WIPO Domain Name Decision: D2006-0289

Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Empire Online Ltd

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 Empire Online Ltd, Town Tortola, British Virgin Islands, United Kingdom of Great Britain and Northern Ireland, represented by Howrey LLP, United Kingdom of Great Britain and Northern Ireland.

The disputed domain name <monacogoldcasino.com> is registered with Dotster, Inc..

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2006. On March 8, 2006, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On March 8, 2006, Dotster, Inc. 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 March 15, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 11, 2006. The Response was filed with the Center on April 11, 2006.

The Center appointed Arne Ringnes as the sole panelist in this matter on April 20, 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 Complainant filed a supplemental filing on April 13, 2006, and the Respondent filed a Reply to the Supplemental filing on April 24, 2006. The Complainant has further submitted English translations of certain case documents in French, as requested by the Panel. The Respondent has filed an English translation of Court summons to the Court of First Instance of the Principality of Monaco, dated April 20, 2006. The Panel has accepted that the supplemental filings become part of the case file.

In accordance with paragraph 10(c) of the Rules for Uniform Domain Name Dispute Resolution Policy, the date by which the Administrative Panel is required to forward its decision to the Center was extended to June 6, 2006. The reason why these proceedings took longer time than expected under the Rules, is that supplementary filings have been made by both parties, including new evidence and requests on procedural matters and the number of issues raised during the proceedings go beyond the normal scope of UDRP proceedings.

Complainant holds the international word mark CASINO DE MONACO, which was registered on December 19, 2002, and the international trademark CASINO DE MONTE-CARLO, registered on January 21, 2002. Both of these international trademarks have been designated and are registered in a number of countries.

The Complainant further holds the United States Federal trademark CASINO DE MONACO, filed on December 24, 2002 and published for Opposition on March 1, 2005.

The Complainant is the founder and manager of the Casino de Monte-Carlo in Monaco and has been operating Casino de Monte-Carlo in Monaco for more than 140 years. Since April 2, 1863, the Complainant has been granted by the authorities of Monaco a monopoly for casino and gambling industries for the territory of Principauté de Monaco and is the sole company that can organize games and gambling in Monaco.

The Respondent is a company active in the multi-channel online gambling market. The Respondent and its affiliated companies provide online poker and online casino websites and is an AIM-listed company.

The disputed domain name was registered on April 3, 2004, by Respondent’s predecessor in title. This predecessor operated an online casino site from that date until the respondent purchased from them the domain name, together with the online casino and all goodwill in the “Monaco Gold Casino”. The Respondent has registered a number of trademarks, but none that includes the names and words “Monaco”, “Monte Carlo” and “Casino”.

On April 20, 2006, the Respondent initiated invalidity proceedings against the trademarks CASINO DE MONACO and CASINO DE MONTE-CARLO before the Court of First Instance of the Principality of Monaco. The basis for the claims is that the disputed trademarks lack distinctive character and are descriptive and generic. It is further alleged that the protection for the trademark CASINO DE MONACO has lapsed through lack of use. Further, on April 13, 2006, the Respondent submitted a petition for cancellation to the United States Patent and Trademark Office, requesting the trademark CASINO DE MONACO to be cancelled on the basis that the trademark in primarily geographically descriptive.

Further, on June 2, 2006 the Complainant initiated court proceedings against Respondent before United States District Court/Southern District of New York, alleging trademark infringement and requesting the disputed domain name to be transferred to the Complainant. The Summons was served on Respondent on June 8, 2006, and the Panel was subsequently informed of the case in accordance with paragraph 18 (b) of the Rules.

The Complainant alleges that the domain name <monacogoldcasino.com> is confusingly similar to the trademark CASINO DE MONACO. The fact that the order of the nouns in the mark has been inverted does not render the domain name dissimilar. Nor does the addition of the generic term “gold” does not render the disputed domain name legally different from the Complainant’s trademarks. On this point it is referred to Sharman License Holdings, Limited, v. KazaGold, WIPO Case No. D2004-0396. Moreover, the term “gold” is commonly associated with wealth and luck much as in the same way as casinos. The Complainant also alleges that the domain name is confusingly similar to the trademark CASINO DE MONTE-CARLO. This contention was made clear in Complainant’s Supplementary Filing (paragraph 5) and holds that both names are frequently associated to evoke the location, see La Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v. Netrider, WIPO Case No. D2000-1330.

