WIPO Domain Name Decision: D2005-1343

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société des Bains de Mer v. Michael Ditursi

Case No. D2005-1343

1. The Parties

The Complainant is Société des Bains de Mer, Monte Carlo Monaco represented by De Gaulle Fleurance & Associés, France.

The Respondent is Michael Ditursi, North Tonawanda, New York, United States of America, represented by Hogan & Willig, PLLC , United States of America.

2. The Domain Name and Registrar

The disputed domain name <montecarlointernationalcasino.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2005. On December 28, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On December 29, 2005, Network Solutions, LLC 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. On January 23, 2006, Respondent requested an extension of time to file a response. Following an exchange of correspondence between Respondent, the Center and Complainant, the Center granted to the Respondent an extension of ten days to file the response. In accordance the due date for Response was February 6, 2006. The Response was filed with the Center on February 4, 2006.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on February 14, 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.

4. Factual Background

Complainant is Société des Bains de Mer et du Cercle des Etrangers à Monaco, a limited liability company enrolled with the registry of companies of Monaco under number 56 S 00523. The Société des Bains de Mer has been operating a casino under the name “Casino de Monte-Carlo” for more than 140 years at the date of this complaint. The Casino de Monte-Carlo has become famous worldwide as one of the most significant symbols of the Principauté de Monaco. It attracts a clientele that comes from numerous European and non-European countries. The Société des Bains de Mer is the founder and manager of the Casino of Monte-Carlo. Since April 2, 1863, the Société des Bains de Mer 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 (Privilège des Jeux, renewed for the last time by the Ordonnance Souveraine n°8834 of March 3, 1987, a copy of this Ordonnance is attached to the complaint).

Complainant is the owner of the word mark “CASINO DE MONTE-CARLO”, filed on August 13, 1996, with the Monaco Trademark Office.

Complainant also registered the international trademark “CASINO DE MONTE CARLO” on January 21, 2002.

In addition, Complainant’s right in and to the “CASINO DE MONTE CARLO” mark have been recognized in the US by a decision of the US Court of Appeals for the Fourth Circuit dated May 19, 2003, decision attached to the Complaint.

Respondent registered the disputed domain name on October 31, 2003.

5. Parties’ Contentions

A. Complainant

Complainant claims that:

The domain name <montecarlointernationalcasino.com> is similar to Complainant’s prior trademark “CASINO DE MONTE-CARLO”.

The Respondent is a natural person residing in the United States of America, that is to say he has no link with the Principauté de Monaco.

The Respondent did not file or register any trademarks in his name in either Europe or North-America.

To the best of Complainant’s knowledge, Respondent holds no intellectual property rights over any mark that contains the terms “Casino” and “Monte-Carlo”.

The Respondent has not received any license or authorization from the authorities of the Principauté de Monaco to operate a casino in Monaco let alone the city of Monte Carlo.

Complainant has never authorized Respondent to use its 140-year old famous mark “CASINO DE MONTE-CARLO”, nor to register and use the disputed domain names, and Complainant does not have any type of business relationship with Respondent.

The Respondent therefore has no rights or legitimate interests in the disputed domain name.

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 violates Complainant's rights.

The use of the disputed domain name similarly exhibits bad faith, as the domain name <montecarlointernationalcasino.com> is merely used to deflect Internet users to download casino software from an online casino game provider. The webpage <http://www.montecarlointernationalcasino.com/download.html> contains a link for downloading Windowscasino.com casino software : <a href=http://webmaster.windowscasino.com/smartdownload.asp?affid=18341> that allows internet users to play casino games by paying with their credit card. Windowscasino.com is not linked to the Complainant. Respondent on the other hand obtains commercial advantage from forwarding internet users to use Windowscasino.com casino software through an affiliate program. Through this program, Respondent receives a percentage of the turnover Windowscasino.com makes from the internet users forwarded to them. By deflecting users, the Respondent has shown bad faith use of the domain name that clearly falls within the prime example given in article 4(b) (iv) of the Policy: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location”. A similar decision was reached by the panel in Société des Bains de Mer et du Cercle des étrangers à Monaco v. Montecarlo Online Casino (MOC), WIPO Case No. D2005-0338 regarding the domain name <montecarlo-onlinecasino.com> which stated: “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).”

