The Complainant is Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco of Monaco, represented by De Gaulle Fleurance & Associés, France.
The Respondents are vesa ylipyky / Playpearls Ltd of Pieta, Malta, represented by Alistair S. de Gaetano, Malta (the "First Respondent"), and PrivacyProtect.org of Nobby Beach, Queensland, Australia / Alex Assouline of Mellieha, Malta (the "Second Respondent").
The disputed domain names <liveblackjackmonaco.com>, <livecasinomonaco.com>, <liveroulettemonaco.com>, <monacoblackjacklive.com>, <monacocasinolive.com>, <monacoliveblackjack.com>, <monacolivecasino.com>, <monacoliveroulette.com>, <monacoroulettelive.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 10, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 11, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 17, 2014 providing the registrant and contact information disclosed by the Registrar and invited the Complainant to amend the Complaint. The Complainant filed an amended Complaint on April 18, 2014. On April 22, 2014, the Center transmitted by email to the Registrar a further request for registrar verification in connection with one of the disputed domain names. The Registrar responded with the requested information on the same day.
The Center verified that 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on April 24, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was May 14, 2014. The Response was filed with the Center on May 1, 2014 only on behalf of the First Respondent and only for the disputed domain name <monacolivecasino.com>. The Complainant submitted a supplemental filing on May 8, 2014. The Center notified the Respondents' default for the remaining disputed domain names on May 19, 2014.
The Center appointed Adam Taylor as the sole panelist in this matter on May 23, 2014. 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 paragraph 7 of the Rules.
The First Respondent submitted supplemental filings on May 28, 2014 and May 29, 2014.
On June 2, 2014, the Panel issued Procedural Order No.1 rejecting all supplemental filings and requesting certain further information from the Respondents, which the First Respondent duly supplied on June 4, 2014. The Complainant responded to the First Respondent's communication but not within two business days as directed by the Panel and so the Panel has disregarded the Complainant's response.
The Complainant is incorporated in Monaco. A majority of its shares are owned by the Government of the Principality of Monaco. In 1863, the Prince of Monaco granted to the Complainant a monopoly ("Privilège des Jeux")on casino and gambling activities in Monaco. The Privilège des Jeuxwas last renewed for 20 years as from April 1, 2007.
Since 1863, the Complainant has operated the famous Casino De Monte-Carlo.
The Complainant owns a Monaco trade mark no. 17485 for the words CASINO DE MONTE-CARLO dated August 13, 1996, in classes 3,9,12,14,16,18,28,34,35,38,39,41,42 and 43.
The Complainant also owns Monaco trade mark no. 23610 for the words CASINO DE MONACO dated July 1, 2002, in classes 3,9,12,14,16,18,28,34,35,38,39,41 and 43.
The disputed domain names were all registered on July 4, 2013 in the name of the same privacy service. Before filing of the Amended Complaint, the First Respondent Playpearls Ltd was disclosed as the underlying registrant of <monacolivecasino.com> and the Second Respondent Alex Assouline was disclosed as the underlying registrant of the other disputed domain names ("the Other Domain Names").
Mr. Assouline's email is shown as "[…]@eeaconsulting.com". The website at "www.eeaconsulting.com" is operated by a Maltese company called EEA Consulting Limited, whose registered office is the same as the address given for Mr. Assouline. EEA Consulting Limited states that it "designs, develops and supports software products and platforms in the iGaming industry" and it includes the First Respondent Playpearls Ltd amongst its clients. Given the obvious connection between Mr. Assouline and EEA Consulting Limited, the Panel hereafter treats the "Second Respondent" as including EEA Consulting Limited unless the context requires otherwise.
An undated screenshot shows use of the disputed domain name <monacolivecasino.com> for an online gaming website. There is no evidence of active use of the Other Domain Names; it appears that they have been used for registrar holding pages.
The following is a summary of the Complainant's contentions:
The Casino De Monte-Carlo is also referred to by the public as the "Casino De Monaco". Previous UDRP panels have concluded that domain names including "Monaco" and "Casino" are confusingly similar to the CASINO DE MONTE-CARLO trade mark because Monte-Carlo is commonly associated with the state of Monaco and its prestigious casino.