The Complainant further alleges that the Respondent has no rights or legitimate interest in respect of the domain name. To the best of Complainant’s knowledge, Respondent holds no intellectual property right over any trademark that contains the terms “casino” and “Monaco”. The Respondent has not received any license or authorizations from the authorities of Monaco to operate a casino in Monaco. The Complainant has never authorized Respondent to use its 140 years old famous mark CASINO DE MONACO or CASINO DE MONTE-CARLO, nor to register or use the disputed domain name. The Complainant does not have any type of business relationship with Respondent.

With respect to the condition that the domain name was registered and is being used in bad faith, the Complainant argues that the Respondent is a professional in the gambling business and that Respondent, as a professional, could not ignore that the registration and use of the disputed domain name would violate Complainant’s rights, in light of the strong notoriety and world renown of the Complainant’s trademarks. The Complainant further refers to Complainant’s website, on which a reference is made to Monaco and Monte-Carlo. This clearly leads the viewer to believe that there is some connection between the casino located in Monaco and the Respondent’s website. The Complainant also informs that it has received complaints from users of Respondent’s website who had not been able to cash out their earnings from the online casino, but who had mistakenly thought that Respondent’s casino was related to Complainant’s.

With respect to Respondent’s submission that the proceedings shall be suspended due to the invalidity and cancellation proceedings in Monaco and before USPTO, respectively, Complainant argues that these legal proceedings have been filed with the sole purpose of delaying the Administrative Proceedings and allowing the Respondent to continue to make an undue use of the disputed domain name. Further, Complainant states that the Respondent has not provided any prima facie evidence and legal argumentation that would allow the Panel to consider whether the invalidity proceedings would have strong legal merits and most likely lead to the cancellation or revocation of Complainant’s well-known trademarks.

The Respondent alleges that the domain name is not identical or confusingly similar to Complainant’s trademarks. In this connection, the Respondent argues that the disputed domain name are not confusingly similar to the trademarks CASINO DE MONTE-CARLO nor CASINO DE MONACO. With respect to the CASINO DE MONACO, it is pointed out that the domain name and the trademark are clearly not exactly alike: the words are in a different order, the domain name includes the additional word “gold” and the word “de” is excluded, and the domain name is in English, and not in French. It is argued that the suffix “gold” in the present case is a distinctive word which distances the domain name from the trademark, and it is pointed out that the Complainant has not provided any evidence of the use of the marks nor any evidence relating to the goodwill or reputation in the trademarks. It is also pointed out that the search terms “Monaco” and “casino” attract in excess of 5,720,000 hits by using the search engine Google.com. Even a cursory review of these “hits” indicates that the Complainant does not have exclusive rights in all combinations of the words “Monaco” and “casino” in any order, even when combined with other words (such as gold). With respect to the trademark CASINO DE MONTE-CARLO, Respondent submits that the marks are clearly visually and orally distinct.

Finally, Respondent argues that Complainant has not taken any legal action against Respondent even though the domain name have been active for over two years.

It is further alleged that the Respondent has rights or legitimate interests in respect of the domain name. The Respondent is a leading provider of marketing services to the on-line gaming industry. The domain name was registered by the Respondent’s predecessor long before the Respondent received any notice of the dispute and has been used in connection with a bona fide offering of services. During the period August 2005 – March 2006 the Respondent invested in excess of $ 7,25 million in marketing and promoting of its website “www.monacogoldcasino.com”. Over the course of 2 years, a legitimate business has been developed with the input of significant resources and the Respondent has built a multi-million dollar business using the domain name. If the Respondent is ordered to transfer the domain name, that business and the substantial investment in it, will be lost completely. Through the offering of services through the domain name, the Respondent’s business is commonly known by the domain name in issue, even though the Respondent has acquired no registered trademark or service mark rights. The name “monacogoldcasino” is therefore associated with the Respondent, and not with the Complainant.

With respect to the condition that the domain name shall have been registered and is being used in bad faith, the Respondent submits that no Internet user would confuse <monacogoldcasino.com> with the Complainant. There was therefore no intention to create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location or of products or services on the Respondent’s website or location.

The Respondent requests that the proceedings are suspended pending the outcome of the cancellation and invalidity proceedings that have been initiated by the Respondent before the courts of and the USPTO with respect to the Complainants trademarks. It is argued that these proceedings will, if successful, entirely cancel the trademarks relied on by the Complainant. It is further argued that these proceedings most likely will lead to that the USPTO and the Monaco Court will revoke the Complainant trademarks.

