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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. Casino on-line
Case No. D2000-1329
1. The Parties
Complainant is the S.A. La Sociйtй Des Bains de Mer et Du Cercle Des Etrangers а Monaco, having its registered office at Place du Casino, Monte Carlo, MC 98000 Monaco, Principautй de Monaco.
2. The Domain Name and Registrar
The Domain Name at issue (hereinafter the Domain Name) is:
The registrar of the Domain Name is Network Solutions Inc., 505 Huntmar Park Drive,
Herndon, Virginia, 20170 USA.
3. Procedural History
On October 4, 2000 Complainant filed a Complaint via e-mail (hereinafter the Complaint) with the WIPO Arbitration and Mediation Center (hereinafter the Center). The Center received the hardcopy of the Complaint on October 5, 2000. The Center acknowledged receipt of Complaint in a letter to the Complainant dated October 4, 2000. In a letter dated October 13, 2000 the Center informed the Registrar, Network Solutions Inc., that the Complaint had been submitted to the Center regarding the Domain Name, and asked for a verification of the registrant information. The said verification results from the Registrar were received on October 17, 2000.
The Center then proceeded to verify that the Complaint satisfied the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the ICANN Rules and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the WIPO Rules), including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative on October 24, 2000.
In a letter dated October 24, 2000 the Center informed the Respondent of the commencement of the proceeding as of October 24, 2000 and of the necessity of responding to the Complaint within 20 days. Evidence provided by the Center supports the finding that the Center acted diligently in its attempts to inform the Respondent of the proceeding.
In a letter sent November 14, 2000 the Center informed the Respondent that it was in default pursuant to the ICANN Rules and the WIPO Rules and that an administrative panel would be appointed based on the number of panelists designated by the Complainant.
On November 28, 2000 the Center also informed the Parties that an administrative panel would be appointed. The Panel believes it was constituted in compliance with the ICANN Rules and the WIPO Rules and has also issued a Statement of Acceptance and Declaration of Impartiality and Independence.
The Panel has reviewed the documentary evidence provided by the Complainant and the Panel agrees with the Center’s assessment that the Complaint complies with the formal requirements of the ICANN Rules and the WIPO Rules.
The Panel has received no further submissions from either party since its formation.
The Panel is obliged to issue a decision on or prior to December 11, 2000 in the English language and is unaware of any other proceeding, which may have been undertaken by the parties or others in the present matter.
4. Factual Background
The Complainant is a limited liability company, incorporated April 1, 1963 enrolled with the registry of companies under number 56 S 00523. The Complainant is the founder and manager of the Casino of Monte-Carlo, and has the monopoly for casino and gaming industries for the territory of the Principautй de Monaco.
No information has been supplied regarding the attributes and businesses of the Respondent although it appears that the Respondent maintains offices in San Francisco, California USA.
As shown by the evidence, the Respondent registered the Domain Name, "monacocasino.com" on or about December 6, 1995. This Domain Name does not direct to a web site or other on-line presence despite having been registered over five years ago. The Domain Name when entered into an Internet search engine does not produce any web site or holding page.
The Complainant is the owner of the trademark "Casino de Monte-Carlo", filed on August 13, 1996 at the Monaco Trademark Office, covering many different products and services. The Complainant's trademark covers products and services in the field of computers and telecommunications, i.e., Internet communication services, labelled as «equipment for data processing and computer », as «Telecommunications», and as services of «computer programming».
There is no relationship between the Respondent and the Complainant. The Respondent is not a Licensee of the Complainant nor has he otherwise obtained any authorisation to use the Complainant’s marks or apply for any Domain Name incorporating any of these marks.
5. Parties’ Contentions
The Complainant maintains that the Respondent is a cybersquatter. The Domain Name does not direct to a web site or other on-line presence despite having been registered over 5 years ago. The Domain Name when entered into an Internet search engine does not produce any web site or holding page.
The Complainant continues by alleging that the Domain Name is practically identical and confusingly similar to the Complainant’s Casino de Monte Carlo trademark.
The Complainant alleges that the "Casino" part of the Domain Name is identical to the first term in its trademark, Casino de Monte-Carlo.
The Complainant alleges that the "Monaco" part of the Domain Name is confusingly similar to the third term of its trademark, Casino de Monte-Carlo. The Complainant believes that the substitution of the term of the trademark, "Monte-Carlo", by the term "Monaco" in the Domain Name "casino-of-monaco.com", does not suppress this strong similarity between the two terms, as it is very common to use one or the other term indifferently to designate the Principautй and thus, are synonyms
The Complainant further alleges that this confusing similarity necessarily induces confusion amongst the public, between the Domain Name and the Casino of Monte-Carlo, over which the Complainant has a monopoly and is consequently the sole company that can organise games and gambling in Monaco.
