WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v. Deivis Hernandez Valdes, Devamag Inc., Monte Carlo Circle and Union of Excellence

Case No. D2017-0121

1. The Parties

Complainant is Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco of Monte Carlo, Monaco, represented by De Gaulle Fleurance & Associés, France.

Respondent is Deivis Hernandez Valdes, Devamag Inc. of Nendeln, Liechtenstein, Deivis Hernandez Valdes, Monte Carlo Circle of Monaco, Monaco, Deivis Hernandez Valdes, Devamag Inc. of Frankfurt am Main, Germany and Monte Carlo Circle, Union of Excellence of Nendeln, Liechtenstein, self-represented.

2. The Domain Names and Registrar

The disputed domain names <circlemontecarlo.com>, <galamontecarlo.com> and <montecarlogala.com> are registered with GoDaddy.com. The disputed domain name <montecarlocircle.com> is registered with Network Solutions, LLC.

The above mentioned disputed domain names are jointly referred to as: the “Domain Names”, registered with the “Registrar”.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2017. On January 23, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 24 and February 3, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the ”Policy” or ”UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the ”Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the ”Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 28, 2017.

Respondent submitted email communications on February 21 and 28, 2017, to the Center. Respondent consented to the remedy requested by Complainant, but a request for suspension was not submitted by Complainant. Accordingly, the Center sent an email communication on March 9, 2017, informing the Parties of the commencement of the Panel appointment process.

The Center appointed Dinant T.L. Oosterbaan as the sole panelist in this matter on March 17, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco (translated: “The Company of Sea Baths and of the Foreigners Circle of Monaco”) was incorporated in 1863 under the laws of Monaco. Complainant was granted the exclusive rights to provide casino gaming services in Monaco. Complainant in particular operates five luxury casinos and various hotels and restaurants. Complainant is the largest employer in Monaco.

Complainant owns a large number of trademarks including:

- the Monaco trademark CERCLE MONTE-CARLO, with registration number 07.26303 and a registration date of December 28, 2007;

- the European Union trademark MONTE-CARLO, with registration number 007300049 and a registration date of July 16, 2009;

- the European Union trademark CASINO DE MONTE-CARLO, with registration number 1025318 and a registration date of September 28, 2009.

The Domain Name <montecarlocircle.com> was registered on May 9, 2016. The Domain Name <circlemontecarlo.com> was registered on May 29, 2016. The Domain Name <galamontecarlo.com> was registered on November 10, 2016. The Domain Name <montecarlogala.com> was registered on January 7, 2016.

The Domain Names <circlemontecarlo.com>, <montecarlocircle.com> and <montecarlogala.com> resolve to websites that offer access to a private members club entitled “Monte Carlo Circle”. The Domain Name <galamontecarlo.com> resolves to a parking page.

The trademark registrations of Complainant were issued prior to the registration of the Domain Names.

5. Preliminary Procedural Issue: Consolidation

Complainant requests that the Complaint filed against the four Respondents be consolidated. Complainant submits that the four Domain Names are subject to a common control. The preliminary issue is therefore whether Complainant is entitled to bring a consolidated Complaint against Respondents, or whether it is necessary for Complainant to bring individual Complaints.

According to the WIPO Overview of WIPO Panel views on selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.16, consolidation is in order in situations where the domain names or the websites to which they resolve are subject to common control, and the consolidation would be fair and equitable to all parties.

In view of the fact that Respondent Deivis H. Valdes in his email of February 28, 2017 to the Center consented to the transfer of all four Domain Names and from the considerable similarity among the contact details and website use for the Domain Names, it is obvious that the Domain Names are subject to common control. The Panel decides that consolidation is in order, also in view of the fact that it is fair and equitable to all parties and procedurally efficient to allow consolidation. Respondents are hereinafter referred to as “Respondent”.

6. Parties’ Contentions

A. Complainant

Complainant submits that the Domain Names are confusingly similar to the trademarks of Complainant. The Domain Names <circlemontecarlo.com> and <montecarlocircle.com> are almost identical to the CERCLE MONTE-CARLO trademark. The Domain Names <galamontecarlo.com> and <montecarlogala.com> associate the trademark MONTE-CARLO with the descriptive term “gala”.

According to Complainant, Respondent has no rights or legitimate interests in respect of the Domain Names. Respondent is not commonly known by the Domain Names and has not acquired any trademark or service mark rights in the Domain Names. According to Complainant, Respondent’s websites to which the Domain Names resolve, by using the words “circle” and “gala” create the impression of a VIP club or luxury event such as a gala to which its members have private access by reference to the trademarks of Complainant. According to Complainant, Respondent has failed to create a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of the Domain Names.

Complainant submits that Respondent has registered and is using the Domain Names in bad faith. According to Complainant its trademarks are well-known in connection with luxury events and the Cercle de Monte-Carlo club.

Complainant asserts that the Domain Names <circlemontecarlo.com>, <montecarlocircle.com> and <montecarlogala.com> are being used in bad faith as the websites to which the Domain Names resolve offer access to a private members club called “Monte Carlo Circle” with activities in Monaco, Liechtenstein and the French Riviera and with access to luxury events in Monaco. The Domain Names are thus used to promote to Internet users access to a club which benefits from the unique prestige, renown and attractiveness of Complainant’s trademarks. In addition, the websites of Respondent clearly reproduce and imitate elements of the website of Complainant and use without authorization many pictures originating from the marketing material of Complainant.

