WIPO Domain Name Decision: D2005-1342

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Corril Holding N.V.

Case No. D2005-1342

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, France.

The Respondent is Corril Holding N.V., Curacao, Netherlands Antilles, The Netherlands.

2. The Domain Names and Registrar

The disputed domain names <grandcasinomontecarlo.com> and <montecarlograndcasino.com> are registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) via email on December 23, 2005, and on December 29, 2005, as a hardcopy. On December 28, 2005, the Center transmitted by email to Tucows, a request for registrar verification in connection with the domain names at issue. Still the same day, Tucows 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 January 6, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 27, 2006.

The Center appointed Christian Schalk as the Sole Panelist in this matter on February 3, 2006. 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.

The Panel agrees with the Center’s assessment concerning the Complainant’s compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the Rules.

The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The language of the proceedings is English.

4. Factual Background

The Complainant is the founder and manager of the “Casino de Monte-Carlo” which it operates for more than 140 years since it has been granted a monopoly for casino and gambling industries for the territory of the Principauté de Monaco by the authorities of this country in 1863. This casino has become famous worldwide as one of the most significant symbols of the Principauté de Monaco and attracts a clientele from all over the world.

The Complainant is the owner of the trademark registration No. 17485 CASINO DE MONTE CARLO with priority date of August 13, 1996, in Monaco, covering goods and services in the Int. classes 3, 9, 12, 14, 16, 18, 28, 34, 35, 38, 39, 41 and 42.

The Complainant is also owner of the International trademark registration No. 773867 CASINO DE MONTE CARLO, with priority date of January 21, 2002, in various western European countries, Antigua and Barbuda and in Japan, covering goods and services in Int. class 41.

The Respondent registered the domain names at issue on June 22, 2004. Their registrations have been renewed on June 22, 2005.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain names are confusingly similar to the Complainant’s trademarks as they incorporate the terms “Casino” and “Monte-Carlo” which form part of the Complainant’s trademarks.

The Complainant argues that the addition of the generic term “grand” before the term “Casino” does not render the disputed domain name dissimilar or legally different from the Complainant’s trademark. In this context the Complainant cites Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 in which the panel stated, that “the addition of a generic term” (…) “to the domain name in dispute has little, if any, effect on a determination of legal identity between the domain name and the mark”.

The Complainant asserts further that the term “grand” is frequently associated with the casino business since many casinos are called “Grand Casino” such as the casinos in Biloxi and Gulfport (Mississippi, USA), Coushatta (Louisiana, USA), Las Vegas (Nevada, USA) and Baden and Luzern in Switzerland. In French, “grand” means large, great, sublime or sumptuous. Therefore, this term is usually applied by casinos being luxurious establishments. The Complainant cites in this context the UDRP decision on the domain name <luckymontecarlocasino.com> (Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Integrity Ltd., WIPO Case No. D2005-0404) where the panel of that case found that “the addition of the term “grand” to the disputed domain name does not detract from the similarity to the Complainant’s trademark since this term is strongly linked to the casino industry”. That Panel had verified his findings through searches in search engines such as Google, where he had entered the terms “casino” and “grand” independently or together. His searches revealed that the term “grand” is commonly used in the casino industry and the addition and association of “grand” to the term “Monte Carlo” evokes the Casino de Monte Carlo. The Complainant argues also that similar UDRP decisions have been rendered concerning the domain name <luckymontecarlocasino.com> (Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Integrity Ltd., WIPO Case No. D2005-0404) and regarding the domain name <montecarlojackpot.net> (Société des Bains de Mer et du Cercle des Etrangers à Monaco v. International Services Inc. et al., WIPO Case No. D2000-1328).

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

The Complainant contends that the Respondent can not claim that he has become known by these domain names since they have been registered to point to the DNS servers located on “www.colosseum.com” but no A-record has been created on the name servers for these domain names.

The Complainant argues further that the Respondent has no trademark rights. The only trademark owned by the Respondent does neither contain the term “Casino” nor the term “Monte Carlo” but the term “Gay TV”.

The Complainant asserts also, that the Respondent is a legal entity residing in the Netherlands Antilles, which have no geographical links with the Principauté de Monaco. Furthermore, the Respondent has not received any license or authorization from the authorities of the Principauté de Monaco to operate a casino in Monaco or in the geographical area of Monte Carlo.

Moreover, the Complainant contends that the Respondent has neither been authorized by the Complainant to use its 140 years old famous trademark CASINO DE MONTE CARLO nor to register and use the disputed domain names. The Complainant has also no business relationships at all with the Respondent.

The Complainant alleges, moreover, that the domain names at issue were registered and are being used in bad faith.