The Complainant has alleged that in searching worldwide for signs that contain the terms "Casino" and "Monaco", and signs that contain the terms "Casino" and "Monte-Carlo", on the Compumark database, it appears that the Respondent does not own or use any trademark concerning these names, in any country world-wide.
The Complainant alleges that, the Respondent has no intellectual or commercial property rights over the "monacocasino" name or any other similar name.
The Complainant alleges the lack of legitimacy by stating that the Respondent has not used the Domain Name, by either developing a web site at this address or otherwise.
The Complainant alleges that the registration of the Domain Name, given the Complainant’s well known mark, is inherently deceptive and clearly done in bad faith with the intent to create confusion amongst the public.
The Complainant maintains that given the strong notoriety of the Complainant’s trademark, the Respondent could not ignore at the time of registration that the registration of the Domain Names was made in fraud of the Complainant’s rights.
The Complainant continues to allege bad faith (pursuant to paragraph 4 (b) (iv) of the ICANN Policy) by stating that if the Respondent did in fact intend to use the Domain Name by developing a web site at this address, 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 Monaco/Monte-Carlo, the Complainant finds that by registering and then using the Domain Name, the Respondent would intentionally attempt to attract, for commercial gain, Internet users to its 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 sites.
The Complainant is of the opinion that, the Domain Name is so obviously connected with the Complainant and its products or services that its very use by someone with no connection with the Complainant suggests "opportunistic bad faith" (See Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net Case No. D2000-0226, Veuve Cliquot Ponsardin, Maison Fondй en 1772 v. The Polygenic Group Co. Case No. D2000-0163 and Charles Jourdan Holding AG v. AAIM Case No. D2000-0403).
The Respondent has failed to file a timely response with the Center.
6. Discussion and Findings
Pursuant to the Uniform Domain Name Dispute Resolution Policy (hereinafter the ICANN Policy) the Complainant must convince the Panel of three elements if it wishes to have the Domain Name transferred. It is incumbent on the Complainant to show:
i) that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights;
ii) that the Respondent has no rights or legitimate interests in the Domain Name;
iii) that the Domain Name was registered and used in bad faith.
After having reviewed the Complainant’s allegations as well as all the evidence provided therewith, the Panel hereinafter considers each of these three elements below.
Identical or Confusingly Similar to Trademark
The Complainant provided evidence to the effect that it was registered owner of the trademark Casino de Monte-Carlo. In this case it is apparent to the Panel that the Respondent has registered the Domain Name prior to the registration of the Complainant’s trademark Casino de Monte-Carlo. Even if that is the case, the Panel is of the opinion that the fact that the Complainant’s trademark was not registered on a date prior to the Domain Name’s registration does not remove any legitimate rights that the Complainant might have over the Domain Name. Furthermore, it is the Panel’s opinion that even the registration of this trademark was not necessary, since the Domain Name "monacocasino" has sufficient secondary association with Complainant that trademark rights do exist. See Julia Roberts v. Russell Boyd, Case No. D2000-0210. The Policy does not require that the Complainant should have rights in a «registered » trademark. It is sufficient that the Complainant should satisfy the Administrative Panel that it has sufficient rights to ground an action for passing off. See Jeanette Winterson v. Mark Hogarth, Case No. D2000-0235.
It is the Panel’s opinion that the Domain Name registered by the Respondent, while it is not identical to the Complainant’s trademark, is similar to it, if only by the ideas suggested by this Domain Name. The Panel is of the opinion that the registered words "Monaco" and "Casino" are essentially synonyms to the words "Monte-Carlo" and "Casino", which happen to be the principal elements in the Complainant’s Trademark. The Panel, applying its judicial knowledge is of the opinion that even though Monaco is the Principautй and Monte-Carlo is the city within this Principautй, these terms are used interchangeably by the public at large. The words "Monaco" and "Casino" used together create a strong similarity and impression that could easily induce the general public into believing that the Domain Name, the Domain Name proprietor and any web site operated from the Domain Name are associated with the Complainant. Furthermore, in support of this confusing similarity the Panel notes that in the Petit Larousse Illustrй 1982 p. 1532, Monte-Carlo is defined as "quartier de la Principautй de Monaco où se trouve le casino". Further on page 1529 Monaco is defined as "Principautй du littoral de la mйditerranйe: grand centre touristique: casino".
