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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sociйtй Des Bains De Mer Et Du Cercle Des Etrangers A Monaco V. Global Productions - Domain For Sale
Case No. D2000-1332
1. The Parties
The Complainant is Sociйtй des Bains de Mer et du Cercle des Etrangers а Monaco, of
Place du Casino, Monte Carlo, MC 98000 Monaco, Principautй de Monaco.
The Respondent is Global Productions - Domain For Sale, of 777 E. Tahquitz Cyn
Suite 200 Palm Springs, CA, 92262 United States of America.
2. The Domain Name and Registrar
The Domain Name at issue [hereinafter the Domain Name] is: monacogambling.com.
The registrar of the Domain Name is Tucows.com Inc., 96 Mowat Avenue Toronto, Ontario M6K 3M1, Canada.
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. Receipt of said Complaint being acknowledged by the Center in a letter to the Complainant dated October 9th, 2000. In a letter dated October 11, 2000 the Center informed the registrar, Tucows.com 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 13, 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 17, 2000.
In a letter dated October 17, 2000 the Center informed the Respondent of the commencement of the proceedings as of October 17, 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 proceedings.
On November 7, 2000 the Center received a response [hereinafter the Response] from the Respondent within the 20 day limit as provided for by the Center. On November 8, 2000, the Center received corrections to the Response, which were accepted. On November 8, 2000 the Center acknowledged receipt of the Response to the Respondent and the Complainant [hereinafter referred to collectively as the Parties]. On November 23, 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 parties and the Center and 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 6, 2000, in the English language and is unaware of any other proceedings, 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 Palm Springs, California.
As shown by the evidence, the Respondent registered the Domain Name, which consisted of "monacogambling.com" on or about May 12, 2000. The Domain Name does not direct to a web site or other on-line presence despite having been registered over six months ago. The Domain Name "monacogambling.com" 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 in August 13, 1996, to 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 computers », by «Telecommunications», and by 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 it otherwise obtained any authorisation to use the Complainant’s marks or apply for any Domain Names incorporating any of these marks.
5. Parties’ Contentions
The Complainant maintains that the Respondent is a cyber squatter. The Domain Name is not directed to a web site or other on-line presence despite having been registered over 6 months ago. The Domain Name "monacogambling.com " 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 confusingly similar to the Complainant’s "Casino de Monte Carlo" trademark. The Complainant believes that the substitution of the term of the trademark, "Monte-Carlo", by the term "Monaco" in the Domain Name, does not suppress the 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, these two are synonyms.
The substitution of "casino" by "gambling" in the Respondent's Domain Name does not erase the strong similarity that exists with the Complainant's trademark, as "gambling" directly refers to the casino and gaming industries. When it is associated with "Monaco", it necessarily induces, for the public, 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.
Further on in the Complaint, the Complainant alleges the lack of any legitimate rights on the part of the Respondent to use the Domain Name. In searching world-wide for signs that contain the terms "gambling" and "monaco" on the Compumark database, it appears that the Respondent does not own or use any trademark concerning these signs, in any country world-wide.
The Complainant alleges that, the Respondent has no Intellectual or Commercial Property rights over the "monacogambling" name.
The Complainant alleges the lack of legitimacy by stating that the Respondent has not used the Domain Name "monacogambling.com", by either developing a web site at this address or otherwise.
The Complainant alleges that the registration and use of the Respondent’s 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 Name was made in fraud of the Complainant’s rights.
The Complainant continues to allege bad faith by stating that although the Respondent did not contact the Complainant in order to sell it the "monacogambling.com" Domain Name, it is very likely that the registration of such a Domain Name, by a company whose name includes the mention "Domain For Sale", was made primarily for the purpose of selling the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Domain Name registrant's out-of-pocket costs directly related to the Domain Name.
The Complainant is of the opinion that 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" (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).
In its Response, the Respondent maintains that there is no similarity between the Domain Name and the Complainant’s trademark because of the fact that the Domain Name of the Respondent does not contain any of the same words as the Complainant's trademark. The Complainant's trademark does not have the words "Monaco" or "gambling" in it and thus, the Complainant has no rights at all to the Domain Name "monacogambling.com".
