Complainant is La Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco of Monte Carlo, Monaco, represented by De Gaulle Fleurance & Associés, France.
Respondent is Whois Agent, Domain Protection Services, Inc. of Denver, Colorado, United States of America ("United States") / Nilesh Hirani, Synergy Technical Solutions of San José, Costa Rica.
The disputed domain name <montecarlo.site> (the "Disputed Domain Name") is registered with Name.com, Inc. (Name.com LLC) (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 10, 2017. On March 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 15, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 20, 2017.
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" or "UDRP"), 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 10, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 11, 2017.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on April 20, 2017. 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.
Complainant in this administrative proceeding is Société Anonyme des Bains de Mer et du Cercle des Etrangers, a Monegasque company. Since April 2, 1863, Complainant has been granted a monopoly by the Prince of Monaco for casino and gambling activities for the territory of Monaco.
Complainant is the holder of the word mark CASINO DE MONTE-CARLO filed with the Monaco Trademark Office on August 13, 1996 under the number 17485 and renewed on June 13, 2016 under the number R96.17407. Complainant uses its CASINO DE MONTE-CARLO trademark in connection with gambling and casino services and for online gambling services via a licensee.
The Disputed Domain Name was registered on January 26, 2017. The Disputed Domain Name has been used to refer to a website bearing a "Monte Carlo" logo and promoting online gambling services.
Complainant considers the Disputed Domain Name to be confusingly similar to trademarks in which it claims to have rights. Complainant argues that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to Complainant, Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to Complainant, Respondent has not been commonly known by the Disputed Domain Name. Complainant claims that the Disputed Domain Name was registered and used in bad faith. Complainant claims that Respondent knew, or at least should have known, of the existence of Complainant's trademark, and that Respondent's use of the Disputed Domain Name leads Internet users to believe that there is an affiliation between Complainant and an unrelated online gambling operator.
Respondent did not reply to Complainant's contentions.
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. The standard of proof is the balance of probabilities.
Thus for Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
i. the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
iii. the Disputed Domain Name has been registered and is being used in bad faith.
The Panel will deal with each of these requirements in turn.
To prove this element Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant has established that there are trademarks in which Complainant has rights. The mark has been registered and used.
The Disputed Domain Name <montecarlo.site> differs from Complainant's trademark as follows: (i) the Disputed Domain Name omits the "casino de" component and the hyphen of Complainant's trademark, and (ii) adds the suffix ".site". The Panel is of the opinion that the omission of the hyphen and of the descriptive elements "casino de" does not change the overall impression (see FC Bayern München AG v. Peoples Net Services Ltd., WIPO Case No. D2003-0464). The addition of generic Top-Level Domain suffixes can also be disregarded when comparing the similarities between a domain name and a trade mark (see Bialetti Industrie S.p.A. v. Onno Brantjes, Stichting Taxaceae, WIPO Case No. D2016-1450; Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206; Zions Bancorporation v. Mohammed Akik Miah, WIPO Case No. D2014-0269). The Panel is of the opinion that the similarities between Complainant's trademark and the Disputed Domain Name outweigh the differences, and thus, that the Disputed Domain Name is confusingly similar to Complainant's trademark.
Accordingly, Complainant has made out the first of the three elements that it must establish.
Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
It is well established under the Policy that it is sufficient for Complainant to make a prima facie showing that Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on Respondent (see Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Panel notes that Respondent has not apparently been commonly known by the Disputed Domain Name, that Respondent's use and registration of the Disputed Domain Name was not authorized by Complainant, and that there are no indications that a connection between Complainant and Respondent existed.
In addition, the Panel is of the opinion that Respondent is not "making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue" (Policy, paragraph 4(c)(iii)). The website available at the Disputed Domain Name is being used to host Respondent's own online casino services which directly compete with Complainant's own offerings. Past UDRP panels have consistently held that selling competing goods, coupled with the unauthorized use of a complainant's trademark in a confusingly similar domain name, does not qualify as a bona fide offering of goods or services under Policy, paragraph 4(c)(iii) (see Andrey Ternovskiy dba Chatroulette v. R. Vriens, Niro, WIPO Case No. D2017-0382; Bialetti Industrie S.p.A. v. Onno Brantjes, Stichting Taxaceae, supra).
Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).
In the instant case, the Panel finds that Respondent must have had knowledge of Complainant's rights in the CASINO DE MONTE-CARLO trademark at the moment it registered the Disputed Domain Name. Respondent offers services which are similar to the services offered by Complainant, and the look and feel of Respondent's website resembles the look and feel of the website operated by Complainant's authorized licensee. The Panel finds that Respondent's use of the Disputed Domain Name suggests that Respondent was aware of Complainant and its CASINO DE MONTE-CARLO mark. The Panel therefore finds that Respondent's awareness of Complainant's trademark rights at the time of registration suggests bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070, where POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith).
The Panel also considers that, by hosting a website which offers online casino services in direct competition with Complainant's or Complainant's licensee's own offerings, Respondent is disrupting Complainant's business. In the instant case, the Panel concludes that Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant's trademark. In accordance with paragraph 4(b)(iv) of the Policy, this is evidence of registration and use in bad faith.
Finally, by failing to respond to the Complaint, Respondent did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate.
In view of the above, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <montecarlo.site>, be transferred to Complainant.
Flip Jan Claude Petillion
Sole Panelist
Date: May 5, 2017