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Sanofi-Aventis v. The Counsel Group, LLC [2005] GENDND 640 (9 August 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. Netsymmetrics

Case No. D2005-0339

1. The Parties

The Complainant is 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 Netsymmetrics, Fiar Oaks, California, of United States of America.

2. The Domain Names and Registrar

The disputed domain names <online-casino-montecarlo.com> and <online-casinos-montecarlo.com> are registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2005. On April 4, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On April 5, 2005, 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 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 April 11, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2005. The Respondent submitted a response on April 29, 2005.

The Center appointed Peter G. Nitter as the Sole Panelist in this matter on May 11, 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

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. Complainant has been operating a casino under the name “CASINO DE MONTE-CARLO” for more than 140 years at the date of this complaint.

Complainant is the owner of the word mark “CASINO DE MONTE-CARLO”, filed on August 13, 1996, with the Monaco Trademark Office, and the same 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.

Respondent has registered the domain name <online-casino-montecarlo.com> on February 27, 2003, and <online-casinos-montecarlo.com> on January 1, 2003. The domain name <online-casino-montecarlo.com> has been used to point at third parties’ commercial casino websites, while the domain name <online-casinos-montecarlo.com> is not in active use by Respondent.

5. Parties’ Contentions

A. Complainant

The domain names at issue are confusingly similar to the Complainant’s trademark “CASINO DE MONTE-CARLO” as they incorporate the two nouns of Complainant’s trademark “Casino” and “Monte-Carlo”. These are moreover used in the same order and are therefore almost verbatim copies of the Complainant’s trademark, the only difference being the omission of the word “de”.

Omitting the word “de”, which means “of” in English, from the trademark does not render the domain name legally different from the prior trademark.

The term “online” is a generic term to indicate the Internet presence of an entity. In the similar decision WIPO Case No. D2000-1328, concerning, amongst others, the domain names <casinomontecarloonline.com> and <montecarlocasinoonline.com>, the Panel stated that: “In some domain names the adjunction of the letter ‘e’ in front of the domain name does not suppress a strong similarity with the complainant’s trademark, as ‘e’ is commonly used and understood by all internet users as a designation for goods and services connected to this mean of communication. The same can be said about domain names that include the word ‘online’ or ‘web’.”

The Respondent has no rights or legitimate interests in respect of the domain names at issue.

The Respondent did not file or register any trademark concerning these marks, in neither the United States of America, being the country where the Respondent is located, nor any other North-American or European country to the best of Complainant’s knowledge, Respondent holds no intellectual property rights over any mark that contains the terms “Casino” or “Monte-Carlo”.

Respondent is a legal entity residing in the United States of America, that is to say it has no link with the geographical area of Monte Carlo.

Complainant has never authorized Respondent to use its 140-year old famous mark “CASINO DE MONTE-CARLO” or to register and use the disputed domain names, and Complainant does not have any type of business relationship with Respondent.

The disputed domain names were registered, and have been used in bad faith.

The strong notoriety and world renown of the Complainant’s trademarks attest that the Respondent could not ignore that the registration of the disputed domain names may very well violate Complainant’s rights.

The disputed domain name <online-casino-montecarlo.com>

The domain name <online-casino-montecarlo.com> on its homepage contains link banners for five online-casinos, none of them are owned by the Complainant.

The disputed domain name is therefore used to attract internet user familiar with the renowned name of the Complainant to forward them to third-party internet casinos. Such behavior is a prime example of the type of behavior addressed by the Policy, paragraph 4(b)(iv). It may further be imagined that such is being done for commercial gain.

Respondent’s passing-off on the trademarks of the Complainant is barely hid as they describe their services as being connected to Complainant’s geographical region, the French Riviera: “Monte Carlo offer online casino gambling with the most glamorous experiences of the French Riviera serving up online casino promotions from around the world.”

There is therefore a strong likelihood of confusion for the internet users who are connected to the disputed domain name and who would expect to access to a website operated by the owner of the well-known Casino de Monte-Carlo, while this is not the case.

It is furthermore Complainant’s opinion that Respondent, by hiding his identity behind a domain name proxy service, only has augmented the bad faith registration and use of the disputed domain name.

The disputed domain name <online-casinos-montecarlo.com>

The domain name <online-casinos-montecarlo.com> is currently used to point to the registrar’s commercial website.

