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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sociйtй des Bains de Mer et du Cercle des Etrangers de Monaco limited v International Lotteries
Case No. D-2000-1326
1. The Parties
The Complainant is Sociйtй des Bains Mer et du Cercle des Etrangers de Monaco limited (Sociйtй des Bains de Mer), Place du Casino, Monte Carlo, MC 98000 Monaco, Principautй de Monaco.
The Respondent is International Lotteries, 3511 Silverside road, suite 105, Wilmington, DE 19810, USA.
2. The Domain Names and Registrar
The domain names in issue are <casinomontecarlo.com> and <montecarlocasinos.com>.
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 13, 2000. The answer was received on October 17, 2000. The Center issued the Notification of Complaint on October 23, 2000. The Center received a request for extension of deadline on November 2, 2000 and the Response was received 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 No 96.17407: Casino de Monte-Carlo, registered in 1996 covering products 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.
- That the Respondent has no rights or legitimate interests in these 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 a third patries’rights, the Respondent could not ignore that such a registration was made in fraud of the Complainantнs rights.
- That, although the Respondent did not directly contact the Complainant in order to sell it these domain names, one of these domain name is for sale on a website specialized in the selling of domain names related to the gambling industry.
- Finally that the domain names are so obviously connected to the Complainant and its products that the use by someone with no connection with the Complainant suggests opportunistic bad faith and 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 websites a picture 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".
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 its mark and that therefore it is to be considered that the Complainant has abandoned its mark or that the strength of said trademark is diminished, for when there are numerous products 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 different from Respondent’s.
- That Respondent has acquired rights and legitimate 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 thus, the Respondent’s behavior in no way prevents the owner of a trademark from reflecting the mark in a corresponding domain name.
- That the photographs on both websites do not depict the Complainant’s casino but are original work of design by Respondent’s artists. 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 Name
The terms Monte-Carlo are identically used in both of the domain names at issue, as is the term Casino. The domain names are both almost exact translations of the Complainant’s trademark. Therefore the domain names are identical or confusingly similar to the Comnplainant’s trademark.
B. Rights or Legitimate Interests of Respondent
The panel notes that any rights or legitimate interests in the terms Monte-Carlo, Monaco and Casino are to be examined in respect with these terms used together and not independently. The panel will not examine the protection to be granted to the terms Monte-Carlo alone. The terms Casino and Monte-Carlo, i.e. Casino de Monte-Carlo, are protected.
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 provision 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 claims that the Complainant has not been policing his mark and that therefore it is to be considered that the Complainant has abandoned its mark. The Respondent points out that there exist an important number of marks using the terms Monte-Carlo; for example, General Motors and Lancia both sold a Monte Carlo model amongst numerous other ones. The panel deems this to be irrelevant as it refers to Monte-Carlo and not to Casino de Monte-Carlo.
The Respondent stresses in particular that the Complainant permitted the Las Vegas-based Monte Carlo Resort and Casino to operate under this name with impunity. The panel deems that it cannot rely on this isolated fact as having stopped the Complainant from proceeding against Respondent in the present case, for the abandonment of a 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 cannot be held against it, as it does not amount to a wilful and constant behavior.
The Respondent also 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 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 names through commercial use of the domains. Yet when registering the domain names, the Respondent must have been aware of the possibility that the Complainant would file proceedings for cybersquatting. This is so among 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 for offshore activities not afforded of legal protection in the jurisdictions they precisely purport to avoid, even when they are lawfully organized under the corresponding offshore laws. Therefore the panel cannot find any right or legitimate interest in favor of the Respondent.
C. Domain Name Registered and Used In Bad Faith
The Respondent points out that the photographs on both websites do not depict the Complainant’s casino but are original work of design by Respondent’s artists. If the Complainant itself was confused by the photograph and was led to believe that they were photographs of its own resort, then most Internet users would probably be similarly falsely led to believe that they are indeed photographs of the Casino de Monte-Carlo. Further the panel notes that one of the so called work of design at montecarlocasino.com is an almost exact reproduction of the Casino de Monte-Carlo building and that the similarity between the two would confuse any Internet user. The Respondent also mentions that the license statement on its website is absolutely accurate, as the Respondent does in fact have licenses from its Panamanian company and Netherlands Antilles company. Nevertheless, 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 the 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 ignores 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 industry or a different market in terms of unfair competition law.
The Respondent claims that there is no risk of consumer confusion as Complainant already has an online presence: <casino-monte-carlo.mc> and that therefore the consumers are able to distinguish between the Complainant’s and the Respondent’s online presence. Nonetheless, it is highly unlikely that the average Internet user would be able to distinguish two similar second level domain names by their generic 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 name <montecarlocasinos.com> 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 this domain name. It is therefore not excluded that the Respondent could derive a benefit from the misappropriation of the Complainant’s trade name. Indeed each Internet user could have bought the domain name <montecarlocasinos.com> from the site supernames.com. 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 it is affiliated with the same company and its 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- 1323 ; D-2000-1327 and D-2000-1328) 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. Therefore, there appears to be a pattern of behavior of Respondent in registering sites referring to Complainant’s trademark and selling them.
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 requires that the registration of the domain names <casinomontecarlo.com> and <montecarlocasinos.com> be transferred to the Complainant.
January 8, 2001.