The Respondent alleges his legitimate interests by stating that it is the registered owner of the Domain Name and is using it currently. The Respondent adds that it has incurred numerous expenses to register the Domain Name and designing a web site, that no other trademarks exist under this name and that it was the first to register the Domain Name.
The Respondent goes on to allege the fact that it was and is not acting in bad faith by stating that the Respondent has never contacted the Complainant to try to sell the name, and that the Complaint is totally devoid of any evidence of bad faith.
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 it has rights;
ii) that the Respondent has no legitimate rights or interests in the Domain Name and
iii) that the Domain Name was registered and is being used in bad faith.
After having reviewed both parties’ allegations as well as all the evidence provided therewith, the Panel considers 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 for the Principautй de Monaco prior to the registration of the Domain Name by the Respondent. While it is not identical to the Domain Name, this registered trademark is similar if only by the ideas suggested by it, to the Domain Name "monacogambling.com", registered by the Respondent. The Panel is of the opinion that the registered words "Monaco" and "Gambling" 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 "gambling") 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 organizing games and gambling through the Casino in Monaco as well as managing the Casino of Monte-Carlo since 1863 (as alleged by the Complainant). The Complainant provided evidence to the effect that it has the exclusive right in exploiting the aforementioned activities, in Monaco. This notoriety creates a strong affinity between the Complainant and the Domain Name, applying the test above which would render likely confusion to arise in the public mind as to who is affiliated to the 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; (iii) the degree of resemblance between the trademark and the Domain Name in appearance and sound or what is suggested by them.
The Panel, upon reviewing the Respondent’s Response, is of the opinion that other than denying that the Domain Name is identical or similar to the Complainant’s trademark, there has been no evidence offered by the Respondent to establish the contrary. In view of the above, the Panel concludes that the Complainant has met the 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 addresses the question 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 Respondent has alleged that it is the registered owner of the Domain Name, that it was the first entity to appropriate the Domain Name, that it has incurred numerous expenses related to it, and that it is using the Domain Name. The Respondent has not produced any evidence to support its claim that it was using the Domain Name in any legitimate manner. Notwithstanding the fact that no evidence was produced to account for any expenses, the Panel is of the opinion that the sole fact that the Respondent incurred expenses does not infer a legitimate right or interest to the Respondent. The Respondent’s argument that the "first one to register the Domain Name has automatic rights" has never been judged to be a valid justification to demonstrate legitimate use of a domain name. If that argument was to be considered valid every respondent involved in these administrative proceedings, having obviously registered the domain name before the complainant, would automatically be allowed to maintain property over its domain name. This would essentially render all administrative proceedings pointless and thus the Panel considers that this point is moot.
The Panel is of the opinion that the Complainant has discharged its burden to demonstrate that the Respondent had no legitimate right and 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 shown that it has commonly been known by the Domain Name nor has it shown a legitimate non-commercial or fair use of the Domain Name.
Pursuant to paragraph 4(a)(iii) of the ICANN Policy it is incumbent on 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 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.
Notwithstanding the fact that the Respondent has not yet constructed a web site for the Domain Name, the Panel is of the opinion that the present case is an illustration of the example of the kind of bad faith which the ICANN policy addresses at paragraph 4(b)(iv).
It is quite obvious that the only intent of the Respondent was an attempt to appropriate the goodwill of the Complainant and to cause confusion amongst anyone who learned of the Domain Name into believing that this Domain Name, its proprietor or any web site were associated with the Complainant, and to redirect traffic intended for the Complainant for its own purposes.
The Panel is also of the opinion that the passive holding of the Domain Name since its registration in question as well as the lack of evidence provided by the Respondent to demonstrate the good faith registration or usage of the Domain Name, infer bad faith. (See Telstra Corporation v. Nuclear Marshmallows, Case No. D2000-0003). The Panel is of the opinion that due to the suspicious nature of the Respondent’s name (Global Productions - Domain For Sale) the Respondent may in fact not be dealing with a domain name, but is rather dealing in the business of selling domain names and hence bad faith may be inferred pursuant to the 4(a)(iii) of the ICANN policy.
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 and accordingly orders:
- 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
- that 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 orders that the registration of the Domain Name monacogambling.com be transferred to the Complainant by the Registrar, Tucows.com.
Jacques A. Lйger, Q.C.
Dated: December 13, 2000