The Respondent has requested that the proceedings shall be suspended due to the fact that invalidity proceedings have been raised with the Court of First Instance of Monaco with respect to the international trademark registrations forCASINO DE MONACO and CASINO DE MONTE-CARLO and cancellation proceedings have been raised before the United States Patents and Trademarks Office (USPTO) with respect to the US trademark registration for the trademark CASINO DE MONACO.

The Panel points to the fact that the Complainant has proved that it holds, as per today, registered trademarks for CASINO DE MONACO and CASINO DE MONTE-CARLO in a number of countries. Whether or not the invalidity and cancellation proceedings that have been raised by Respondent will result in the full or partial cancellation or revocation of the trademarks is not possible to ascertain based on the evidence before the Panel. Nor is it possible to assume at what time final and binding decisions in these proceedings will be rendered. Thus, the question is whether the case shall be decided on the basis of the trademarks in existence as per today, or suspended or terminated due to a possible full or partial cancellation of the trademarks some time in the future.

The object of the Uniform Domain Name Dispute Resolution Policy is to provide a fast-track and simple procedure to resolve domain-name disputes. In the view of the Panel, it would undermine the object and effect of the Policy if a Respondent could avoid a decision against it, and thereby also hinder the transfer of a domain name if the conditions of the Rules are fulfilled, merely by initiating invalidity proceedings. If the Complainant can prove that it has rights in a trademark, as stated in the Rules paragraph 4 (a)(i), this fact should, as a starting point, be decisive and will remain so until the trademark in question is cancelled or held invalid by the competent authorities.

In this matter the Complainant has proved to be the holder of registered trademark rights in CASINO DE MONACO and CASINO DE MONTE-CARLO. On this basis the Panel rejects the Respondent’s request to suspend the proceedings.

The Panel has also considered whether the legal proceedings that the Complainant has raised against the respondent before United States District Court/Southern District of New York regarding trademark infringement and request for transfer of the domain name, should lead to termination of these proceedings. Based on the evidence submitted to the Panel and pursuant to the Panel’s discretion under paragraph 18 of the Rules, the Panel has arrived at the conclusion that the proceedings shall not be terminated and that it shall proceed to a decision.

The Panel finds that the disputed domain name <monacogoldcasino.com> is confusingly similar with the trademark CASINO DE MONACO. The disputed domain name incorporates the two distinctive (dominant) parts of Complainant’s trademark, namely the nouns “Monaco” and “Casino”. The addition of the term “gold” does not imply that the domain name is distinguished from the trademark to the effect that confusion is avoided. On the contrary, the Panel thinks it is correct as held by Complainant, that the term “gold” is commonly associated with wealth and luck much in the same way as casinos. Thus, in the view of the Panel, the addition of the term “gold” may actually strengthen the perception of the average consumer that the website under the domain name <monacogoldcasino.com> has the same commercial origin as casinos under the trademark CASINO DE MONACO.

La Société des Bains de mer et du Cercle des Etrangers á Monaco v. Domain Active Pty. Ltd., WIPO Case No. D2005-0527 clearly supports this view. Here, the Panel held that the domain name <montecarloresort-casino.com> was confusingly similar with the Complainant’s trademark “Casino de Monte-Carlo” on the grounds that:

“The disputed domain name incorporates the two nouns of Complainant’s trademark “Monte Carlo” and “casino”, the combination of which is distinctive for, and immediately brings to mind Complainant’s business activities. These two nouns are the most distinctive part both in Complainant’s trademark and the domain name at issue. The preposition “de” has little distinguishing effect, and even more so the omission of it in the domain name at issue. The term “resort” has little distinguishing effect in the domain name, as this term is the most generic term in the context of the domain name.”

With respect to the trademark CASINO DE MONTE-CARLO, the Panel notes that in a number of WIPO cases, the Panels have arrived at the conclusion that domain names including the words “Monaco” and “Casino” are confusingly similar with the trademark CASINO DE MONTE-CARLO, the reason being that Monte Carlo is commonly associated with the state of Monaco, see La Societé Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v. Netrider, WIPO Case No. D2000-1330; La Societé Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v. Iggi Networks Media Group, WIPO Case No. D2000-1324; La Societé Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v. Javier Llorens, WIPO Case No. D2000-1319; La Societé Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v. Martimi Bt, WIPO Case No. D2000-1318; La Societé Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v. Internet Marketing Associates, WIPO Case No. D2000-1317; La Societé Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v. Thomas Proud, WIPO Case No. D2000-1316; La Societé Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v. V. Britannia Finance et al., WIPO Case No. D2000-1315.

