ADMINISTRATIVE PANEL DECISION
Société des Bains de Mer et du Cercle des Étrangers à Monaco v.
World Casino Company
Case No. D2000-1331
1. The Parties
The Complainant is Société des Bains de Mer et du Cercle des Étrangers à Monaco having its registered office at Place du Casino, Monte Carlo, MC 98000, Principauté de Monaco.
The Respondent is World Casino Company, 4821 Lankershim Blvd, Suite F353
North Hollywood, CA, 91601, USA.
2. The Domain Name and Registrar
The Domain Name at issue (hereinafter the Domain Name) is:
The registrar of the Domain Name is Network Solutions Inc., 505 Huntmar Park Drive,
Herndon, Virginia, 20170, USA.
3. Procedural History
On October 4, 2000 Complainant filed a complaint via e-mail (hereinafter the Complaint) with the WIPO Arbitration and Mediation Center (hereinafter the Center). The Center received the hardcopy of the Complaint on October 5, 2000. In a letter dated October 13, 2000 the Center informed the Registrar, Network Solutions Inc., that the Complaint had been submitted to the Center regarding the Domain Name, and asked for a verification of the registrant information. The said verification results from the Registrar were received on October 17, 2000.
The Center then proceeded to verify that the Complaint satisfied the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the ICANN Rules) and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the WIPO Rules), including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative on October 24, 2000.
In a letter dated October 24, 2000 the Center informed the Respondent of the commencement of the proceeding as of October 25, 2000 and of the necessity of responding to the Complaint within 20 days. Evidence provided by the Center supports the finding that the Center acted diligently in its attempts to inform the Respondent of the proceeding.
On November 11, 2000 the Center received a response (hereinafter the Response) from the Respondent within the 20 day limit as provided for by the Center. On November 17, 2000 the Center received comments from the Complainant requesting that various e-mails be accepted as evidence and sent to the Panelist with the Complaint, which were accepted by the Center.
On November 28, 2000 the Center also informed the Parties that an administrative panel would be appointed. The Panel believes it was constituted in compliance with the ICANN Rules and the WIPO Rules and has also issued a Statement of Acceptance and Declaration of Impartiality and Independence.
The Panel has reviewed the documentary evidence provided by the parties and the Center and agrees with the Center’s assessment that the Complaint complies with the formal requirements of the ICANN Rules and the WIPO Rules.
The Panel has received no further submissions from either party since its formation.
The Panel is obliged to issue a decision on or prior to December 11, 2000 in the English language and is unaware of any other proceeding, which may have been undertaken by the parties or others in the present matter.
4. Factual Background
The Complainant is a limited liability company, incorporated April 1, 1963, enrolled with the registry of companies under number 56 S 00523. The Complainant is the founder and manager of the Casino of Monte-Carlo, and has the monopoly for casino and gaming industries for the territory of the Principauté de Monaco.
No information has been supplied regarding the attributes and businesses of the Respondent although it appears that the Respondent maintains offices in North Hollywood, California USA.
As shown by the evidence, the Respondent registered the Domain Name, “monacocasino.net” on or about May 14, 1999. This Domain Name does not direct to a web site or other on-line presence despite having been registered over eighteen months ago. The Domain Name when entered into an Internet search engine does not produce any web site or holding page.
The Complainant is the owner of the trademark “Casino de Monte-Carlo”, filed in August 13, 1996, to the Monaco Trademark Office, covering many different products and services. The Complainant's trademark covers products and services in the field of computers and telecommunications, i.e., Internet communication services, labelled as “equipment for data processing and computer”, by “Telecommunications”, and by services of “computer programming”.
There is no relationship between the Respondent and the Complainant. The Respondent is not a Licensee of the Complainant nor has it otherwise obtained any authorisation to use the Complainant’s marks or apply for any Domain Name incorporating any of these marks.
5. Parties’ Contentions
The Complainant maintains that the Respondent is a cybersquatter. The Domain Name does not direct to a web site or other on-line presence despite having been registered over eighteen months ago. The Domain Name when entered into an Internet search engine does not produce any web site or holding page.