The Domain Name <galamontecarlo.com> directs to a parking page. According to Complainant any active use by Respondent would inevitably lead to a likelihood of confusion.

B. Respondent

Respondent did not formally reply to Complainant’s contentions. However, the Center received an informal email communication from Respondent on February 28, 2017 which stated that Respondent agreed to transfer the Domain Names to Complainant as he has no trademark rights. Respondent mentioned that he made the mistake of not having previously examined registered trademarks in relation to the name “Monte Carlo Circle”. Respondent added that the Domain Names were not registered and are not being used in bad faith. According to Respondent, with the “Monte Carlo Circle” he had the vision to build up a unique network of interesting people who support each other in different areas but mainly in Monaco and its surroundings. Respondent concluded that he would soon be active under a different business name, that the social media content would be changed, that he would remove the criticized content of the website and learn from past mistakes.

7. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to “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 that it deems applicable”.

Paragraph 4(a) of the Policy requires that the complainant proves each of the following three elements to obtain an order that the disputed domain name be transferred:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Notwithstanding the informal communication the Center received from Respondent on February 28, 2017 that Respondent would be willing to transfer the Domain Names the Panel will proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied in this proceeding. The Panel has decided to proceed to a substantive determination as Respondent has not conceded that the three elements of paragraph 4(a) have been satisfied, in particular as Respondent denies that the Domain Names were registered and are being used in bad faith. The Panel also takes into account that Complainant has not agreed to a consent decision. WIPO Overview 2.0, paragraph 4.13.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, Complainant must first establish rights in a trademark or service mark and secondly that the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights.

It is established that Complainant it is the owner of several trademark registrations for CERCLE MONTE-CARLO and MONTE-CARLO. The Domain Names <circlemontecarlo.com> and <montecarlocircle.com> are confusingly similar to the CERCLE MONTE-CARLO trademark, with the exception that the French word “cercle” in the trademark is the English word “circle” in the Domain Names.

The Domain Names <galamontecarlo.com> and <montecarlogala.com> incorporate the entirety of the well-known MONTE-CARLO trademark as its distinctive element. Many UDRP decisions have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety. The addition of the descriptive word “gala” and the generic Top-Level-Domain (“gTLD”) “.com” is insufficient to avoid a finding of confusing similarity.

The Panel finds that Complainant has established that the Domain Names are confusingly similar to Complainant’s trademarks.

B. Rights or Legitimate Interests

In the opinion of the Panel, Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Domain Names. Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to register the Domain Names incorporating its trademarks. Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of Complainant. Based on the evidence provided by Complainant, the Domain Names resolve to websites that create the confusing impression of a VIP club or luxury event such as a gala to which its members have private access by reference to the trademarks of Complainant. Such use cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Names.

In addition, the website under the Domain Names does not accurately and prominently disclose the relationship between Respondent and Complainant as the holder of the well-known and long existing MONTE-CARLO and CERCLE MONTE-CARLO trademarks, in particular as there has never been any business relationship between Complainant and Respondent. With regards to the Domain Name <galamontecarlo.com>, use in connection with a parking page does not under the circumstances provide any rights or legitimate interests. Respondent is also not commonly known by the Domain Names nor has it acquired any trademark or service mark rights.

C. Registered and Used in Bad Faith

The Panel finds that the Domain Names have been registered and are being used in bad faith. Noting the well-known status of the MONTE-CARLO and CERCLE MONTE-CARLO trademarks and the overall circumstances of this case, the Panel finds it more likely than not that Respondent knew or should have known Complainant’s well-known marks. This finding is supported by the admission of Respondent that he made the mistake of not having previously examined registered trademarks in relation to the name of the “Monte Carlo Circle” club especially in view of the fact that Respondent mentioned in his email of February 28, 2017 that he targeted the potential members of the club mainly in Monaco and its surroundings.

The Panel notes that the Domain Names <circlemontecarlo.com>, <montecarlocircle.com> and <montecarlogala.com> resolve to websites which reproduce and imitate the look and feel and other elements of the website of Complainant and also use without authorization many pictures originating from the marketing material of Complainant. The websites of Respondent further creates the distinct and wrongful impression that Respondent is associated with Complainant.

The fact that the Domain Name <galamontecarlo.com> currently directs to a parking page does not prevent the Panel from finding registration and use in bad faith, which is supported by the circumstances of this case.

The Panel finally notes that the Domain Names incorporate Complainant’s well-known trademarks, which indicates, in the circumstances of this case, that Respondent registered and used the Domain Names with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the trademarks of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a service on its website or location, which constitutes registration and use in bad faith.

The Panel finds that Complainant has proven that the Domain Names have been registered and are being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <circlemontecarlo.com>, <galamontecarlo.com>, <montecarlocircle.com> and <montecarlogala.com> be transferred to Complainant.

Dinant T.L. Oosterbaan
Sole Panelist
Date: March 30, 2017