The Complainant believes that the Respondent was aware of the strong notoriety and world renown of the Complainant’s trademarks when he registered the disputed domain names. Furthermore, the Respondent was aware of the Complainant and, therefore, in bad faith when registering the domain names at issue since the Respondent’s main business activities are in the field of e-gambling but also in adult services. The Complainant reports that having carried out searches it appears that the Respondent may only be a front company for a huge group companies and casino professionals providing gambling and adult services in the Internet, such as “Riscard Trading”, “Minivegas Srl”, “sex.tv” and “gay.tv”. All these more than 841 different companies are located at the same postal address as the Respondent. None of these companies, however, is listed on an official or commercial company listings for this postal address. The only company listed on the Respondent’s postal address is the company “HBM Group” which stands for “Herman Behr Management Group”. The Complainant contends that the Respondent must be somehow affiliated with HBM or a certain Herman Behr, as some of the Respondent’s subsidiaries use the same postal- and email address as the HBM Group. The Complainant cites speeches and writings available on the Internet as evidence of Mr. Herman Behr role as the driving force in bringing gambling to the Internet and to run casino websites from Curaçao.

The Complainant argues further that the fact that the domain names at issue are inactive shows bad faith use. The Respondent has created other rich content websites such as “www.riscardtrading.com” and “www.vegaspokercasino.com”. The Complainant concludes from these facts that the Respondent knows how to create websites. Therefore, since he had more than one year of time to build up such a site, the only reason why the Respondent registered the domain names at issue was, to prevent the Complainant from using them. It is the Complainant’s opinion that such a passive use and the renewal of the disputed domain names in 2005 demonstrates their bad faith registration and use in accordance to paragraph 4(b)(ii) of the Policy. In this context, the Complainant cites the UDRP decision regarding the domain name <telstra.org> (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003) where the panel found that inactive use constitutes bad faith registration and use.

The Complainant believes also, that no legitimate use of the domain names at issue could be imagined since any active website using them would constitute an act of passing off or another type of infringement on the Complainant’s rights.

Moreover, the Complainant argues that even the registration of the disputed domain names for future use would constitute bad faith. In the Complainant’s opinion there is no reason to wait for such explicit bad faith use. In this context, the Complainant cites UDRP decisions where the panel decided that “the very act of having acquired them [the disputed domain name] raises the probability of Respondent using them in a manner that is contrary to Complainant’s legal rights and legitimate interests” and “to argue that Complainant should have to wait for some future use of the disputed domain name to occur in order to demonstrate Respondent’s bad faith use is to render intellectual property law into abuse by the Respondent” (Comerica Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0615).

B. Respondent

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

6. Discussion and Findings

The Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law it deems applicable (paragraph 15(a) of the Rules). Pursuant to paragraph 4(a) of the Policy, a domain name can be transferred only where the Complainant has proven that each of the following three elements is present:

(A) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(B) The domain name holder has no rights or legitimate interests in respect of the domain name; and

It is essential to dispute resolution that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to assure that a respondent is given adequate notice of proceedings initiated against him, and a reasonable opportunity to respond (paragraph 2(a) of the Rules).

In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by the Center.

Since the Respondent has not contested the allegations of the Complainant, the Panel shall decide on the basis of the Complainant’s submissions, and all inferences that can reasonably be drawn therefrom (See Bayerische Motorenwerke AG v. Dariusz Herman, Herman DOMCREATE et co., WIPO Case No. DNAME2004-00001).

A. Identical or Confusingly Similar

The Complainant has established trademark rights in the term “Casino de Monte Carlo”. These trademark rights are not identical with the domain names at issue.

However, the Panel finds that the Complainant’s trademarks are confusingly similar with both disputed domain names for the following reasons:

Both domain names incorporate the words “Casino” and “Monte Carlo”. These two nouns are the most distinctive parts of the domain names and the Complainant’s trademarks. The combination of these words is distinctive for, and brings to mind the Complainant’s business activities. Having inverted the order of these terms in the domain names at issue does not render them dissimilar (Société des Bains de Mer et du Cercle des Etrangers à Monaco v. LaPorte Holdings, LLC., WIPO Case No. D2005-0526). Also the French preposition “de” has little distinguishing effect and even more the omission of it in the disputed domain names (see Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Domain Active Pty. Ltd., WIPO Case No. D2005-0527).