The Complainant continues by alleging that the Domain Name is practically identical and confusingly similar to the Complainant’s Casino de Monte Carlo trademark.
The Complainant alleges that the “Casino” part of the Domain Name is identical to the first term in its trademark, Casino de Monte-Carlo.
The Complainant alleges that the “Monaco” part of the Domain Name is confusingly similar or identical to the third term of its trademark, Casino de Monte-Carlo. The Complainant believes that the substitution of the term of the trademark “Monte-Carlo” by the term “Monaco” in the Domain Name “monacocasino.net”, does not suppress this strong similarity between the two terms, as it is very common to use one or the other term indifferently to designate the Principauté and thus, these terms are perfect synonyms.
The Complainant further alleges that this confusing similarity necessarily induces confusion amongst the public, between the Domain Name and the Casino of Monte-Carlo, over which the Complainant has a monopoly, consequently being the sole company that can organise games and gambling in Monaco.
The Complainant alleges that in searching worldwide for signs that contain the terms “Casino” and “Monaco”, and signs that contain the terms “Casino” and “Monte-Carlo”, on the Compumark database, it appears that the Respondent does not own or use any trademark concerning these names in any country world-wide
The Complainant alleges that the Respondent has no intellectual or commercial property rights over the “monacocasino” name or any other similar name.
The Complainant alleges the lack of legitimacy by stating that the Respondent has not used the Domain Name, by either developing a web site at this address or otherwise.
The Complainant alleges that the registration of the Domain Name, given the Complainant’s well known mark, is inherently deceptive and clearly done in bad faith with the intent to create confusion amongst the public.
The Complainant maintains that given the strong notoriety of the Complainant’s trademark, the Respondent could not ignore at the time of registration that the registration of the Domain Name was made in fraud of the Complainant’s rights.
The Complainant continues to allege bad faith (pursuant to Paragraph 4 (b) (iv) of the ICANN Policy) by stating that if the Respondent did in fact intend to use the Domain Name by developing a web site at this address, and given the strong notoriety of the Complainant's mark, as well as the fact that the Complainant has a monopoly for casino and gaming industries in Monaco/Monte-Carlo, the Complainant finds that by registering and then using the Domain Name, the Respondent would intentionally attempt to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's web sites.
The Complainant is of the opinion that the Domain Name is so obviously connected with the Complainant and its products or services that its very use by someone with no connection with the Complainant suggests “opportunistic bad faith” (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net Case No. D2000-0226, Veuve Cliquot Ponsardin, Maison Fondé en 1772 v. The Polygenic Group Co. Case No. D2000-0163 and Charles Jourdan Holding AG v. AAIM Case No. D2000-0403).
Furthermore, the Complainant alleges bad faith on the part of the Respondent (pursuant to Paragraph 4(b)(i) of the ICANN Policy) because of the fact that the Respondent has attempted numerous times to convince or intimidate the Complainant into buying the Domain Name for valuable consideration ($25000 USD) in excess of the Respondent’s documented out-of-pocket costs directly related to the Domain Name. Paragraph 4(b)(i) of the ICANN Policy finds that this act is a blatant example of bad faith.
In its Response, the Respondent alleges that there is no similarity between the Domain Name and the Complainant’s trademark because of the fact that the Domain Name of the Respondent “monacocasino.net” does not contain the same words as the Complainant's trademark « Casino de Monte-Carlo ». Furthermore, the Respondent maintains that there is no confusion between the terms “Monte-Carlo” and “Monaco.”
The Respondent alleges its legitimate interests by stating that it is the registered owner of the Domain Name and that it was and is using it currently. The Domain Name “monacocasino.net” was an active portal to its main offshore gaming operation. The Respondent adds that the Complainant's claim that it does not have rights or legitimate interests in the “monacocasino.net” is not valid. Furthermore, the Respondent states that it is not required to “exploit” its Domain Name as the Complainant claims.
