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Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com [2005] GENDND 641 (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. Montecarlo Online Casino (MOC)

Case No. D2005-0338

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 Montecarlo Online Casino (MOC), San Jose of Costa Rica.

2. The Domain Name and Registrar

The disputed domain name <montecarlo-onlinecasino.com> is 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 name 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 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 did not submit any response. Accordingly, the Center notified the Respondent’s default on May 4, 2005.

The Center appointed Peter G. Nitter as the Sole Panelist in this matter on May 17, 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 and used the disputed domain name since August 30, 1996.

5. Parties’ Contentions

A. Complainant

The domain name at issue is confusingly similar to the Complainant’s trademark “CASINO DE MONTE-CARLO”, as it incorporates the two nouns of Complainant’s trademark “MONTE-CARLO” and “CASINO”.

The nouns are used in inverse order and the preposition “de”, meaning “of” in English, is omitted, but this has little influence on the connotations given by the nouns, the similarity and overall impression between Complainant’s trademark and the disputed domain name.

The word “online” is moreover only used as an adjective interjected between the nouns that compose Complainant’s registered trademark, and only indicates Internet presence of a company, and therefore leads Internet users to believe that Respondent’s website is the official Internet website of the services offered by Complainant under its trademark “CASINO DE MONTE CARLO”.

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

The Respondent did not file or register any trademark concerning these domain names, in neither Costa Rica, being the country where the Respondent is located, nor any other 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 Costa Rica, 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 name was registered, and has 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 name may very well violate Complainant’s rights.

The use of the disputed domain name similarly exhibits bad faith, as the domain name <montecarlo-onlinecasino.com> is merely used to deflect Internet users. By deflecting users, the Respondent has shown bad faith use of the domain name that clearly falls within the prime example given in paragraph 4(b)(iv) of the Policy.

Clearly, Internet users who type in the disputed domain name on their browser would believe that they access a website operated by the owner of the well-known Casino de Monte-Carlo, Complainant, while this is not the case. This is obviously a source of confusion for Internet users.

In the gambling business, more so than other businesses, the reputation and reliability of a name is of tremendous importance for the trust of the clients. By infringing and passing off on the trademarks of Complainant the Respondent is able to obtain a commercial gain all the while putting the reputation of the Complainant at grave risk.

As the Respondent cannot be found in the Costa Rican yellow pages it is probable that the registration information provided is incorrect and that the real Registrant may be a different company than the one mentioned in this Complaint. Should this be true, then the real registrant of the disputed domain name has tried to hide his identity and this would be another indication of bad faith in the registration of the domain name and in its use.

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

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The domain name at issue is not identical to a 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 clearly 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 “online” has also very little distinguishing effect in a domain name, as this term regularly is used in connection with a trademark to indicate an online presence of a business.

The Panel therefore subscribes to Complainant’s contentions that neither the reversing of the order of the nouns “Monte Carlo” and “Casino”, the omission of the “de”, or the addition of the “online” prevent that the disputed domain name is confusingly similar with 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 the Principauté de 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 are offered on-line casino and other betting-games. 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).

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, <montecarlo-onlinecasino.com>, be transferred to the Complainant.

Peter G. Nitter
Sole Panelist

Dated: June 13, 2005