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Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Integrity Ltd. [2005] GENDND 1031 (30 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Integrity Ltd.

Case No. D2005-0404

1. The Parties

The Complainant is Société des Bains de Mer et du Cercle des Etrangers à Monaco, Monaco, represented by De Gaulle Fleurance & Associés, France.

The Respondent is Integrity Ltd., Port Vila, Vanuatu.

2. The Domain Name and Registrar

The disputed domain name <luckymontecarlocasino.com> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2005. On April 18, 2005, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On that same date, Tucows 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 May 10, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 30, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 1, 2005.

The Center appointed Christophe Imhoos as the sole panelist in this matter on June 16, 2005. 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.

4. Factual Background

The Complainant has been operating a casino under the name “Casino de Monte-Carlo” for more than 140 years. It is the founder and manager of the Casino of Monte-Carlo. In addition, since April 2, 1863, it has been granted by the authorities of the Principauté de Monaco a monopoly for casino and gambling industries for the territory of the Principauté de Monaco.

The Complainant is the owner of the word mark “CASINO DE MONTE-CARLO”, filed on August 13, 1996, with the Monaco Trademark Office (Annex D to the Complaint). It holds several other trademarks including an international trademark filed on January 21, 2002 (Annex E to the Complaint).

The Respondent registered the disputed domain name on March 13, 2005.

5. Parties’ Contentions

A. Complainant

The Complainant’s arguments are the following:

(i) The domain name is confusingly similar to a trademark in which the Complainant has rights.

The disputed domain name is confusingly similar to the Complainant’s trademark as it incorporates both nouns “Casino” and “Monte-Carlo”. The inversion of the order of the nouns in the mark does not render the disputed domain name legally different. It merely reflects a difference in usage or placement of the adjectively used noun “Monte-Carlo” in relation to the principal noun “Casino” between the English and French language.

The addition of the generic term “lucky” does not render the disputed domain name dissimilar from the Complainant’s trademark. “Lucky”, a fortuitous occurrence, is frequently associated with casinos as it is assumed that one is “lucky” when winning in the casino. Therefore, such a term only adds to the likelihood of confusion amongst Internet users between the disputed domain name and the Complainant’s trademarks. Similar findings have been made by WIPO arbitration panels, like e.g. in Société des Bains de Mer et du Cercle des Etrangers à Monaco v. International Services Inc. et al., WIPO Case No. D2000-1328, regarding the domain name <montecarlojackpot.com>.

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

In searching for trademark registrations and applications that contain the terms “Casino” and “Monte Carlo” (with or without dash, jointed or separated) on the Trademark Explorer database, it appears that the Respondent did not file or register any trademark concerning these marks in any North-American or European countries. To the best of the Complainant’s knowledge, the Respondent holds no intellectual property rights over any mark that contains the terms “Casino” and “Monte-Carlo” (Annex F to the Complaint).

In addition, the Respondent is a legal entity residing in Vanuatu, i.e. having no geographical link with the Principauté de Monaco and having not received any license or authorization from the authorities of the Principauté de Monaco to operate a casino in Monaco, let alone the geographical area of Monte Carlo.

The Complainant has never authorized the Respondent to use its 140-year old marks “CASINO DE MONTE-CARLO” and “CASINO DE MONACO”, nor to register and use the disputed domain name. Moreover, the Complainant does not have any type of business relationship with the Respondent.

(iii) The domain name was registered and is being used in bad faith.

The notoriety and world renown of the Complainant’s trademarks attest that the Respondent could not ignore that the registration of the disputed domain name would violate the Complainant, s rights.

The Respondent is a professional operating several online casinos such as “www.casinokingdom.com”, “www.casinoclassic.com”, and “www.captaincookscasino.com” (Annex G to the Complaint). As a casino professional, the Respondent can therefore not claim that it was not aware of the renowned trademarks of the Complainant when registering the disputed domain name.

The disputed domain name was registered five years ago but has not yet been used in an active manner. As the Respondent clearly knows how to create rich content websites it must be gathered that five years has been ample time to create a website. It can only be concluded that the Respondent has acquired the disputed domain name to prevent Complainant from using it. Such a passive use, including the renewal of the disputed domain name on March 13, 2005, is a clear example of bad faith use and registration pursuant to the Policy.