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.

The Respondent has moreover used the good reputation of Complainant’s trademark to sell partnerships in an unrelated company called MonteCarloInternationalCasino.com LLP.

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.

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

B. Respondent

Respondent claims:

That the World Intellectual Property Organization lacks jurisdiction over Respondent because he is a United States citizen.

That the World Intellectual Property Organization lacks jurisdiction over Respondent because Complainant has shown no proof that Respondent has subjected himself to the jurisdiction of the Center (i.e. WIPO) through a registration agreement or otherwise.

That the domain name <montecarlointernationalcasino.com> is not similar to Complainant’s name “Casino de Monte Carlo” as the term “international” has been inserted and the order of the words is different.

That the search engine “www.google.com” reveals “about 2.740.000 results when searching the name monte carlo casino. While some are related to Complainant, many are not.

That the term Monte Carlo has been diluted by continual use in commerce by third parties.

That Respondent makes no mention of “Casino de Monte-Carlo” on its website.

That there are no images of the city of Monte Carlo or the nation of Monte Carlo on the Respondent’s website.

That the name of the city of Monte Carlo is not subjected to copyright.

That Internet users who type the disputed domain name into their browser would not, in any way, believe that they have accessed a website operated by Casino de Monte Carlo.

That the Respondent’s website page “about us” clearly states who operates the disputed domain name and makes no mention of the City of Monte Carlo or Monaco.

That, the Wisconsin matter is irrelevant to the issue of the disputed domain name.

Preliminary Issues:

I. Jurisdiction.

The disputed Domain Name is registered with Network Solutions which is an accredited domain name Registrar for domain names ending in “.com”. The Uniform Domain Name Dispute Resolution Policy has been adopted by all accredited domain names Registrars, Network Solutions included. Therefore, the Respondent by registering the disputed domain name with Network Solutions has accepted the Domain Name Dispute Resolution Policy.

The Panel agrees with what was affirmed in Beiersdorf AG v. Web4comm Srl Romania WIPO Case No. DRO2005-0002, namely that: “It is the Complainant’s discretion to select the administrative dispute resolution provider from among those approved by ICANN (paragraph 4(d) of the Policy). The Center is one of those providers”.

In addition, in Deutsche Telekom AG v. Oded Zucker, WIPO Case No. D2004-0749 the finding was: “The Respondent’s first contention, that the Complainant has failed to prove that the Respondent submitted to the Policy, is without merit. The Complaint expressly states that the registration agreement, pursuant to which the Domain Names were registered, incorporated the Policy. This has also been verified by the Registrar. Furthermore, all Registrars are contractually bound to the Internet Corporation for Assigned Names and Numbers (ICANN) to incorporate the Policy in their registration agreements. There is no evidence that the Registrar has failed to comply with this requirement. In these circumstances, the Panel is satisfied that the Respondent submitted to the Policy when he registered the Domain Names.” and that “The Respondent’s next contention is that any submission by him to the Policy was invalid under the applicable law. The Respondent suggests that the applicable law was Israeli. The Panel is not satisfied that this is correct; it is more likely that the registration agreement was expressed to be governed by New York law. In any event, the Panel is wholly unpersuaded that the Respondent has made out any case of invalidity of the Policy or his submission to it under any law which might apply.”.

The Panel thus finds that the Center has jurisdiction over the case, that the Panel was properly constituted and that there are no legal obstacles to issue a decision regarding the disputed Domain Name.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain name registered by the Respondent be transferred to the Complainant:

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

2) the Respondent has no rights or legitimate interests in respect of the domain name; and

3) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds the disputed domain name <montecarlointernationalcasino.com> to be confusingly similar to the trademark CASINO DE MONTE CARLO owned by the Complainant.