In conclusion, the Panel finds that the Complainant has proved that the condition under the Rules, paragraph 4 (a)(i) is fulfilled.

It is an undisputed fact that Complainant has never authorized Respondent to use the trademarks, nor has Respondent any license or authorizations granted by the authorities of Monaco to operate a casino in Monaco.

However, the Respondent argues that the domain name was registered and taken in use by the Respondent’s predecessor long before the Respondent received any notice of the dispute, and that the name “Monacogoldcasino” is associated with the Respondent and not with the Complainant. This submission by the Respondent refers to paragraph 4(c)(i) of the Rules, which states that the Respondent may demonstrate its rights and legitimate interest in the domain name by showing that he used the domain name in connection with the bona fide offering of goods and services before any notice to him of the dispute.

The Panel is of the opinion that Respondent’s use of the trademark has not been in connection with a bona fide offering of goods or services. In this respect, the Panel refers to annex K to the Complaint, which is an extract from Respondent’s website. Here a picture of Complainant’s casino in Monaco is shown together with the text:

“Monaco Gold Casino is designed to pass on the majestic and prestigious experience of a land based casino. Combining the magnificent style of Monte Carlo and the art of gaming, Monaco Gold Casino guarantees an unforgettable online gaming experience and invites you to sample the Royal Site of Gaming!”

In the opinion of the Panel, this shows that the Respondent has utilized, without having the right to do so, the goodwill vested in the trademarks. In this respect, the Panel will also point out that the fact that the Respondent has not provided any decisive evidence that the name “Monaco Gold Casino” is associated with Respondent. On the contrary, as held, the Respondent seeks through its web site to associate itself with Complainant’s business.

Accordingly, the Panel concludes that the Complainant has proved that the second condition under the Rules paragraph 4 is fulfilled.

With respect to the condition that the domain name shall be registered and used in bad faith, the Panel first point out that Respondent should be identified with its predecessor in title who registered the domain name.

As mentioned above, the Response raises the question whether the time elapsed since the registration of the disputed domain name, should constitute a reason to resolve in the Respondent’s favor. The Respondent’s argument is based on the Complainant’s alleged lengthy delay in challenging the disputed domain.

The Policy does not contain a specific delay or time-limitation rule and there is no room in the Policy for the stand-alone application of a defense based on the lapse of time. The Panel refers to earlier decisions under the Policy, i.e. Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453. On this basis the Panel rejects the Respondent’s argument.

It could be argued that the trademarks are of a descriptive nature, as they refer to “Monaco”, “Monte-Carlo” and to “casino” and that it would not amount to bad faith to register and use a domain name that includes such descriptive words. However, this argument does not take into account that the Complainant for more than one hundred years has held a monopoly for casino business in Monaco. In a number of cases under the Policy, Panels have held that the trademarks in question are associated with the Complainant. In fact a number of cases regarding the trademark CASINO DE MONTE CARLO have been decided prior to the registration of the domain name. As a professional, the Respondent could not have been unaware of that. And further, due to the renown of the Complainant, the Panel finds that the Respondent could not have been unaware of the fact that it chose a name which could attract Internet users in a manner that creates the possibility of confusion for the consumer as to whether the site is associated with the Complainant and “Casino de Monaco” or not. The Panel in this respect refers to several previous decisions under the Policy drawing the same conclusion with respect to the marks CASINO DE MONACO and CASINO DE MONTE CARLO. In La Société Anonyme des Bains de Mer et du Cercle des Etrangers á Monaco v. Netrider, WIPO Case No. D2000-1330, the Panel made the same conclusion with respect to the Complainant’s mark CASINO DE MONTE CARLO and the disputed domain name <monaco-casino.com>. Further, in Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Javier Llorens, WIPO Case No. D2000-1319, the Panel concluded that the Respondent must have had bad faith when registering <casinomonoca.net> due to the renown of the Complainant’s mark CASINO DE MONTE CARLO. In La Société Anonyme des Bains de mer et du Cercle des Etrangers a Monaco v. Thomas Proud, WIPO Case No. D2000-1316, the Panel drew the same conclusion with respect to the disputed domain name <casinodemonaco.com> and the Complainant’s mark CASINO DE MONTE CARLO.

In addition, the Panel points to the text on the Respondent’s website, quoted under item B above. This indicates that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion to the Complainant’s trademark, cf. the Rules paragraph 4(b)(iv).

The Panel concludes that the Complainant has showed that the third condition under the Policy is fulfilled.

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, <monacogoldcasino.com> be transferred to the Complainant.