The Complainant licenses a third party to operate an online gambling website at "www.montecarlocasino.com".
The fame of the CASINO DE MONTE-CARLO trade mark has been acknowledged by several courts around the world including in France, the United Kingdom of Great Britain and Northern Ireland and the United States of America.
The disputed domain names are identical or at least confusingly similar to the Complainant's trade marks as they all associate "Monaco" with descriptive terms relating to casino games. The addition of the terms referring to games offered in main casinos and online gaming websites such as "live", "roulette" and "blackjack" instead of, or added to, "casino" does not render the disputed domain name dissimilar from the Complainant's trade marks.
The term "live" is merely suggestive of a service provided online by reference to the trade mark. This term exacerbates the confusion between the disputed domain names and the Complainant's trade marks because it refers to the Complainant's online gambling activities operated through a licensee.
Replacement of "casino" by descriptive words "roulette" and "blackjack" reinforces confusing similarity as such words are strongly associated with the casino business.
The Complainant has not found evidence of any trade mark applications or registrations referable to the disputed domain names which are owned by the Respondents.
The Complainant has never authorised the Respondents to use its famous trade marks.
The Respondents cannot claim any legitimate interest in, and have made no bona fide use of the disputed domain names due to the likelihood of confusion and the Respondents' registration and use of the disputed domain names in bad faith.
All of the disputed domain names are owned by the same company. They were all registered simultaneously and anonymously on July 4, 2013. The choice of disputed domain names similar to the Complainant's well-known marks is not coincidental. This is clearly a bad faith registration. Given the extent of their fame, the Respondents must have been aware of the Complainant's marks.
Internet users are likely to think that the website at <monacolivecasino.com> is connected with the Complainant. This is clear evidence of bad faith under 4(b)(iv) of the Policy. The website clearly reproduces most of the elements of the website of the Complainant's licensee including mauve colour, design, structure, typography and it utilises a similar logo. This could not have been done without knowledge of the Complainant and its marks.
The Other Domain Names resolve to a hosting page and are not in active use. The Complainant cannot conceive of any legitimate use to which such disputed domain names could be put that would not violate the Complainant's trade marks. These domain names are being passively held in bad faith.
There is no doubt that the Respondents registered the disputed domain names to attract more Internet users to the website at <monacolivecasino.com> but has not yet configured the redirection.
The following is a summary of contentions of the First Respondent:
Generic or descriptive names cannot be trade marked. The terms "Monaco", "casino", "blackjack", "roulette" and "live" are similarly generic terms. For there to be a connection with the Complainant's casinos or marks, it does not suffice that the terms be used in combination. There must be a linking factor. No linking factor is present here as the First Respondent was not exploiting the Complainant's marks.
Whatever is in the public domain can be used by any person or entity, even if the concept can appear amorphous at times.
The First Respondent acquired <monacolivecasino.com> from the Second Respondent. It did not request that the Other Domain Names be registered on its behalf by the Second Respondent.
The First Respondent does not register multiple domain names for each of its projects. The First Respondent is capable of registering its own domain names unless a domain name is not readily available, in which case it purchases the domain name form the holder. There is no bad faith as the First Respondent did not register multiple domain names.
The domain name <monacolivecasino.com> was not registered in bad faith as the First Respondent was exercising rights available in the public domain. The First Respondent's only intention was to acquire a "high end" domain name.
Although the Complainant has an exclusive licence to operate games of chance in Monaco, the First Respondent was not exploiting the Complainant's rights. The layout of the First Respondent's is based on a standard white label model which the First Respondent used to operate five other similar sites since 2013.
The games offered on the First Respondent's site are totally different from those offered on the Complainant's site. The layout of the sites is also different.
The First Respondent's logo is based on similar logos used on the First Respondent's other sites.
The First Respondent's colour scheme is not an exact pixel-to-pixel similarity to the Complainant's site.
The First Respondent's sites are all based on specific themes, e.g. magic theme, Viking theme etc. The theme of "www,monacolivecasino.com" was that of providing the feel of luxury in Monaco, meaning the country itself, not the Complainant's website.
The First Respondent offers different generic "dress" on its various websites but they are all linked to the same gaming engine.