The domain name was registered almost two years ago and nothing indicated that the Respondent has made any preparation to use the domain name.

Should the domain name ever be used to point to a customized website, it can in any event only be done in bad faith. It is inconceivable that the Respondent will use the disputed domain name for any legitimate purpose or for a purpose that would not infringe on Complainant’s legal rights. As the Complainant is the only company authorized to run casinos in the city of Monte Carlo it is out of the question that the Complainant could lawfully operate a casino there. And, as the other domain name part of this Complaint shows, Respondent may very well try to use the domain name <online-casinos-montecarlo.com> to attract internet users for commercial gain.

It may be argued that the current use of the disputed name <online-casinos-montecarlo.com> is not an “active” use and therefore falls outside the scope of bad faith use. However the long period that has passed since the registration without creating a customized website can only be interpreted as bad faith use of a domain name incorporating a world renowned trademark. The purpose must be either to prevent the rightful owner of using the domain name, to sell it for commercial gain, or to deflect internet users looking for information on the Complainant to Respondent’s website or other type of bad faith use. It is however inconceivable that the domain name in question can be used for legitimate purposes.

From the outset of the UDRP administrative procedure prior panels have found that inactive use of a domain name could constitute bad faith as stated in WIPO Case No. D2000-0003 regarding the domain name <telstra.org>. WIPO Case No. D2000-0028 regarding the domain name <cellularonechine.com> moreover found that inactive use of a registered domain name may be evidence of intent to sell the domain name for commercial gain. A similar matter to the one that is subject matter of this proceeding was presented in WIPO Case No. D2004-0615 concerning the domain names <retirecomerica.com> and <webbankingcomerica.com>. The panel here found that the registration and inactive use of the domain names showed “continuing bad faith abuse by Respondent of Complainant’s Mark, name and related rights and legitimate business interests”.

All these elements and inter alia the renown of the Complainant’s “CASINO DE MONTE-CARLO” and “CASINO DE MONACO” trademarks, show that the disputed domain names have both been registered and used in bad faith by the Respondent.

B. Respondent

The trade or service mark CASINO DE MONTE CARLO bears no similarity to the domain names <online-casino-montecarlo.com> or <online-casinos-montecarlo.com>.

The “de” means “of” in English, which neither of these domains are using, in fact neither are using either “of” or “the” nor do either domain resemble the full trademark or service mark of “CASINO OF MONTE CARLO”.

In fact, the word “online” is used regularly, and searched for regularly on the internet through internet search engines and appears in front of millions of domain names typically due to the fact that many internet users search for this term in front of the main keyword they are searching for something strictly found only online that they are not capable of finding offline. Respondent finds it highly unlikely anyone would ever use the term “online” in a keyword search for a casino that actually resides in the city of Monte Carlo. This term is intentionally integrated into both domains to respectfully differentiate it from all other entities, not as an afterthought or accident by Respondent.

The words “Monte Carlo” and “ Montecarlo” also show up in the world’s largest search engine Google as entirely different search results. Google actually does not even recognize the term “montecarlo” and displays “Did you mean: monte carlo” at the top of the search results for “montecarlo” so you may correctly recognize that your searching for the wrong term in trying to reference or find results pertaining to the jurisdiction of “Monte Carlo”. The Respondent has never used the portion of trademark “Monte Carlo”. The Respondent, in fact, combined the two words together to form “montecarlo” an entirely different word according to the three major search engines Google, Yahoo and MSN.

The domain names are quite unique in that both use the word “online” prior to the word “casino” designating only an “online casino” in which the Complainant apparently does not own this type of “online” presence or they would have stated so in their initial Complaint.

Respondent refutes the argument made by the Complainant with regard to Respondent’s rights and legitimate interests in respect to the domain names.

Respondent has been running professional casino affiliate programs on its casino portals for over three years and it has over 250 domains, half of which start with the “online” such as online-casino-xxx or online-casinos-xxx. Respondent is known throughout the country and the online community as an affiliate marketing company that uses this specific domain name type. Respondent felt it cost prohibitive and simply “not necessary” to “trademark” every single domain name it has ever purchased, as Respondent has spent countless hours determining that its domain names “do not” infringe on others rights.

