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La Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Domain Active Pty. Ltd. [2005] GENDND 1316 (11 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

La Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Domain Active Pty. Ltd.

Case No. D2005-0527

1. The Parties

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

The Respondent is Domain Active Pty. Ltd., Domain Hostmaster, Clayfield of Australia.

2. The Domain Name and Registrar

The disputed domain name <montecarloresortcasino.com> is registered with Fabulous.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2005. On May 18, 2005, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain name at issue. On May 18, 2005, Fabulous.com 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 30, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 19, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 20, 2005.

The Center appointed Peter G. Nitter as the Sole Panelist in this matter on June 27, 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. The Casino de Monte-Carlo has become famous worldwide. It attracts a clientele that comes from numerous European and non-European countries. The Complainant is the founder and manager of the Casino of Monte-Carlo. Since 1863 the Complainant has been granted by the authorities of Monaco a monopoly for casino and gambling industries for the territory of Monaco, and is therefore the sole company that can organize games and gambling in Monaco.

Complainant is the owner of the word mark CASINO DE MONTE-CARLO filed on August 13, 1996 with the Monaco Trademark Office. The Complainant also holds an international trademark registration of this mark filed on January 21, 2002.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to Complainant’s trademark as it incorporates both nouns, “casino” and “Monte-Carlo” of Complainant’s trademark. Having inverted the order of the nouns in the mark does not render the disputed domain name legally different. The inversion 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 insertion of the generic term “resort” does not render the disputed domain name legally different from the Complainant’s trademark. The term “resort” is used by Complainant to describe its facilities in Monte-Carlo. Apart from being the proprietor of several casinos and hotels in Monte-Carlo, the Complainant also operates sports facilities, spas, restaurants that are commercialized under the name “Monte-Carlo Resort”.

Respondent has not applied for or registered any trademarks in Europe or North America. To the best of Complainant’s knowledge, Respondent holds no intellectual property rights over any mark that contains the terms “casino” and “Monte-Carlo”.

The Respondent is a legal entity residing in Australia, and has no geographical link with Monaco. Respondent has not received any license or authorization from the authorities in Monaco to operate a casino in Monaco.

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

The Respondent cannot claim that the disputed domain name is used in a manner that can be considered fair use. The Respondent therefore has no rights or legitimate interests in the disputed domain name.

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

Respondent is an Internet professional whose main business activity is registering Internet domain names as it claims it currently holds over 120.000 domain names. Respondent is therefore well aware of the illegal activity of registering domain names to which third parties have rights.

Respondent is passing off on Complainant’s trademarks and renown in order to attract Internet users for commercial gain.

Internet users are lead to believe that the disputed domain name is affiliated with the Casino in the city of Monte-Carlo through the links to leisure activities in Monte-Carlo such as to the website of the Monte-Carlo Open Tennis Tournament and a link containing description and images of the city of Monte-Carlo.

The disputed domain name provides the possibility for visitors to play online casino games by downloading casino software. Although the Complainant cannot attest the reliability of these online casino companies, it is certain that in the gambling business a company’s reputation is of utmost importance for the trust of its clients. By placing links to online commercial gambling services on the disputed domain name containing the well-known trademark of the Complainant, the Respondent is engaging in acts of passing off and putting Complainant’s reputation at risk.

Respondent has been involved in several remarkable domain name proceedings such as Playboy Enterprises International, Inc. v. Domain Active Pty Limited, WIPO Case No. D2002-1156 regarding 70 domain names incorporating the term “Playboy”.

The disputed domain name has been registered and used in bad faith by Respondent.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The registered domain name is <montecarloresortcasino.com>.

Complainant is the owner of the word mark CASINO DE MONTE-CARLO.

The domain name at issue is not identical to the trademark held by Complainant, and the question is therefore whether there is confusing similarity.

The disputed domain name incorporates the two nouns of Complainant’s trademark “Monte Carlo” and “casino”, the combination of which is distinctive for, and immediately brings to mind Complainant’s business activities. These two nouns are the most distinctive part both in Complainant’s trademark and the domain name at issue. The preposition “de” has little distinguishing effect, and even more so the omission of it in the domain name at issue. The term “resort” has little distinguishing effect in the domain name, as this term is the most generic term in the context of the domain name.

The Panel therefore subscribes to Complainant’s contentions that neither the reversing of the order of the nouns “Monte Carlo” and “casino”, or the addition of resort prevent that the disputed domain name is confusingly similar with the Complainant’s trademark “CASINO DE MONTE-CARLO”.

B. Rights or Legitimate Interests

Respondent is in default, and has therefore not contested Complainant’s allegation that Respondent lacks any rights or legitimate interests in the contested domain name.

It is generally difficult for the Complainant to prove the negative that Respondent does not have any rights or legitimate interests in the domain name at issue, and on the other hand, it would be fairly simple to demonstrate that he has any such rights or legitimate interests pursuant to paragraph 4(c) of the Policy. Previous decisions under the UDRP have therefore found it sufficient for Complainant to make a prima facie showing of its assertion in the event of a Respondent’s default.

Complainant has documented that it is granted a monopoly for casino and gambling industries for the territory of Monaco, and that it therefore is the sole company that can organize games and gambling in Monaco.

Complainant has held that it has not in any way granted Respondent rights to use its mark, and that it is in no way affiliated with Respondent. The monopoly position and world renown of Complainant makes these assertions easy to accept for the Panel.

The Panel thus finds that the Complainant has made a prima facie showing that Respondent lacks any rights or legitimate interests in the contested domain name.

C. Registered and Used in Bad Faith

In the opinion of the Panel, Respondent must have been aware of Complainant when registering the domain name at issue, and therefore the Respondent could not ignore that the registration of the disputed domain name would infringe upon Complainant’s rights.

On the website resolving to the domain name at issue visitors can play online casino games by downloading casino software. The registration and use of a domain name containing the combination of the terms “Casino” and “Monte-Carlo” which are distinctive to Complainant’s business, thus appears to be an attempt to attract for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website. This is evidence of bad faith registration and use pursuant to the Policy paragraph 4b(iii).

Respondent has previously been involved in WIPO domain name proceedings, namely Playboy Enterprises International, Inc. v. Domain Active Pty Limited, WIPO Case No. D2002-1156, where 70 domain names were transferred from Respondent to Complainant.

As a result of the above, the Panel finds it evidenced that the domain name at issue was registered and has been used in bad faith by Respondent.

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, <montecarloresortcasino.com> be transferred to the Complainant.

Peter G. Nitter
Sole Panelist

Dated: July 11, 2005