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Playboy Enterprises International, Inc. v. Luis Sastre [2005] GENDND 659 (2 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 Development, LLC.

Case No. D2005-0225

1. The Parties

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

The Respondent is Montecarlo Development, LLC., Aventura, Florida, United States of America.

2. The Domain Name and Registrar

The disputed domain name <montecarlocasinoandsportsbook.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2005. On March 2, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On March 4, 2005, Go Daddy Software transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on March 16, 2005. The Center verified that the Complaint, together with the amended 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 March 23, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 14, 2005.

The Center appointed Peter G. Nitter as the sole panelist in this matter on May 4, 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 as of 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 by a decision of the United States Court of Appeals for the Fourth Circuit dated May 19, 2003.

Respondent has registered and used the disputed domain name since June 19, 2003.

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 “casino” and “monte-carlo”.

The composite term “sports book” is associated with the casino and gambling business as it stands for the possibility of betting on sports games and therefore does not change the overall meaning and similarity to Complainant’s trademarks. Several casinos offer, apart from their standard casino gambling activities, the possibility for their clients to wager on sports results. The term “sports book” only adds to the likelihood of confusion between the disputed domain name and Complainant’s trademarks amongst Internet users. Similar decisions have been rendered by WIPO UDRP panels in Société Des Bains De Mer Et Du Cercle Des Etrangers A Monaco v. Global Productions - Domain For Sale, WIPO Case No. D2000-1332, regarding the domain name <monacogambling.com> and Société des Bains de Mer et du Cercle des Etrangers à Monaco v. International Services Inc. et al., WIPO Case No. D2000-1328, regarding, amongst others, domain names <montecarlogames.com>, <montecarlojackpot.com>, and <montecarlogambling.net>.

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 marks, neither in the United States of America, being the country where the Respondent is located, nor in 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 name, 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 have been unaware that the registration of the disputed domain name may very well violate Complainant’s rights.

The domain name at issue incorporates Complainant’s renowned trademark in order to have Internet users believe that the site is affiliated with, or endorsed by, Complainant. This attempt to deceive Internet users visiting the website to which the disputed domain name resolves is not only done through the domain name but also through the content of the website. The Respondent’s website shows images taken from Complainant’s website and its colors and text closely resemble those used on Complainant’s website. The images on the Respondent’s website include photographs of the interior and exterior of the Casino de Monte-Carlo located in Monaco, buildings owned by Complainant, which have no relation to Respondent. The Respondent did not go out of his way to obtain these images as these were copied directly from the Complainant’s website without permission for such use being requested or obtained by Respondent.

The above further demonstrates Respondent’s bad faith as this causes Internet users to be deceived into believing that the disputed domain name is affiliated with Complainant because of the close resemblance between Complainant’s and Respondent’s websites in addition to the use of a domain name incorporating Complainant’s trademark.

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 trade mark held by Complainant, and the question is then whether there is confusing similarity.

The disputed domain name incorporates the two nouns “Monte-Carlo” and “Casino” of Complainant’s trademark CASINO DE MONTE-CARLO with the addition of the term “sports book”.

The terms “Monte-Carlo” and “Casino” are distinctive of, and immediately bring to mind Complainant’s business activities.

As evidenced by the Complainant, “sports book” is a term that could easily be associated with casinos, the business of Complainant, as several casinos offers the possibility for their clients to wager on sports results in addition to their standard casino gambling activities, and the term “sports book” stands for the possibility of such betting on sports games. The Panel therefore finds that the term “sports book” is not distinguishing the domain name at issue from Complainant’s trademark, but rather adds to the likelihood of confusion.

As a result of the above arguments, the Panel finds that the disputed domain name is confusingly similar to 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. Respondent is in default, and has therefore not contested these allegations.

As 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; 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 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 in no way is affiliated with Respondent. The monopoly position and world renown of Complainant, and the great geographical distance between the Complainant and Respondent make 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

Both the registration of the disputed domain name, incorporating the terms “Casino” and “Monte-Carlo” of Complainant’s trade mark CASINO DE MONTE-CARLO, and the later use of the Internet website resolving to the domain name at issue make it clear to the Panel that the domain name was registered in bad faith to take advantage of Complainant’s reputation and marks.

Respondent has also, through its use of the Internet website to which the domain name resolves, clearly demonstrated its intent to imitate Complainant in any way possible, and thus deceive Internet users into believing that the disputed domain name is owned by, or affiliated with Complainant for its own commercial gain.

As a result of the above, the Panel finds it proven 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 <montecarlocasinoandsportsbook.com>, be transferred to the Complainant.

Peter G. Nitter
Sole Panelist

Dated: June 8, 2005