The First Respondent never linked any of the Other Domain Names to <monacolivecasino.com>. This would have been a simple operation but the First Respondent did not do so because it neither directly owned nor intended to use any of the Other Domain Names as part of its venture.
The Complainant never approached the First Respondent in an attempt to rectify matters before the filing of the present dispute.
The First Respondent consents to the remedy requested by the Complainant and agrees to transfer the domain name <monacolivecasino.com> without the need for a decision to be rendered by the Panel.
The First Respondent has indicated in the Response that it consents to transfer of the disputed domain name <monacolivecasino.com> to the Complainant without the need for a decision by the Panel.
Paragraph 4.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") considers whether a UDRP panel can decide a case based on a respondent's consent to transfer:
"Where the parties to a UDRP dispute have not succeeded in settling a case between themselves prior to the rendering of a panel decision, but the respondent has given its unilateral and unambiguous consent on the record to the remedy sought by the complainant, a panel may at its discretion order transfer (or cancellation) of the domain name on that basis alone. Some panels have done so on the basis of giving effect to party agreement as to outcome (sometimes, where the parties so request, on a no-fault basis), with a few also by deeming such consent to satisfy the requirement of the three elements of the UDRP (sometimes by virtue of deemed admission). Some panels have declined to grant a remedy solely on the basis of the respondent's consent, but rather elected to proceed to a substantive determination of the merits; for example, because the panel needs to be certain that the complainant has shown that it possesses relevant trademark rights, or because there is ambiguity as to the genuineness of the respondent's consent, or because the respondent has not expressly admitted bad faith, or because the panel finds there is a conduct or other aspect to the proceedings which warrants a full determination on the record, or because the panel finds that the complainant has not agreed to a consent decision and the complainant is entitled to the decision for which it has paid in filing its complaint, or because the panel finds a broader interest in reaching and recording a substantive determination (e.g. in connection with patterns of conduct under paragraph 4(b)(iii) of the UDRP)."
The Panel has decided to proceed to a substantive determination on the basis of a number of the countervailing factors mentioned in paragraph 4.13 of the WIPO Overview 2.0, in particular the fact that the Complainant has not agreed to a consent decision and is entitled to a decision for which it has paid in filing the Complaint. The Panel is also persuaded that there is a broader interest in reaching and recording a substantive determination so that the conduct of the Respondents, if found to have registered and used the disputed domain name in bad faith, can be taken into account by other future UDRP panels, e.g., in connection with assessment of patterns of conduct under paragraph 4(b)(ii) of the Policy.
The principles governing the question of whether a complaint may be brought against multiple Respondents are set out in paragraph 4.16 of WIPO Overview 2.0. These criteria encompass situations where (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.
For reasons explained in section 6.F. below, the Panel considers that the likelihood is that the disputed domain names are subject to common control. In the Panel's view, consolidation is fair and equitable to all parties. It is fair and equitable to the Complainant because it enables the Complainant to deal with a number of what are apparently connected domain names in a single Complainant with a single filing fee. It is fair and equitable to the Respondents because both have been served with these proceedings and have had the opportunity to defend the proceedings although only the First Respondent has done so. Furthermore, although the First Respondent disclaims responsibility for the Other Domain Names, it does not object to consolidation.
The Complainant has made one unsolicited supplemental filing and the First Respondent has made two such filings.
Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings. Paragraph 10(d) states: "The Panel shall determine the admissibility, relevance, materiality and weight of the evidence". Paragraph 12 states: "In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties".
The principles which the Panel should apply in deciding whether or not to admit supplemental filings have been considered in many cases under the Policy. See, e.g., The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447. The principles include: that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimize prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.
The filings took the form of an email exchange whereby the Complainant reacted to the Response by emailing additional evidence as to the alleged similarities between the parties' respective sites and the First Respondent then emailed back in reply. The Complainant has not claimed that the additional evidence was not available at the time it filed its Complaint nor has it attempted otherwise to justify the filing. Accordingly, the Panel declines to admit the Complainant's filing. The Panel also rejects the First Respondent's two filings, which simply respond to the disallowed Complainant filing.
The Panel would add, however, that none of the supplemental filings would have made any difference to the outcome of this case.