The Panel is also of the opinion that the Complainant has acquired substantial goodwill and reputation in relation to its business activities of organising games and gambling in Monaco as well as managing the Casino of Monte-Carlo since 1863. The Complainant provided evidence to the effect that it has the exclusive right in exploiting the aforementioned activities. This notoriety creates a strong affinity between the Complainant and the Domain Name, which would further confuse the public as to who is affiliated to this Domain Name.
In determining whether a Domain name creates confusion with a trademark, it is the Panel’s opinion that one has to take into account all of the circumstances including inter alia (i) the inherent distinctiveness of said trademark and the extent to which it has become known; (ii) the length of time that the trademark has been in use; (iii) the nature of the service, business or trade with which it is being associated; (iv) the degree of resemblance between the trademark and the Domain Name in appearance and sound or what is suggested by them.
Pursuant to the above mentioned reasons as well as the fact that there has been no explanation or evidence offered by the Respondent to establish the contrary, the Panel is of the opinion that the Complainant has met its burden of proof as established by paragraph 4(a)(i) of the ICANN Policy.
No Rights or Interest
Paragraph 4(a)(ii) of the ICANN Policy inquires as to whether or not the Respondent has any rights or legitimate interests vested in the Domain Name. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (i) use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has commonly been known by the Domain Name; and (iii) legitimate non-commercial or fair use of the Domain Name.
The Panel is of the opinion that there is no evidence to support any finding of a legitimate right or interest in the Domain Name on behalf of the Respondent. The Respondent has not shown use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services, nor has it attempted to show that it has commonly been known by the Domain Name nor has it attempted to show a legitimate non-commercial or fair use of the Domain Name.
Consequently, as in LLS International vs. Mark Freeman, Case No. D2000-1080 and Altavista Company v. Grandtotal Finances Ltd., Case No. D2000-0848, the Panel finds it appropriate in this regard to draw an adverse inference from the Respondent’s failure to reply to the Complaint and detail any legitimate rights or interests it might have had in the Domain Name of the type defined in paragraph 4(c) of the ICANN Policy.
Pursuant to paragraph 4(a)(iii) of the ICANN Policy it is incumbent upon the Complainant to prove that the Respondent has registered and is using the Domain Name in bad faith. Paragraph 4(b) of the ICANN Policy provides a number of non-exhaustive circumstances which, if found to be present, are evidence of the registration and use of a Domain Name in bad faith. In particular, paragraph 4(b)(iv) of the ICANN Policy holds that, if the circumstances indicate that by using the Domain Name the Respondent has intentionally attempted 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 then this is evidence of bad faith registration and use on behalf of the Respondent.
The Panel is of the opinion that the present case is an illustration of the kind of bad faith which the ICANN Policy addresses at paragraph 4(b)(iv).
It is apparent in the absence of any explanation by the Respondent, that the only intent of the Respondent was an attempt to appropriate the goodwill of the Complainant and to cause confusion amongst anyone who became aware of the Domain Name into believing that this Domain Name, its proprietor or any potential web site, were associated with the Complainant, and to redirect traffic intended for the Complainant for his own purposes.
The Respondent has not yet constructed a web site for the Domain Name. The Panel is also of the opinion that the passive holding of the Domain Name since its registration in question, combined with the lack of explanation or evidence provided by the Respondent to demonstrate the good faith registration or usage of this Domain Name, both infer bad faith, pursuant to paragraph 4(a)(iii) of the ICANN Policy, on the part of the Respondent. (See Telstra Corporation v. Nuclear Marshmallows, Case No. D2000-0003)
Furthermore, the Panel is of the opinion that the Domain Name is so obviously connected with the Complainant and its services that its very use by someone with no connection with the Complainant suggests "opportunistic bad faith" (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net Case No. D2000-0226 and Veuve Cliquot Ponsardin, Maison Fondйe en 1772 v. The Polygenix Group Co. Case No. D2000-0163).
Therefore, pursuant to the above mentioned reasons the Panel is of the opinion that the Complainant has met the burden of proof and has proven that the Respondent’s actions have been in bad faith pursuant to paragraphs 4(b)(i) and 4(b)(iv) of the ICANN Policy.
For the foregoing reasons, the Panel finds:
- that the Domain Name registered by the Respondent is confusingly similar to the trademark to which the Complainant has rights;
- that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
- the Domain Name has been registered and is being used by the Respondent in bad faith.
Accordingly, pursuant to paragraph 4(i) of the ICANN Policy, the Panel doth orders that the registration of the Domain Name:
be transferred to the Complainant by the Registrar, Network Solutions Inc.
Jacques A. Lйger, Q.C.
Dated: December 11, 2000