The Respondent argues that the Complainant does not hold a trademark or service mark for terms “online” or “casino” which are used the worldwide. They do use “casino” in their trademark or service mark, but only in the context of “Casino De Monte Carlo”. The word “casino” is used in millions of websites and domains all over the world, so this is definitely not a trademark or service mark they own solely nor could ever own outright, yet they seem to be moving in this direction with statements like “a monopoly for casino and gambling industries”.

Respondent currently holds many domain names with the “online-casino” in the beginning of each name, and therefore has an established reputation for these domain names long before it received any notice of dispute from WIPO. There is clear evidence of the Respondent’s use of and demonstrable preparations to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods and services.

Respondent did not register or use the domain names at issue in bad faith.

Respondent holds over 250 “three word domains” in exactly the same format as “online-casino-montecarlo” and online-casinos-montercarlo”. These domain names are neither registered nor acquired for the purpose of selling, renting or otherwise transferring them to the Complainant or to any of the Complainants competitors at any time in the past, present or in the future.

The domain names were not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant, as the alleged owner of the trademark or service mark, or to a competitor of the Complainant. Respondent is in the online casino affiliate marketing business, and has “never” sold a single domain for profit. Every domain it has ever purchased it still holds in its possession or lets the domain name expire for release.

The domain names were not registered in order to prevent the Complainant from reflecting their trademark or service mark in a corresponding domain name and Respondent has in no way engaged in this pattern of conduct in the past or present.

The only two domain names it holds with the word “montecarlo” are the two discussed in this Complaint. Complainant apparently has many ways of displaying their trademark or service mark in a domain name and have exercised such rights. The Complainant already owns the domain name <casino-de-monte-carlo.com> and <casino-monte-carlo.com>. Surprisingly the Complainant did not have any interest in purchasing the domain name <casino-de-montecarlo.com>, which has not been purchased to date, and especially, according to the Complainant, “montecarlo” is “supposedly” strikingly similar to “monte carlo” which much of their complaint relies upon as fact.

The Complainant and the Respondent are not competitors. The Complainant owns gambling facilities in Monte Carlo that have been well established for over 140 years and attract high stakes gamblers from all over the world to its facilities. Respondent builds online casino sites working as an affiliate advertiser to bring online users to its sites to read reviews, news and other information about “online gambling”. These two businesses are in no way affiliated or competing.

The domain names were not registered by the Respondent to disrupt the Complainant’s business in any way. The domains were registered due to their “search engine” optimization value. The two most popular words on the internet for “online gambling” are “online casino” and “online casinos”. There are millions of web pages using these two word combinations in an effort to drive online gamblers to online casinos.

Respondent is convinced that Complainant’s Complaint is an effort to take online casino traffic and business away from Respondent by hostile force or takeover without the Complainant every having to develop and optimize their websites for search engine ranking and submission. The cost of promoting and marketing an internet site these days can exceed 30,000 United States dollars. The cost to file this Complaint with an opportunity to take a domain name that has already been established and ranking on Yahoo.co.uk is only 1,500 United States dollars.

At this time, Netsymmetrics, LLC would ask that the Panel consider a finding of reverse domain name hijacking (Rules, paragraph 15(e)) and consider the Complaint was brought in bad faith as an abuse of the administrative proceeding set forth by WIPO.

The domain name <online-casinos-montecarlo.com> is currently used to point to Respondent’s commercial website. The domain name was registered over two years ago and Respondent has every intention of developing this website as an online casino portal.

Respondent has recently brought its web hosting “ in-house” due to high costs and expenditures from outside hosting firms, and was in the process of moving this domain shortly after it recently received 254 IP addresses, but due to this proceeding, the Respondent has not been able to proceed as planned.

Once the proceeding is over, it is “highly conceivable that the Respondent will use the disputed domain name for legitimate purposes as an online gaming site that in no way infringes on Complainant’s legal rights”. Respondent is well aware that the Complainant is the only company authorized to run casinos in the city of Monte Carlo and Respondent has never had any intention of running casinos online or offline, as it is simply an online affiliate marketing company running an online casino portal and has never made any attempt to infringe upon the rights of the Complainant.

Respondent privatized the domains using the company domains by proxy because it did not want to be contacted about the domains with useless spam and requests for purchase.

