des Etrangers а Monaco v. Martimi Bt, Case No. D 2000-1318 (WIPO, December 14, 2000).
The facts of the latter decision are quite special in three respects. First, the issue in that decision was the registration of the domain name "casino-monaco.com". There was no reference to "monte-carlo". Second, the Respondent did in fact respond. Third, and most importantly, in the response, it appears that the Respondent demonstrated that it registered domain names using the word "casino" with various geographic names, including Monaco and the panelist found that "this pattern of conduct in registering the domain names shows that the Respondent registered the Domain Name independently of Complainant's trademark." (Decision, p. 4)
As a general matter, a Respondent may by his own choise decide not to respond to a complaint. However, in the circumstances of this case, the absence of a response is noteworthy.
Unlike in Case D 2000-1318, the Respondent did not simply pick a geographical name for the domain names. It chose two domain names that refer specifically to "casino" and "monte-carlo". Therefore, in the absence of a response, the panelist draws the inference that the Respondent must have considered the value of registering domain names with an association with the long-existing activities of the Casino de Monte Carlo reflected in the Complainant's 1996 trademark.
In addition, the Respondent has held the domain names for over two years and yet does not appear to have established any active web site with the domain names in issue. Nor has the Respondent adduced any evidence that he is preparing to use the domain names. This inaction has been found to be evidence of bad faith as to registration and use of a domain name in various circumstances: see Telstra Corp. v. Nuclear Marshmallows, Case No. D2000-0003 (WIPO, Feb. 18, 2000), Metabolife International v. Robert Williams, Case No. D2000-0630 (WIPO, Sept. 5, 2000) and 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 (WIPO, November 30, 2000).
The panelist notes that the Telstra decision in particular refers to five circumstances that led the panelist in that case to infer bad faith and that two of these circumstances, concealing of its identify and providing false contact details, do not appear to be present in this case. However, there are two circumstances that are relevant in this case.
First, the panelist agrees with Case D 2000-1320 that when registering the domain names, "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". (Decision, p. 4) As the Complainant has pointed out, there are a number of gambling sites on the internet and the natural inference is that these domain names were chosen to associate them with the casino operated by the Complainant.
Second, the Telstra decision was rendered on February 18, 2000. Since then a great number of decisions have been rendered, including decisions with respect to the Casino de Monte Carlo. They show the importance of filing a response when a Complainant establishes that it has a trademark (or a long-standing activity) and the Respondent has registered a domain name that is the same as or clearly confusingly similar to the trademark (or the name for that activity). Despite that fact, the Respondent has failed to respond. In the circumstances, the panelist finds that one can infer bad faith from registration and holding the domain names as in Teledesic LLC v. McDougal Design, Case No. D 2000-0620 (WIPO September 1, 2000).
The panelist therefore concludes that the domain names have been registered and are being used in bad faith.
For the foregoing reasons, the Panel holds:
(a) that the domain names <montecarlo-casino.net> and <montecarlo-casino.org> are 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 names; and
(c) that the Respondent registered and has used the domain names in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the domain names <montecarlo-casino.net> and <montecarlo-casino.org> should be transferred to the Complainant.
Thomas H. Webster
Dated: January 25, 2001