The addition of the term “grand” does not render the disputed domain name legally different from the Complainant’s trademark. It is well established in UDRP precedent, that minor variations, such as adding short letter or number groups or even generic words to a trademark, are each insufficient in and of itself, when used in forming a domain name that results from modifying the trademark, to confer requisite and sufficient distinctiveness to that domain name to avoid user confusion (see e.g. Caesars Entertainment, Inc. v. Nova Internet Inc., WIPO Case No. D2005-0411; Lookheed Martin Corporation v. The Skunkworx Custom Cylce, WIPO Case No. D2004-0824; National Collegiate Athletic Association v. Dusty Brown, WIPO Case No. D2004-0491). Furthermore, the Panel finds that the term “grand” is widely used in the casino industry. This could lead Internet users to the conclusion that an affiliation of some sort exists between the Complainant and the Respondent, although, in fact, no such relationship exists (see Caesars Entertainment, Inc. v. Nova Internet Inc., WIPO Case No. D2005-0411 with further references).

B. Rights or Legitimate Interests

According to the material brought before the Panel and in the absence of a response to the Complaint, the Panel finds that the Respondent cannot demonstrate legitimate rights in the disputed domain name for the following reasons:

The Respondent has not provided any evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name. Especially, there is no evidence that the Respondent is known by the domain name at issue.

The Complainant has documented that it is granted a monopoly for casino and gambling industries for the territory of Monaco, and therefore, it is the sole company that can organize games and gambling in Monaco.

Moreover, the Complainant has established that the CASINO DE MONTE CARLO trademarks are well known worldwide for a significant period of time. The Complainant has not granted the Respondent rights to use these trademarks and that there is no affiliation with the Respondent. The monopoly position and the world renown of the Complainant make these assertions easy to accept for the Panel (see Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Domain Active Pty. Ltd., WIPO Case No. D2005-0527).

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent registered and uses the domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). The Policy paragraph 4(b) sets forth four non-exclusive criteria for the Complainant to show bad faith registration and use of domain names:

(1) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(2) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(3) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(4) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location of a product.

According to the material brought before the Panel and in the absence of a response to the Complaint, the Panel finds that the disputed domain name has been registered and used by the Respondent in bad faith in accordance with paragraph 4(b)(iv) of the Policy for the following reasons:

It is a well-established principle under prior UDRP decisions (See Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022) and under the Policy (see Section 2), that the domain name registrant represents and warrants to the registrar that, to this knowledge the registration of the domain name will not infringe the rights of any third party. The Panel believes that it is most unlikely that the Respondent selected the Complainant’s distinctive trademarks unintentionally and inadvertently put them in combination with the term “grand” when selecting its domain names. The Panel finds that since the Respondent is involved in Internet gambling- and online casino business and given the world wide reputation of the Complainant in the casino business, the Respondent must have been aware of the Complainant and its trademark rights at the time of the registration of the disputed domain names. Therefore, the Panel concludes, that the Respondent sought to register said domain names because of their association with the Complainant, the Complainant’s reputation and the Complainant’s business.

As far as the question is concerned, whether the Respondent uses the disputed domain names in bad faith, it appears from the information available to the Panel that they are not in use since they are not linked with an active website.

Since the Telstra case (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003), various administrative panels held that the passive use of a domain name constitutes bad faith registration and use under certain circumstances The panel of that case noted that the question whether inactivity by the respondent constitutes bad faith depends “on the particular facts of a specific case” and that the “Administrative Panel must give close attention to all circumstances of the Respondent’s behavior”.

The Respondent has engaged in “passive holding” of the domain names at issue. The Respondent has also failed to file a response or make any attempt to traverse the claims and submissions made by the Complainant.

Moreover, the Respondent must have been aware of the Complainant and therefore, intentionally chose to register the domain names. Any attempt to actively use any of the two domain names at issue would inevitably lead to a likelihood of confusion to the source, sponsorship, affiliation, or endorsement of the registrant’s website among Internet users who would inevitably be led to believe that such website would be owned by, controlled by, established by or in some way associated with the Complainant (Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131).

Such use could start at Respondent’s choice any day and would be clearly contrary to the Complainant’s legal rights and legitimate interests. As stated in previous UDRP decisions, “to argue that the Complainant should have to wait for some future use of the disputed domain names to occur in order to demonstrate Respondent’s bad faith use is to render intellectual property law into an instrument of abuse by the Respondent. The fact that this misappropriation may occur in any as yet undetermined manner at an uncertain future date does negate the Respondent’s bad faith. On the contrary, it raises the specter of continuing bad faith abuse by the Respondent of the Complainant’s trademarks and legitimate business interests” (Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028; Myer Stores Limited v. David John Singh, WIPO Case No. D2001-0763; Comerica Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0615).

Therefore, the Panel is satisfied, that the passive holding of the domain names at issue amounts to a use of them in bad faith by the Respondent.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(b)(iv) of the Policy and 15 of the Rules, the Panel orders that the domain names, <grandcasinomontecarlo.com> and <montecarlograndcasino.com> be transferred to the Complainant.

Christian Schalk
Sole Panelist

Dated: February 20, 2006