As indicated by the Complainant, the domain name incorporates both nouns (“Casino” and “Monte-Carlo”) of Complainant’s trademarks. Although the nouns in the disputed domain name are used in inverse order and the preposition “de” (“from” or “of” in English) is omitted, this has little influence on the similarity between the disputed domain name and Complainant’s trademark. The overall impression and the connotations given by the nouns leads the Internet user to believe that the disputed domain name is affiliated with Complainant. In La Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Domain Active Pty. Ltd., WIPO Case No. D2005-0527 regarding the domain name <montecarloresortcasino.com>, the panel arrived to a similar conclusion i.e. “The disputed domain name is confusingly similar to Complainant’s trademark as it incorporates nouns, “casino” and “Monte-Carlo” of Complainant’s trademark. Having inverted the order of the nouns in the mark does not render the disputed domain name legally different. The inversion merely reflects a difference in usage or placement of the adjectively used noun (Monte-Carlo) in relation to the principal noun (casino) between the English and French language”. Moreover, in GA Modefine SA v. Armani International Investment, WIPO Case No. D2000-0305, the Panel affirmed: “The prior trademarks of the Complainant in their distinctive part-“Armani”-, are identical to the domain name “Armaniinternational.net” of the Respondent, as the adjunction of the trite adjective “international” would not modify the attractive power of the word “Armani”.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The respondent in a UDRP proceeding does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:

a) that before any notice to the respondent of the dispute, he or she used or made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

b) that the respondent is commonly known by the domain name, even if he or she has not acquired any trademark rights; or

c) that the respondent intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Respondent does not have any connection or affiliation with the Complainant, who has not licensed or otherwise authorised Respondent to use or apply for any domain name incorporating Complainant’s trademark. Respondent has not alleged any facts or elements to justify prior rights and/or legitimate interests in the disputed domain name. Respondent does not appear to make any legitimate use of the domain name for non-commercial activities. On the contrary, the Respondent is, for his own commercial gain, siffoning internet users looking for Complainant’s services to the website associated with the disputed domain name. Such use cannot be considered bona fide.

Accordingly, the Panel finds that the Complainant has satisfied the burden of proof with respect to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:

i) circumstances indicating that the holder 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 the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

ii) the holder 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 holder has engaged in a pattern of such conduct; or

iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s web site or location or of a product or service on the holder’s web site or location.

Accordingly, for a Complainant to succeed, the Panel must be satisfied that the domain names have been registered and are being used in bad faith.

In the absence of contrary evidence, the Panel finds that, given the widespread use and fame of Complainant’s trademark and activities, Respondent had actual knowledge of Complainant’s trademark when he registered the domain name. The Panel, in accordance with previous decisions issued under the UDRP, is of the opinion that actual knowledge of Complainant’s trademark and activities at the time of the registration of the disputed domain may be considered an inference of bad faith (See Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226 and WIPO Case No. D2000-1409, Sony Kabushiki Kaisha also trading as Sony Corporation v. Inja, Kil “It is inconceivable that the Respondent could make any active use of the disputed domain name without creating a false impression of association with the Complainant. The Respondent was not authorized by the Complainant to use neither its mark nor the disputed domain name”.

As regards Respondent’s use of the domain name, it appears that Respondent’s domain name is merely used to deflect Internet users to download casino software from an online casino game provider that allows Internet users to play casino games by paying with their credit card. Respondent thus obtains commercial advantage from forwarding Internet users to use “Windowscasino.com” casino software through an affiliate program. Through this program, Respondent receives a percentage of the turnover “Windowscasino.com” makes from the Internet users forwarded to them. By deflecting users, the Respondent has shown bad faith use of the domain name that clearly falls within the example given in article 4(a)(iv) of the Policy: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location”. A similar decision was reached by the panel in Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Montecarlo Online Casino (MOC), WIPO Case No. D2005-0338 regarding the domain name <montecarlo-onlinecasino.com> which stated: “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).”

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 <montecarlointernationalcasino.com> be transferred to the Complainant.

Fabrizio Bedarida
Sole Panelist

Dated: February 28, 2006