Should Respondent nevertheless have been planning on creating an active website, being the owner of various online casinos, it is hard to imagine how it could do so in a legitimate manner. An active website will most likely constitute an act of passing off or else another activity that would infringe on the Complainant’s rights. It was held on several occasions that inactive use of a domain name could constitute bad faith (e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, <telstra.org>). In Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 regarding the domain name <cellularonechine.com>, it was held that inactive use of a registered domain name may be evidence of intent to sell the domain name for commercial gain. In a similar matter the panel found that the registration and inactive use of the domain names showed bad faith (Comerica Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0615, <retirecomerica.com> and <webbankingcomerica.com>).

The Respondent has also shown bad faith as it has tried to conceal his identity: it has neither supplied a telephone nor a fax number in the registration of the disputed domain name; it has even not provided a street address but only a post box. A page on Integrity’s website explains that it is the Cypriote company “Alava Trading Limited” which does all financial services for the online casinos (Annex G to the Complaint). However, the Complainant has not been able to find any address information on neither the Respondent nor the affiliated Cypriote company. A search result on the Cyprus Yellow Pages reveals that no company called “Alava” is listed in their directory (Annex I to the Complaint). The lack of any identifying information on the Respondent gives rise to believe that the real Respondent may be a different entity than the one mentioned in this Complaint and also further corroborates the Respondent’s bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that:

(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) Respondent’s domain name has been registered and is being used in bad faith.

The Complainant must prove in the administrative proceeding that each of the aforesaid three elements is present so as to warrant relief, according to paragraph 4(a) of the Policy.

The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of said Rules.

In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

A. Identical or Confusingly Similar

The Complainant has established its rights in the trademark “CASINO DE MONTE-CARLO” with various registrations for such a name (See Annexes D and E to the Complaint).

The Complainant has submitted conclusive evidence that the domain name <luckymontecarlocasino.com> is confusingly similar to its trademark “CASINO DE MONTE-CARLO ”.

The main differences between the disputed domain name and the Complainant’s mark is the addition of the word “lucky” before the Complainants’ mark and the inversion of the words “Monte-Carlo” and “Casino”

This does not render the said domain name totally distinctive from the Complainant’s trademark. In effect, UDRP panels have found domain names to be identical or at least confusingly similar when based on “close variant” or “close misspelling” of the mark in question (e.g. AltaVista Company v. Grandtotal Finances Limited et al., WIPO Case No. D2000-0848; Yahoo!Inc. v. Eitan Zviely et al., WIPO Case No. D2000-0273).

There is no reason in the instant matter to depart from these decisions under the circumstances described above, not rebutted by the Respondent.

For the above reasons, the Panel finds that the disputed domain is confusingly similar to Complainant’s trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances, if found by the Panel to be proved based on its evaluation of all evidence submitted, shall demonstrate rights to or legitimate interests in the domain name in dispute. Those circumstances are described as follows:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the domain name in dispute. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (See e.g. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 or Isabelle Adjani .v. Second Orbit Communications, Inc., WIPO Case No. D2000-0867).

As already said, the Complainant has established that the “CASINO DE MONTE-CARLO” trademark has been known worldwide, for a significant period of time (See Annexes D and E to the Complaint).

As underlined in its Complaint and absent evidence to the contrary, the Complainant has not granted any license or otherwise permitted the Respondent to use such a trademark or to apply for any domain name incorporating the said trademark; moreover, the Respondent is not known by the domain name at stake.

Under these circumstances and absent evidence to the contrary, the Panel is unable to find any evidence that would tend to establish that the Respondent has rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following behaviors is sufficient to support a finding of bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

As already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate his good faith in the registration or use of the domain name in issue.

Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (See Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944).

As regards bad faith registration, the Administrative Panel follows the Complainant’s contentions that the Respondent was undoubtedly aware, at the time of the registration of the domain names in issue, given its professional position.

In addition, the Complainant has submitted that the website related to the domain name <luckymontecarlocasino.com> is not active. Various administrative panels held that passive use of a domain name constitutes bad faith registration and use under certain circumstances (See e.g. Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 as cited by the Complainant). The Panel is of the view that the instant matter warrants such a finding.

The Panel also follows the Complainant’s submission (see Annexes G and H to the Complaint) that a registrant who conceals his identity, whether in whole or in part, behaves in bad faith (See e.g. Phamacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273).

These elements, taken altogether, constitute evidence of bad faith within the meaning of paragraph 4(b) 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 <luckymontecarlocasino.com> be transferred to the Complainant.

Christophe Imhoos
Sole Panelist

Dated: June 30, 2005