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Société des Bains de Mer et du Cercle des Etrangers à Monacov. LaPorte Holdings, LLC. [2005] GENDND 1656 (2 September 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. LaPorte Holdings, LLC.

Case No. D2005-0526

1. The Parties

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

The Respondent is LaPorte Holdings, LLC., Los Angeles, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <montecarloresortandcasino.com> is registered with NameKing Inc., Los Angeles, California, United States of America.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2005. On May 17, 2005, the Center transmitted by email to NameKing Inc., a request for registrar verification in connection with the domain name at issue. On May 19, 2005, NameKing.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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 20, 2005. The Center verified that the Complaint together with the amendment to 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 July 20, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 16, 2005.

The Center appointed Eduardo Machado as the Sole Panelist in this matter on August 24, 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 trademark upon which the Complaint is based is CASINO DE MONTE-CARLO. The Complainant 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 has been operating a casino under the name “Casino de Monte-Carlo” for more than 140 years.

Respondent registered the domain name <montecarloresortandcasino.com> on April 4, 2003, with NameKing, Inc.

5. Parties’ Contentions

A. Complainant

Complainant argues that Respondent’s Domain Name <montecarloresortandcasino.com> is confusingly similar to Complainant’s Mark CASINO DE MONTE-CARLO.

Complainant states that Respondent cannot demonstrate any legitimate interests in the Domain Name, since Respondent has registered its Domain Name only after Complainant had established rights in its CASINO DE MONTE-CARLO mark and overall business.

Furthermore, there is no relationship between Complainant and Respondent that would give rise to any license, permission, or authorization by which Respondent could own or use the domain name, which incorporate in their entirety and/or are confusingly similar to Complainant’s Mark.

Based on the above mentioned, Complainant states that it has met the requirements of the Policy by demonstrating not only its own legitimate interests in its mark, but also that Respondent registered and has used the aforesaid Domain Name <montecarloresortandcasino.com> in bad faith, and that Respondent’s sole interest in the Domain Name is to unlawfully profit from it.

The Complainant, Société des Bains de Mer has been operating a casino under the name “Casino de Monte-Carlo” for more than 140 years at the date of this Complaint. The Casino de Monte-Carlo attracts a clientele that comes from numerous European and non-European countries.

The Complainant, Société des Bains de Mer is the founder and manager of the Casino of Monte-Carlo. Since April 2, 1863, the Complainant 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, and is therefore the sole company that can organize games and gambling in Monaco.

The Complainant has filed application for trademark CASINO DE MONTE-CARLO, on August 13, 1996, with the Monaco Trademark Office. The Complainant also holds a United States Federal trademark filed on December 30, 2002. Furthermore, the Complainant’s rights in and to the CASINO DE MONTE CARLO mark has been recognized in the United States of America by a decision of the US Court of Appeals for the Fourth Circuit dated May 19, 2003.

The Complainant has searched the Trademark Explorer database for possible trademark registrations or applications by the Respondent and no trademarks have been registered by the Respondent in neither the United States of America, the country of residence of the Respondent, nor in any European countries.

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, and Complainant does not have any type of business relationship with Respondent.

The Respondent has engaged in a pattern of domain name warehousing and registered a large number of domain names with the sole purpose of obtaining commercial gain.

The disputed domain name has not been used to create an active website but rather to attract Internet users to forward them to other sites.

Finally, the Respondent has been involved in numerous UDRP disputes in which the transfer of domain names was ordered, see Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings, WIPO Case No. D2004-0971 (<fujifilm.com>), Société Française du Radiotéléphone - SFR v. LaPorte Holdings, WIPO Case No. D2004-0926 (<cegetl.net>), Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. LaPorte Holdings, Inc., WIPO Case No. D2004-0849 (<lemeriden.com>), WIPO Case No. D2005-0030 (<hermenegildozegna.com>), and AT&T Corp. v. LaPorte Holdings, Inc., WIPO Case No. D2004-1088 (<mobileatt.com>).

B. Respondent

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

6. Discussion and Findings

Although the Respondent did not reply, it is proper for the Panel to, examine the Complainant’s contentions having regard to both the Policy and the Rules. Having considered the Complainant’s case and the evidence available, the Panel finds the following:

A. Identical or Confusingly Similar

The Policy requires that the Complainant shows that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

The Panel has no difficulty in deciding that the disputed domain name is confusingly similar to the Complainant’s trademark duly filed in Monaco and in the United States of America, and used to identify Complainant’s business for more than 140 years.

The disputed domain name is confusingly similar to the Complainant’s trademark as it incorporates both nouns, “Casino” and “Monte-Carlo”, of Complainant’s trademarks. Having inverted the order of the nouns in the mark does not render the disputed domain name dissimilar.

The addition of the generic term “resort” does not render the disputed domain name legally different from the Complainant’s trademark.

Moreover, the term resort is commonly used by Complainant to describe its facilities in Monte-Carlo.

It is an established principle of trademark law, and one that has been endorsed in numerous earlier UDRP decisions, that the addition of a purely descriptive integer to a distinctive mark does nothing to dispel confusion. See, e.g. Nokia Corporation v. Firdaus Adinegoro/Beli Hosting, WIPO Case No. D2004-0814; Nokia Corporation v. Marlon Sorken, WIPO Case No. D2002-0276; Nokia Corporation v. Liquid SMS Limited, WIPO Case No. D2002-0292.

Turning to the domain name and to what might be collectively called the Complainant’s common law rights, there is evidence of a kind that the Complainant has itself generated a protectable goodwill in the CASINO DE MONTE-CARLO name, vis-a-vis being in business for more than 140 years.

B. Rights or Legitimate Interests

The Complainant alleges that the Respondent has no rights or legitimate interests in the domain name as enumerated in paragraph 4(c) of the Policy. The Complainant has made out a prima facie case that the Respondent lacks rights and legitimate interests in the domain name. The Respondent, by failing to file a Response, did nothing to dispute this contention nor to provide information as to its interests in using the domain name. The Panel finds that the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel has concluded that the passive holding of the domain name by the Respondent amounts to the Respondent acting in bad faith. The particular circumstances of this case which lead to this conclusion are:

(i) The Complainant’s trademark has a strong reputation and is widely known and the Complainant has used the aforesaid trademark to identify it’s business for more than 140 years.

(ii) the Respondent has provided no evidence whatsoever of any good faith use by it of the domain name, (In fact the Responded did not reply at all)

(iii) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.

In light of these particular circumstances, the Panel concludes that the Respondent’s passive holding of the domain name in this particular case satisfies the requirement of paragraph 4(a)(iii) that the domain name “is being used in bad faith” by Respondent”.

Moreover, there is evidence that the Respondent is systematically involved in this behaviour, further circumstantial evidence of bad faith. See, e.g., Société des Hôtels Méridien v. LaPorte Holdings, Inc., WIPO Case No. D2004-0849; Krome Studios Pty, Ltd. v. LaPorte Holdings, Inc., WIPO Case No. D2004-0707. These cases could indicate a pattern of bad faith conduct.

The Panel therefore finds for the Complainant on this third element of the test and determines that paragraph 4(a)(iii) of the Policy has been satisfied.

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 <montecarloresortandcasino.com> be transferred to the Complainant.

Eduardo Machado
Sole Panelist

Dated: September 2, 2005