The Complainant has established registered rights in the marks CASINO DE MONTE-CARLO and CASINO DE MONACO.
The Panel makes no finding of unregistered trade mark rights as the Complainant has provided no evidence supporting its assertions in this regard.
The Panel considers that the following disputed domain names are confusingly similar to the Complainant's CASINO DE MONACO trade mark: <livecasinomonaco.com>, <monacocasinolive.com> and <monacolivecasino.com>. These domain names are dominated by the words "casino" and "Monaco", which equate to the Complainant's trade mark, omitting only the French preposition "de". It makes no difference that order of the words is reversed in <monacocasinolive.com> and <monacolivecasino.com>. Nor does it matter that the domain names also include the additional descriptive word "live" or that this is interposed between the words "Monaco" and "casino" in <monacolivecasino.com>. It is well established that the addition of merely descriptive material is normally insufficient to avoid a finding of confusing similarity – see paragraphs 1.2 and 1.9 of WIPO Overview 2.0. In the Panel's view, these three disputed domain names remain clearly referable to the Complainant's trade mark notwithstanding the various distinctions outlined above.
The other six domain names fall into a slightly different category to those above as they replace the word "casino" with "blackjack" or "roulette". However, these new terms denote games closely associated with casinos and, in a series of UDRP cases involving the Complainant, panels have held that the use of generic terms relating to gaming activities instead of the term "casino", when associated with the terms "Monte-Carlo" and "Monaco", still makes a direct reference to the Complainant's trade marks. See, e.g., Société des Bains de Mer et du Cercle des Etrangers à Monaco v. International Lotteries, WIPO Case No. D2000-1327; Société des Bains de Mer et du Cercle des Etrangers à Monaco v. International Services Inc. et al., WIPO Case No. D2000-1328 and La Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v. Traffic Label limited, WIPO Case No. D2013-1840. The Panel agrees with the approach taken in those cases.
The First Respondent appears to argue against confusing similarity on the grounds that the disputed domain names consist of generic or descriptive terms such as "Monaco", "casino", "blackjack", "roulette" and "live" and that the use of such terms, even in combination, does not suffice unless the First Respondent is exploiting the Complainant's marks, which it denies. However, any exploitative actions of the First Respondent vis-à-vis the Complainant's marks are a matter for consideration in connection with the other elements of paragraph 4(a) of the Policy. At this point, the Panel is purely concerned with a side-by-side comparison of the trade marks and disputed domain names. See paragraph 1.2 of WIPO Overview 2.0. And, for the above reasons, the Panel concludes that the disputed domain names are indeed confusingly similar to the Complainant's trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
Paragraph 2.1 of WIPO Overview 2.0 explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases:
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant."
Here, the Complainant has not licensed or otherwise authorised the Respondents to use its trade mark.
As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the First Respondent has used the disputed domain name <monacolivecasino.com> to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant's products and services. Such use of the disputed domain name could not be said to be bona fide.
In the oft-quoted case of Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847, the panel stated that:
"use which intentionally trades on the fame of another cannot constitute a 'bona fide' offering of goods or services. To conclude otherwise would mean that a [r]espondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy."
See also Am. Online, Inc. v. Fu, WIPO Case No. D2000-1374, (finding that "[I]t would be unconscionable to find a bona fide offering of services in a respondent's operation of web-site using a domain name which is confusingly similar to the Complainant's mark and for the same business").
As to the Other Domain Names, there is no evidence of any use of the disputed domain name for a bona fide offering of goods or services, nor of any demonstrable preparations for such an offering.
Nor is there any evidence that paragraph 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel concludes that the Respondents have no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
Whether the First Respondent instructed the Second Respondent to register <monacolivecasino.com> on its behalf or, as it claims, the First Respondent later purchased it from the Second Respondent (see further below), the Panel is satisfied that <monacolivecasino.com> was registered and used by the First Respondent in bad faith.
The First Respondent does not deny that it was aware of the Complainant or its trade marks when it acquired <monacolivecasino.com>, nor could it credibly have done so.