The Respondent goes on to allege the fact that it was never and is not acting in bad faith by stating that there is no bad faith in registering a Domain Name that has no trademark. If it chooses to sell the Domain Name for a profit, that does not fall under “bad faith.” The Complainant also fails to show that the Domain Name is so obviously connected with the Complainant. Furthermore the Respondent maintains that it would be far reaching at best to assume that the public would associate the Domain Name “monacocasino.net” with the “Casino de Monte-Carlo.”
6. Discussion and Findings
Pursuant to the Uniform Domain Name Dispute Resolution Policy (hereinafter the ICANN Policy) the Complainant must convince the Panel of three elements if it wishes to have the Domain Name transferred. It is incumbent on the Complainant to show:
i) that the Domain Name is identical or confusingly similar to a trademark in which it holds rights;
ii) that the Respondent has no rights or legitimate interests in the Domain Name;
iii) that the Domain Name was registered and used in bad faith.
After having reviewed both parties’ allegations as well as all the evidence provided therewith, the Panel hereinafter considers each of these three elements below.
Identical or Confusingly Similar to Trademark
The Complainant provided evidence to the effect that it was registered owner of the trademark casino de Monte-Carlo.
It is the Panel’s opinion that the Domain Name registered by the Respondent, while it is not identical to the Complainant’s trademark, is similar to it, if only by the ideas suggested by this Domain Name. The Panel is of the opinion that the registered words “Monaco” and “Casino” are essentially synonyms to the words “Monte-Carlo” and “Casino”, which happen to be the principal elements in the Complainant’s trademark. The Panel, applying its judicial knowledge is of the opinion that even though Monaco is the Principauté and Monte-Carlo is the city within this Principauté, these terms are used interchangeably by the public at large. The words “Monaco” and “Casino” used together in the Domain Name, create a strong similarity and impression that could easily induce the general public into believing that the Domain Name, the Domain Name proprietor and any web site operated from the Domain Name are associated with the Complainant. Furthermore, in support of this confusing similarity the Panel notes that in the Petit Larousse Illustré 1982 p. 1532, Monte-Carlo is defined as “quartier de la Principauté de Monaco où se trouve le casino”. Further on page 1529 Monaco is defined as “Principauté du littoral de la méditerranée: grand centre touristique: casino”.
The Panel is also of the opinion that the Complainant has acquired substantial goodwill and reputation in relation to its business activities of organising games and gambling in Monaco as well as managing the Casino of Monte-Carlo. The Complainant provided evidence to the effect that it has the exclusive right in exploiting the aforementioned activities since 1863. This notoriety creates a strong affinity between the Complainant and the Domain Name which would further confuse the public as to who is affiliated to this Domain Name.
In determining whether a Domain name creates confusion with a trademark, it is the Panel’s opinion that one has to take into account all of the circumstances including inter alia (i) the inherent distinctiveness of said trademark and the extent to which it has become known; (ii) the length of time that the trademark has been in use; (iii) the nature of the service, business or trade with which it is being associated; (iv) the degree of resemblance between the trademark and the Domain Name in appearance and sound or what is suggested by them.
The Panel, upon reading the Respondent’s Response, is of the opinion that other than denying that the Domain Name is identical or similar to the Complainant’s trademark, there has been no explanation or evidence offered by the Respondent to establish the contrary. Contrary to the Respondent’s view, the Panel is of the opinion that there is confusion between the terms “Monaco” and “Monte-Carlo”. In view of the above the Panel finds that the Complainant has met its burden of proof as established by paragraph 4(a)(i) of the ICANN Policy.
No Rights or Interest
Paragraph 4(a)(ii) of the ICANN Policy inquires as to whether or not the Respondent has any rights or legitimate interests vested in the Domain Name. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (i) use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has commonly been known by the Domain Name; and (iii) legitimate non-commercial or fair use of the Domain Name.
In its Response, the Respondent maintains that being the registered owner of the Domain Name gives him a legitimate interest in it. The Respondent’s argument that the “first one to register the Domain Name has automatic legitimate rights in it” has never been judged to be a valid justification to demonstrate legitimate use of a Domain Name. If that argument was to be considered valid every Respondent involved in these administrative proceedings, having obviously registered the Domain Name before the Complainant, would automatically be allowed to maintain property over the Domain Name. This would essentially render all administrative proceeding pointless, and thus the Panel considers that this point is moot. As to the argument that the Respondent is using the Domain Name (or was using it previously), the Panel cannot confirm this usage since there was no evidence produced to support this claim.
