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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. I. Bancorp Europe et al.
ADMINISTRATIVE PANEL DECISION
Case No. D2000-1323
1. The Parties
The complainant is Sociйtй des Bains de Mer et du Cercle des Etrangers а Monaco limited (Sociйtй des Bains de Mer), Place du Casino, Monte Carlo, MC 98000 Monaco, Principautй de Monaco.
The respondent is I. Bancorp Europe, also named as I.B.LLC, I. Bancorp, montecarlo-casino, monte-carlo-casino, casinosmontecarlo, e-montecarlocasino, domiciled at 2 old Brompton Road, London, SW7 3DQ, Great Britain.
2. The Domain Names and Registrar
The domain names in issue are:
The registrar is: Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the complaint on October 4, 2000. The Center’s request for Registrar verification was sent on October 10, 2000. The answer was received on October 29, 2000. The Center issued the notification of complaint on October 31, 2000. The Center received the response on November 19, 2000.
4. Factual Background
A. The Trademark
The complaint is based on the trademark Casino de Monte-Carlo. The complainant is the owner of the following registered trademark:
Monaco trademark N° 96.17407: Casino de Monte-Carlo, registered in 1996 covering goods and services in classes 3, 9, 12, 14, 16, 18, 28, 34, 35, 38, 39, 41 and 42.
B. The Complaint
The grounds for the complaint are:
- That the Casino de Monte-Carlo is a renowned trademark as the Principautй de Monaco is inter-alia known worldwide for its casino.
- That the domain names are identical or confusingly similar to the complainant’s trademark as they almost completely reproduce the complainant’s trademark.
- That the respondent has no rights or legitimate interests in respect of those domain names.
- That the domain names should be considered as having been registered and used in bad faith by the respondent. This should be so as, given the strong notoriety of the complainant’s mark and the ease for any Internet user to assess whether or not a registration or 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 complainant’s rights.
- That by using the domain name for a site directly related to the gaming industry the respondent is attempting to attract Internet users to his website for commercial gain, through the creation of a likelihood of confusion as to the source or affiliation of the site to the complainant and that the domain name is so obviously connected to the complainant and its products that the use by someone with no connection with the complainant suggests opportunistic bad faith.
- That the respondent is trying to create confusion with the complainant’s mark and institution as to the affiliation of the respondent’s website. In particular, the respondent has included in his website a picture of the inside of the Casino de Monte-Carlo and the following assertion: " we are the only internet company to have the double gaming license from Casino Monte-Carlo and from Las Vegas Casino".
- Finally that, although the respondent did not directly contact the complainant in order to sell him those domain names, those domain names are for sale in a website specialized in the selling of domain names related to the gambling industry.
C. The Respondent
In its response, the respondent states:
- That the complainant has no world mark and no trademark outside Monaco, which is a very small country.
- That the complainant has not been policing his mark and that therefore it is to be considered that the complainant has abandoned his mark or that the strength of said trademark is diminished, as if there are numerous goods in the market place bearing the alleged mark, purchasers may learn to ignore the "mark" as a source of identification.
- That the term Monte-Carlo is used as a generic connotation of luxury and high living and has been diluted by continual use in commerce by third parties.
- That the respondent operates online gaming websites, which is a business in which the complainant is not engaged. The complainant operates a hotel and casino business that is to be considered as a business altogether distinct from respondent’s.
- That respondent has acquired legitimate rights and interests in the domain names through the operation of a Panamanian company and a Netherlands Antilles company.
- That the complainant already has an online presence through the domain names monte-carlo-gambling.com, montecarloresort.com amongst others and that the respondent’s behavior in no way prevents the owner of a trademark from reflecting the mark in a corresponding domain name.
- That the photograph on the website montecarlocasino.net does not depict the complainant’s casino but is a photograph of the interior of the Palais du grand-duc Vladimir Alexandrovich. The license statement is absolutely accurate, as the respondent does in fact have licenses from its Panamanian company and Netherlands Antilles company.
5. Discussion and Findings
A. Identical or Confusingly Similar Domain Names
The terms Monte-Carlo are identically used in all the domain names and the term casino is identically used as well in all the domain names. The domain names are all almost exact translations of the complainant’s trademark.
The addition of letter "e" in domain name 6 at the beginning does not suppress a strong similarity with the complainant’s trademark, as "e" is commonly used and understood by all internet users as a designation for products and services connected to this mean of communication.
B. Rights or Legitimate Interests of Respondent
The panel must make here a general statement. Any rights or legitimate interests in the terms Monte-Carlo, Monaco and Casino are to be examined in respect of those terms used together and not independently. The panel will not examine the protection to be granted to the terms Monte-Carlo alone. Furthermore, the complainant’s trademark protects the combination of Casino and Monte-Carlo together, and not these terms isolated. Therefore respondent’s effort to stress that there exist many other marks using the terms Monte-Carlo and that complainant has not started administrative or judiciary proceedings against them is irrelevant as those marks refer to Monte-Carlo and not to Casino de Monte-Carlo. The respondent also points out that there exists a Las Vegas based "Monte-Carlo Resort and Casino" and a Monte Carlo Casino in Milwaukee. The panel deems that it cannot rely on those isolated facts as having stopped the complainant to proceed against respondent in the present case, for the abandonment of mark is the result of a willing and constant behavior during some years. However the complainant’s failure to police its mark against the Las Vegas-based Monte Carlo Resort and Casino and the Monte Carlo Casino in Milwaukee cannot be held against him, as it does not amount to a willful and constant behavior because any litigation in the U.S.A. might have been unsuccessful in view of the well known reluctance of the American legal system to protect geographical denominations.
