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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. Mark Bolet

Case No. D2006-1245

 

1. The Parties

The Complainant is La Sociйtй des Bains de Mer et du Cercle des Etrangers а Monaco, represented by De Gaulle Fleurance & Associйs, France.

The Respondent is Mark Bolet, Offices of Trident Trust Company, Virgin Islands, United Kingdom.

 

2. The Domain Name and Registrar

The disputed domain name <monaconetcasino.com> is registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2006. On September 29, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On September 30, 2006, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the ”Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the ”Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the ”Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 3, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 23, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 25, 2006.

The Center appointed Ana Marнa Pacуn as the Sole Panelist in this matter on November 8, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The language of this proceeding is English.

 

4. Factual Background

The Complainant is a corporation in the Principality of Monaco. It has been operating Casino de Monte Carlo in Monaco for more than 140 years. Since April 2, 1863, it has been granted by the authorities of the Principality of Monaco a monopoly for casino and gambling activities for the territory of the Principality of Monaco. For the identification and promotion of its services the Complainant has registered the international trademark CASINO DE MONACO for – among others - “entertainment activities” in almost every European country, Japan and Antigua and Barbuda. This trademark was issued on December 19, 2002. Likewise, the Complainant filed in the United States said trademark on December 24, 2002.

According to a printout of the WHOIS database of July 26, 2006, the disputed domain name <monaconetcasino.com > has been registered in the name of Mark Bolet since November 7, 2005. The Registrar has in its email to the Center of September 30, 2006, confirmed the registrant of the disputed domain name as Mark Bolet.

 

5. Parties’ Contentions

A. Complainant

1. Similarity

The Complainant takes the position that the contested domain name is confusingly similar to its well-known trademark CASINO DE MONACO hence satisfying the confusing similarity requirement of paragraph 4(a) of the Policy and paragraph 3(b) of the Rules.

The Complainant asserts that the inversion of the order of the nouns of the trademark in the contested domain name does not render it dissimilar from the trademark. The Complainant states that the inversion merely reflects a difference in usage or placement of the noun (Monaco) as an adjective in relation to the principal noun (casino) between the French and the English language.

The Complainant asserts that the addition of the generic term “net” in the domain name is not sufficient to avoid misleading the Internet users about the real identity of the holder of the domain name. The Complainant states that the addition of this term merely indicates that the site accessible through the contested domain name is the Internet version of the well-known trademark Casino de Monaco. The Complainant quotes different decisions having held that generic elements are not relevant when examining the similarity between the contested domain name and the registered trademark.

2. No legitimate interests

The Complainant contends that the Respondent has no legitimate interests because:

The Respondent does not have a registration or pending trademark application over any mark that contains the terms CASINO and MONACO.

The Respondent has not received any license or authorization from the Principality of Monaco to operate a casino in Monaco.

The Complainant has not authorized Respondent to use its trademark CASINO DE MONACO nor to register and use the disputed domain name.

3. Bad faith

The Complainant has a well renowned name in the entertainment sector in Monaco. Therefore, according to the Complainant, it can be assumed that the Respondent – a professional in the on-line gambling business - has known or should be aware of the Complainant’s rights in the trademarks CASINO DE MONACO.

Therefore, the Complainant argues that the fact that the Respondent registered a domain name almost identical with the Complainant’s trademarks demonstrates bad faith registration on the part of the Respondent.

The Complainant further contends that the Respondent is also using the disputed domain name in bad faith, and is passing off the Complainant’s trademarks in order to attract Internet users for commercial gain.

The Respondent has placed on the top of the homepage of its website a photograph of the Complainant’s world famous casino in Monaco, which the Complainant argues can lead the public to believe that this is the website of the Complainant’s casino.

The main color of the Respondent’s website is red, which is the official color of the Principality of Monaco.

Also the logo displayed on the homepage of the Respondent’s website includes a crown, which Complainant states is a reference to the royal family of Monaco, and another attempt to associate this site with the Complainant’s casino.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

According to paragraph 15(a) of the Rules, the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

(2) the Respondent has no rights or legitimate interests in respect of the domain name.

(3) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

A complainant must establish two elements under paragraph 4(a)(i) of the Policy: i) the Complainant has rights in a trademark or a service mark, and ii) the disputed domain name is identical or confusingly similar to the mark in which the Complainant has rights.