Respondent never had any intention of selling <online-casino-montecarlo.com>. If Complainant had offered Respondent money for this domain, Respondent would have refused immediately. The reason the Complainant did not offer to buy the domain names is that the Complainant is well aware that Respondent is in the online casino portal marketing business and knew Respondent would refuse to sell these domains at any cost, which would have proven this Complaint to be unsubstantiated. Since the domains currently are taken to the registrar’s page, it is also highly unlikely that Respondent would ever deflect internet users looking for information on the Complainant to Respondent’s website or other type of bad faith use.

6. Discussion and Findings

A. Identical or Confusingly Similar

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

The disputed domain names incorporate the two nouns of Complainant’s trademark CASINO DE MONTE-CARLO, namely “CASINO” and “MONTE-CARLO”.

In the opinion of the Panel, the combination of the terms “Casino” and “Monte-Carlo” are distinctive for, and immediately bring to mind Complainant’s business activities. Said terms are the most distinctive parts of both Complainant’s registered trademark and the domain names at issue. Neither the omission of the term “de”, which simply means “of”, nor the addition of the term “online” which is much used together with trademarks to form domain names, as it is a natural indication of the internet presence of an entity.

The Panel furthermore finds that there is no distinguishing difference between the term “Monte-Carlo” and the “montecarlo” used in the domain names at issue. It is not technically possible to use spaces in the formation of a domain name, and previous panel decisions have consistently concluded that the addition or omission of a hyphen has little or no distinguishing effect.

As a result of the above arguments, the Panel finds that the disputed domain names are confusingly similar with Complainant’s trademark “CASINO DE MONTE-CARLO”.

B. Rights or Legitimate Interests

The Panel has considered the allegation made by Complainant that Respondent lacks any rights or legitimate interests in the contested domain name.

Complainant has documented that it is granted a monopoly for casino and gambling industries for the territory of the Principauté de Monaco, and that it therefore is the sole company that can organize games and gambling in Monaco. The name Monte Carlo is closely related to such activity, as this is the name of the city in Monaco where the gambling activities are organized.

Respondent holds no intellectual property rights over any mark that contains the terms “Casino” or “Monte-Carlo”. Complainant has not in any way granted Respondent rights to use its mark, and Respondent is in no way affiliated with Respondent.

Respondent has admitted that it is well aware that the Complainant is the only company authorized to run casinos in the city of Monte Carlo. The domain names at issue contain the combination of the terms “Casino” and “Monte-Carlo” which is distinctive to Complainants business. For these reasons, Respondent could in the Panel’s opinion not ignore that the registration of the disputed domain names may very well violate Complainant’s rights. As a result, the Panel accepts the Complainant’s contention that it is inconceivable that the Respondent could use the disputed domain name for any legitimate purpose of for a purpose that would not infringe on Complainant’s legal rights.

The Panel finds that the Respondent lacks any rights or legitimate interests in the contested domain name.

C. Registered and Used in Bad Faith

The domain name <online-casino-montecarlo.com>, has been linked to various online casinos owned by third parties. The Panel agrees with Complainant that Respondent thereby attracts internet user familiar with the renowned name of the Complainant to forward them to third-party internet casinos, and that such behavior is addressed by the Policy, paragraph 4(b)(iv).

Respondent’s reference to the French Riviera on the internet site resolving to <online-casino-montecarlo.com> furthermore enhances the likelihood of confusion for the internet users who are connected to the disputed domain name and who would expect to access to a website operated by the owner of the well-known Casino de Monte-Carlo.

The above indications of bad faith registration and use is in the opinion of the Panel also an indication that the nearly identical domain name <online-casinos-montecarlo.com> has been registered for the same purposes. This domain name is currently used to point to the registrar’s commercial website. Also this use may be seen as an attempt to taking advantage of Complainant’s fame by creating confusion in order to attract internet users for commercial gain. By the time the internet users enter Respondent’s website, the confusion and exploitation of Complainant’s fame has already taken place.

As a result of the above, the Panel finds it evidenced that the domain names at issue were registered, and have 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 names, <online-casino-montecarlo.com> and <online-casinos-montecarlo.com>, be transferred to the Complainant.

Peter G. Nitter
Sole Panelist

Dated: June 13, 2005