Furthermore, in an e-mail sent by the Respondent to the Complainant on October 21, 2000, the Respondent stated that it was unfortunate that the Complainant did not approach it with an offer to buy the Domain Name before deciding to use dispute resolution. The Respondent goes on to state that the Domain Name is (and implies that is was) for sale. The Panel is of the opinion that this statement, which indicates that the Domain Name was readily available for sale, contradicts the Respondent’s claim that it was using the Domain Name all along for legitimate purposes.
The Panel is of the opinion that there is no evidence to support any finding of a right or legitimate interest in the Domain Name on behalf of the Respondent. The Respondent has not shown use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services, nor has it attempted to show that it has commonly been known by the Domain Name nor has it attempted to show a legitimate non-commercial or fair use of the Domain Name.
Pursuant to paragraph 4(a)(iii) of the ICANN Policy it is incumbent upon the Complainant to prove that the Respondent has registered and is using the Domain Name in bad faith. Paragraph 4(b) of the ICANN Policy provides a number of non-exhaustive circumstances which, if found to be present, are evidence of the registration and use of a Domain Name in bad faith. In particular, paragraph 4(b)(iv) of the ICANN Policy holds that, if the circumstances indicate that by using the Domain Name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site then this is evidence of bad faith registration and use on behalf of the Respondent.
The Panel is of the opinion that the present case is an illustration of the kind of bad faith which the ICANN Policy addresses at paragraph 4(b)(iv). It is apparent that the only intent of the Respondent was an attempt to appropriate the goodwill of the Complainant and to cause confusion amongst anyone who learned of the Domain Name into believing that this Domain Name, its proprietor or any potential web site, was associated with the Complainant, and to redirect traffic intended for the Complainant for its own purposes.
The Respondent stated that it did not have to exploit the Domain Name, and that holding it with the intent of using it as a portal was valid and not susceptible to any negative inferences. The Panel disagrees with the Respondent’s view and is of the opinion that the passive holding of the Domain Name since its registration in question, combined with the lack of explanation or evidence provided by the Respondent to demonstrate the good faith registration or usage of this Domain Name, all infer bad faith, pursuant to paragraph 4(a)(iii) of the ICANN Policy, on the part of the Respondent. (see Telstra Corporation v. Nuclear Marshmallows, Case No. D2000-0003)
Upon diligent examination of the various e-mails that were sent to the Complainant by the Respondent, the Panel is also of the opinion that the Respondent acted in bad faith pursuant to paragraph 4(b)(i) of the ICANN Policy because of the fact that the Respondent has attempted numerous times to convince or intimidate (by threatening prolonged and costly legal actions, etc.) the Complainant into buying the Domain Name for valuable consideration ($25000 USD) in excess of the Respondent’s documented out-of-pocket costs directly related to the Domain Name
Furthermore, the Panel is of the opinion that the Domain Name is so obviously connected with the Complainant and its services that its very use by someone with no connection with the Complainant suggests “opportunistic bad faith” (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net Case No. D2000-0226 and Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co. Case No. D2000-0163).
In view of the above , the Panel is of the opinion that the Complainant has met its burden of proof and has proven that the Respondent’s actions have been in bad faith pursuant to paragraphs 4(b)(i) and 4(b)(iv) of the ICANN Policy.
For the foregoing reasons, the Panel finds:
- that the Domain Name registered by the Respondent is confusingly similar to the trademark to which the Complainant has rights;
- that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
- the Domain Name has been registered and is being used by the Respondent in bad faith.
Accordingly, pursuant to paragraph 4(i) of the ICANN Policy, the Panel doth orders that the registration of the Domain Name:
be transferred to the Complainant by the Registrar, Network Solutions Inc.
Jacques A. Léger, Q.C.
Dated: December 11, 2000