The Complainant has provided sufficient evidence of its rights in the trademark CASINO DE MONACO in a number of European countries, the United States of America, Japan, and Antigua and Bermuda. The differences between the Complainant’s trademark and the domain name <monaconetcasino.com> are the inversion of the order of the nouns CASINO and MONACO, the addition of the term “net” and the omission of the term “de”.

In the Panel’s view, the inversion of the order of the nouns of the trademark in the contested domain name does not render it dissimilar from the trademark. Having regard both to a visual comparison and to the ideas that the contested domain name suggests, The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.

The addition of the generic top level domain name “.net” may be disregarded for the purpose of this comparison, as it merely makes reference to the fact that the site is accessible on the Internet. Therefore, the consumer may think that the contested domain name is an Internet version of the well - known trademark CASINO DE MONACO.

The omission of the term “DE”, which simply means “of”, is in the Panel’s view irrelevant.

As a result of the above, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark CASINO DE MONACO.

B. Rights or Legitimate Interests

According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the domain name.

Paragraph 4(c) sets out certain circumstances, in particular but without limitation, which if found by the Panel to be proved on its evaluation of all the evidence presented, shall demonstrate rights or a legitimate interest on the part of the Respondent. The Respondent has not submitted a response and has failed to invoke any circumstances that demonstrate any right or legitimate interest in the domain name.

The Complainant has argued that the Respondent has no rights or legitimate interests to the domain name in accordance with Paragraph 4(c) of the Policy, making out a prima facie case that the Respondent lacks such rights. The Respondent has defaulted and has thus not provided any evidence of any rights to the disputed domain name.

The Complainant does not appear to have licensed or otherwise authorized the Respondent to use its trademark or any domain name incorporating the trademark.

To the Panel’s knowledge, the Respondent has not received any license or authorization from the authorities of the Principality de Monaco to operate a casino in Monaco.

Thus, the Panel concludes that the Respondent has no rights or legitimate interests, within the meaning of Paragraph 4(a)(ii) and (c)(i-iii) of the Policy in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the Respondent registered and used the disputed domain names in bad faith. The language of Paragraph 4(a)(iii) of the Policy requires that both bad faith registration and bad faith use be proved.

Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of bad faith.

In the present case, the Respondent’s bad faith may be established by the following elements:

- There are several facts indicating that the Respondent must have been aware of the Complainant’s trademark at the time of the registration of the domain name at issue, most notably, the fact that the Complainant’s trademark is well - known in the specific business.

- As already established, the contested domain name is almost identical to the registered trademarks of the Complainant. The domain name was registered after the Complainant registered its trademarks.

- The Complainant and the Respondent appear to be working in the same specific business. It is common to know the trademarks of competitors.

- The Respondent is using the disputed domain name to operate a website which features links to competing and non - competing commercial websites, from which, the Respondent, presumably, receives referral fees or otherwise generates revenue. Such use for Respondent’s own commercial gain is evidence of bad faith registration.

- The Respondent has placed on the top of the homepage of its website a photograph of Complainant’s famous casino in Monaco clearly indicating that it is aware of the Complainant’s activities.

- The main color of the Respondent’s website is red, which is the official color of the Principality of Monaco.

- The logo displayed on the homepage of the Respondent’s website includes a crown, which is a reference to the royal family of Monaco.

- Since the Respondent is using a domain name which is virtually identical to the Complainant’s trademark, Internet users may become confused as to the Complainant’s sponsorship or affiliation with the resulting website.

- In the absence of any possible explanation for the Respondent choosing the name MONACO CASINO, it is likely that the Respondent did intend to sell for profit, or otherwise benefit from the confusing similarity between the Complainant’s well – known mark and the domain name <monaconetcasino.com>.

The combination of the above factors makes it inconceivable to the Panel that the Respondent was not aware of the Complainant and its trademark when it registered the contested domain name. The Respondent’s subsequent use of the disputed domain name to post links and presumably derive a benefit from likely confusion with the Complainant’s mark is also not conduct consistent with good faith. Thus, the Panel concludes that the disputed domain name was registered and being used in bad faith, and that accordingly, the Complainant has established paragraph 4(a)(iii) of the Policy.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <monaconetcasino.com> be transferred to the Complainant.

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Ana Marнa Pacуn
Sole Panelist

Dated: November 27, 2006