The respondent claims that the complainant has no world mark and no trademark outside Monaco, which is a very small country. Article 16.2 of the TRIPs agreement states: "Article 6 bis of the Paris Convention (1967) shall apply mutatis mutandis to services. In determining whether a trademark is well known members shall take into account the knowledge of the trademark in the relevant sector of the public, including knowledge in the member concerned which has been obtained as a result of the promotion of the trademark." In the light of this article it can only be considered that the Casino de Monte-Carlo trademark is well known over the world and is protected as such. It is also important to note that the size of a country of origin is not to be considered as relevant, and particularly so in matters regarding Internet and domain names.
The respondent also adds that the complainant has initiated ICANN proceedings against almost every domain name incorporating the terms Monte-Carlo, but that it has not started such a proceeding against the monte-carlo.com domain name which hosts the Las Vegas-based Monte Carlo Resort and Casino. The panel deems it irrelevant in the light of the above reasoning, as the monte-carlo.com domain name is very different from the litigious domain names since it only uses the terms Monte-Carlo, whether the domain names registered by respondent all use those terms in conjunction with terms associated with the term casino. Most important also is the fact that the panel does not rule on third parties right or wrongful behavior.
The respondent claims that the term Monte-Carlo is used as a generic connotation of luxury and high living and has been diluted by continual use in commerce by third parties. The panel deems this to be also irrelevant as it refers to Monte-Carlo generally and not to Casino de Monte-Carlo.
The respondent claims that it has acquired rights or legitimate interests to the domain name through commercial use of the domains. Yet when buying the domain name, the respondent must have been aware of the possibility that the claimant would file administrative or judiciary proceedings for cyber squatting. This is so amongst other things, as given the strong reputation of the complainant’s mark, the respondent could not ignore that such a registration was made in fraud of the complainant’s rights. Furthermore, the claims that respondent derives from the very recent incorporation of its Panama and Dutch-Antilles corporations cannot be recognized, for it is well known that many such corporations are often devoid of any important assets and are used as tax vehicles and/or offshore activities not covered by legal protection in the jurisdictions they precisely intend to avoid, even when they are lawfully organized under the corresponding offshore laws. Therefore the panel cannot find any legitimate right or interest in favor of the respondent.
C. Domain Names Registered and Used In Bad Faith
The respondent points out that the photograph on the website montecarlocasino.net does not depict the complainant’s casino but is a photograph of the interior of the Palais du grand-duc Vladimir Alexandrovich. If the complainant itself was confused by the photography and was led to believe that it was a photograph of its own resort, then most Internet users would probably be similarly falsely led to believe that it is indeed a photograph of the interior of the Casino de Monte-Carlo. The respondent also states that the license statement on its website is absolutely accurate, as the respondent does in fact have State licenses for its Panamanian company and Netherlands Antilles company. However this statement refers to those companies in such a way that anyone would be led to believe that it refers in fact to the Las Vegas-based Monte Carlo Casino and the complainant Casino de Monte-Carlo. Therefore the complainant is right to claim that respondent created a likelihood of confusion as to the affiliation of this site with its institution and trademark.
The respondent claims that the domain names are used in connection with an online gaming business rather than an actual casino and that the complainant does not provide online gaming/casino services. The respondent fails to see that a website is in itself an actual undertaking. The distribution of goods or services through the Internet is similar to the distribution of the same goods or services through other means. In particular it cannot be considered so different that it should be deemed a different branch of the industry or a different market in terms of unfair competition law.
The respondent claims that there is no risk of consumers’ confusion as complainant already has an online presence: casino-monte-carlo.mc and that therefore the consumers are able to distinguish between the complainant and the respondent online presence. Nonetheless, it is highly unlikely that the average Internet user would be able to distinguish two similar lower domain names by their generic/country code top level domain.
Finally the panel notes that to the extent that Claude Levy’s (an officer of respondent) deposition is to be taken into account when saying that the sole purpose of putting the domain names for sale was to get an evaluation of one of the respondent’s assets, this purpose was not apparent to third parties who could actually bid for those domain names. It is therefore not excluded that the respondent could derive a benefit from the misappropriation of the claimant’s trade name. Indeed each Internet user could buy from the site "supernames.com" all the domain names except domain name 1 .montecarlocasino.net. It is also important to note that the respondents in this case and in other cases appear to actually belong to the same entity. In fact the address is the same, they are affiliated with the same companies and their Director, Treasurer and Secretary is the same person, namely Claude Levy. This entity is respondent in other ICANN proceedings (notably in case D-2000-1315; D-2000-1327; [also case D-2000-1328 and D-2000-1326, although here respondent appears at different addresses]) in respect of domain names referring to the Casino de Monte-Carlo. The litigious domain names in those proceedings were also for sale at supernames.com. Thus, there appears to be a pattern of behavior of respondent in registering and selling domain names referring to complainant’s trademark. Further respondent claims that the selling of sites is part of its business operations, which consist of acquiring domain names, launching sites and then selling them; yet only two of the litigious domain names in this case were actually used to launch an active website.
The panel decides that the domain names are confusingly similar to the complainant’s trademark, that the respondent has no rights or legitimate interests in respect of the domain names and that the domain names were registered and are being used in bad faith.
Accordingly, the panel decides that the registration of the domain names:
be transferred to the complainant.
Dated: January 8, 2001