The Panel is satisfied that the First Respondent's website at "www.monacolivecasino.com" was designed to mimic the site of the Complainant's licensee. The colours of the respective sites may not be "exact pixel-to-pixel similarity", as the First Respondent claims, but overall the mauve / blue colour scheme of the First Respondent's site is strikingly similar to the Complainant-licensed site, as is the layout and branding. The First Respondent claims that its five-pointed logo is based on similar logos on its other sites but, to the Panel, the logo is entirely dissimilar to those other of its logos but very similar to the Complainant's logo, which is also five pointed. The name "MONACO LIVE CASINO" in presented on the First Respondent's site in similar white font to that of "MONTE-CARLO CASINO" on the Complainant-licensed site. The First Respondent's site even includes a picture of a glamorous woman in front of the Complainant's casino – as does the Complainant's own site.
It does not help the First Respondent to claim that the format of its site is part of series of differently-themed gambling websites based on the same underlying template. Those other sites of the First Respondent use diverse colour schemes and logos, which are entirely dissimilar to the site at <monacolivecasino.com>, the design of which has clearly been motivated by the Complainant-licensed site. Nor does it matter if the First Respondent's site does not offer exactly the same kind of online gaming as that provided on the Complainant-licensed site.
The Panel concludes from the foregoing that the First Respondent has registered and used the disputed domain name <monacolivecasino.com> in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The First Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant's trade mark.
The Panel now considers the Other Domain Names.
All of the disputed domain names were registered on the same day using the same privacy service. It eventually emerged that the First Respondent was the underlying registrant of <monacolivecasino.com> and that the Second Respondent was the underlying registrant of the Other Domain Names. What happened in between is somewhat murky.
The First Respondent claims that all of the disputed domain names were registered by the Second Respondent and that, at some undefined point thereafter, it purchased <monacolivecasino.com> from the Second Respondent. The First Respondent says that it did not request or authorise the Second Respondent to register the Other Domain Names.
On its website, the Second Respondent describes the First Respondent as its client. Its response to the Panel's request for an explanation of the relationship between the two Respondents, the First Respondent says that the Second Respondent has a business relationship with the First Respondent "through the servicing of the latter's software needs on an as-needs basis" but that this has not included the purchase of domain names except on one previous occasion.
However, the Panel notes that the Response of the First Respondent provides no detail, let alone evidence, of how and when it allegedly became aware that the disputed domain names had been registered by the Second Respondent, or of the alleged purchase of <monacolivecasino.com> from the Second Respondent, or of the First Respondent's correspondence / dealings with the Second Respondent regarding the disputed domain names. Also, the Second Respondent has not come forward to corroborate the First Respondent's claims.
On the basis of the information before it, the Panel thinks it more likely than not that the First Respondent simply instructed the Second Respondent to register all of the disputed domain names on its behalf. If so, the Panel has no difficulty holding that the Other Domain Names constitute passive holding by the First Respondent in bad faith (UDRP panels have found the passive holding concept to be applicable in the non-active use of domain names for registrar holding pages.) Paragraph 3.2 of WIPO Overview 2.0 states the following consensus view:
"The lack of active use of the domain name does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa."
Here, the circumstances indicative of bad faith are: the First Respondent's obfuscation regarding the circumstances of registration of the disputed domain names; the fact that the Other Domain Names were registered on the same day as <monacolivecasino.com> and clearly as part of the same scheme; and the impossibility of conceiving a good faith use of the Other Domain Names.
However, the outcome of this case would not have been any different if the Panel had concluded that the Second Respondent registered the Other Domain Names independently of the First Respondent. If so, the Panel would have found that the Other Domain Names were a passive holding in bad faith by the Second Respondent, particularly in light of the pattern of registration involving a group of domain names that include the Complainant's mark to varying degrees, the failure by the Second Respondent to come forward and explain its purpose in registering the Other Domain Names as well as, again, the impossibility of conceiving a good faith use of the Other Domain Names.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy.
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 names, <liveblackjackmonaco.com>, <livecasinomonaco.com>, <liveroulettemonaco.com>, <monacoblackjacklive.com>, <monacocasinolive.com>, <monacoliveblackjack.com>, <monacolivecasino.com>, <monacoliveroulette.com>, <monacoroulettelive.com> be transferred to the Complainant.
Adam Taylor
Sole Panelist
Dated: June 10, 2014