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WIPO Arbitration and Mediation Center
Sociйtй de Bains de Mer et du Cercle des Etrangers а Monaco limited v Piranha Interactive Ltd
ADMINISTRATIVE PANEL DECISION
1. The Parties
The Complainant is Sociйtй de 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 Piranha Interactive Ltd, 53 Kingsway, Stourport, Worcs, DY 13 8NA, United Kingdom.
2. The Domain Name and Registrar
The domain name in issue is <montecarlocasino.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 sent Network Solutions a Request for Registrar verification on October 11, 2000. The Center received the Registrar’s verification response on October 13, 2000. The notification of complaint was issued on October 16, 2000. The respondent’s request for extension of deadline was received on November 2, 2000 and the complainant’s reply to this request was received on November 7, 2000. The response was received on November 14, 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 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 name montecarlocasino.com is identical to the Casino de Monte-Carlo trademark as it almost completely reproduces it.
- That the respondent has no rights or legitimate interest in the domain name, as according to a Compumark database search it has not registered a trademark concerning these signs.
- That the domain name should be considered as having been registered and used in bad faith, as given the strong reputation of the complainant’s mark the complainant could not ignore that such registration was made in fraud of the Sociйtй de Bains de Mer’s right. Furthermore that by using the domain name for a site directly related to the gaming industry the respondent is attempting to attract internet users to its web site for commercial gain, through the creation of a likelihood of confusion as to the source or affiliation of the site to the complainant. Such a likelihood of confusion is evident as the respondent’s website contains a photograph of the Casino de Monte-Carlo and a sentence reading "the style of the resort". Finally that the domain name is so obviously connected to the complainant and its products that its very use by someone with no connection with the complainant suggests opportunistic bad faith.
C. The Respondent
In its response the respondent states :
- That the term "worldmark" is a typographical error in the complaint and that the complainant intended to refer to a "wordmark".
- That the domain name montcarlocasino.com differs from the complainant’s Casino de Monte-Carlo trademark as the "de" and a hyphen do not appear in it and that the order of the words is different.
- That it is not necessary to own a trademark to have rights or legitimate interest in a domain name.
- That the respondent registered the trademark montecarlo.com and montecarlocasino.com on June 5, 2000 with the Tunisian trademark office and that it has a pending actual use trademark application with the Canadian Intellectual Property Office.
- That the respondent has been using the domain name for a legitimate business interest for over a year.
- That the respondent does not attempt to divert internet users to its site for commercial gain by creating a likelihood of confusion with the complainant’s mark, as the casino and on-line gaming industries are separate and distinct and that Monte-Carlo is world famous as gambling center rather than as a specific casino; therefore it is associated with gambling in general.
5. Discussion and Findings
A. Identical or Confusingly Similar Domain Name
The respondent claims that the domain name is different as the "de" and a hyphen do not appear in it and that the order of the words is different. However, this argument ignores that the montecarlocasino.com domain name is one of the exact translations into English of the Casino de Monte-Carlo trademark. Without being identical, it is therefore confusingly similar.
B. Rights or Legitimate Interests of Respondent
The respondent claims that the complainant has no trademark other than in Monaco and that on this basis the Casino de Monte-Carlo trademark cannot be considered as a renowned trademark. 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 light of this article it can only be considered that the Casino de Monte-Carlo trademark is well-known over the world.
The respondent rightly points out that it is not necessary to own a trademark to have rights or legitimate interests in a domain name. Further, the respondent mentions its Tunisian trademark and its pending application for a Canadian trademark. This panel is not empowered to adjudicate conflicting claims on the validity of trademarks embodying geographic denominations and trade names of well-known entities. This is properly to be seen as falling into the jurisdiction of national courts. Besides, the panel is not requested to rule on the validity of the alleged Tunisian mark and Canadian application. The panel rather has to contemplate whether the registration of the domain name in issue conforms to the ICANN policy, especially in view of the cases that have been already adjudicated. In this regard, it is significant that the respondent has not been using the domain name for its own sake, using instead the domain name first to host a site which redirected traffic to Jackpot Palace Casino, then to host an online casino named Queen’s Club Casino. This cannot be termed a legitimate use by the respondent, as it diverts Internet users to its site, which appears to be constitutive of passing off. Moreover when buying the domain name, the respondent must have been aware of the possibility that the claimant would file administrative or judiciary proceedings for cybersquatting. Finally, it is important to note that the respondent registered its Tunisian trademark on June 5, 2000, i.e. well after the registration of the litigious domain name on February 25, 1999 and also after the registration of the complainant’s trademark several years before. At the time of the registration the respondent had absolutely no trademark protection. Therefore the panel cannot find any legitimate right or interest in favor of the respondent.
C. Domain Name Registered and Used In Bad Faith
The respondent claims that the domain name is 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’s point 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 the industry or a different market in terms of unfair competition law.
The respondent claims that the complainant should have no monopoly in the words Monte-Carlo on the web, as it is world famous as a gambling center rather than for a specific casino. The respondent claims that the term Monte-Carlo is used in the same manner that the name Las Vegas is used, i.e. to trigger association with gambling. The panel cannot agree with the respondent. The connotations that are linked with Las Vegas and Monte-Carlo are not similar. Las Vegas was and still is a gambling center in the middle of the Nevada desert. Monte-Carlo is only amongst other things known for its casino. Monte-Carlo and the Principautй of Monaco are first and foremost to be considered as a seaside resort along the Mediterranean Sea. Monaco and Monte-Carlo are associated with its ruling family, its Formula One GP and as a celebrities’ hideout amongst other things, including gambling. What comes to mind upon hearing or reading the terms Monte-Carlo is not necessarily gambling. It is also important to note that any association between the gambling activity and Monte-Carlo comes from the Casino de Monte-Carlo activities as since the start there is but one Casino in Monaco and this monopoly is important in the present case in the opinion of the panel. Therefore, any reputation in regard of gambling can be ascribed to the investments and efforts of the Casino de Monte-Carlo since 136 years.
The respondent claims that most of the traffic on its web site comes from traffic providers and not from visitors who found its site through a search engine, and that therefore the domain name has no disruptive effects on the complainant’s business. However, the source of the traffic is irrelevant if upon reaching a website there still exists a likelihood of confusion for the Internet users as to the true affiliation of the site. This passing off appears then to be tortious, as it would appear to be contrary to honest practice as they are understood under Art. 10 bis of the Paris Convention on the Protection of Industrial Property (binding on 160 countries in the world).
A further indication of passing off is derived from the photography of the Casino de Monte-Carlo building, which appeared on the website. Assuredly, the respondent claims that this photography was not intended to confuse Internet users as it was only a small photography and that any visitors would have to look closely at it to identify it as the Casino de Monte-Carlo. However, the simple fact that it was a picture of the Casino de Monte-Carlo created a danger of confusion, as most Internet users would probably associate with the Casino de Monte-Carlo any building of the same style pictured on a web site of the same name. The effect of that photography and the likelihood of confusion were further enhanced by the sentence " the style of the resort". The panel finds it significant and compelling in establishing bad faith that while the respondent claims that online gaming and the casino industries are different, it nonetheless included such a sentence linking the original Casino de Monte-Carlo to his website.
The panel decides that the domain name is confusingly similar to the complainant’s trademark, that the respondent has no rights or legitimate interests in respect of the domain name and that the domain name was registered and is being used in bad faith.
Accordingly, the panel requires that the registration of the domain name <montecarlocasino.com> be transferred to the complainant.
Clive Thorne Olivier Iteanu
Dated: December 18, 2000