WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v. WhoisGuard, Inc. / Jozef Hrab / Derek Limar

Case No. D2021-0682

1. The Parties

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

The Respondents are WhoisGuard, Inc., Panama, Derek Limar, United States of America (United States) and Jozef Hrab, Slovakia.

2. The Domain Names and Registrar

The disputed domain names <mcc.casino> and <montecarlocaso.com> are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2021. On March 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 5, 2021, the Registrar transmitted by email to the Center its verification response:

(a) confirming it is the Registrar for the disputed domain names;

(b) disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint;

(c) stating the registration agreements are in English;

(d) confirming that the registration agreements included an acknowledgement that the disputed domain names were registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”).

The Center sent an email communication to the Complainant on March 8, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 10, 2021.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 4, 2021. The Respondents did not submit a formal response, however the Center received an email form one of Respondents, Jozef Hrab, on March 15, 2021, stating that he would be willing to settle the dispute. In reply, the Complainant set out reasons why Mr. Hrab’s proposal in relation to the second disputed domain name only was not acceptable to it and stated what it would require for settlement in respect of both disputed domain names. It was not otherwise prepared to agree to suspend the proceedings. No further Response was received from either Respondent. Accordingly, the Center notified the Parties of the commencement of Panel Appointment on April 6, 2021.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on April 12, 2021. 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

The Complainant is a company incorporated in April 1863 under the laws of Monaco.

Since 1863, it has been the owner of and operating the famous Casino de Monte-Carlo in Monaco. Apparently, the Complainant also operates three other casinos in Monaco: the Monte-Carlo Bay Casino, the Casino Café de Paris., and the Sun Casino and what the Complaint describes as “a complete resort” including:

“[two] palaces and [two] deluxe hotels, 40 conference and banqueting rooms, 34 restaurants and bars, [three] spas, as well as cultural and leisure venues among which the Jimmy’z Monte-Carlo night club, the Salle des Etoiles, the Monte-Carlo Golf Club and the Monte-Carlo Country Club.”

Since 1863, the Complainant’s Casino de Monte-Carlo (or Monte-Carlo Casino in English) has been attracting a wide range of European and international visitors. It has regularly featured in top 10 or top five rankings for casinos (usually as the number one ranking). It has also featured in well-known novels and films including “Rebecca” by Daphne Du Maurier and the James Bond films “Goldeneye” and “Never Say Never Again”. Other films to feature the Complainant’s trademarks or premises include Cars 2, Oceans Twelve, Iron Man 2, and Madagascar 3.

The Complainant’s main website resolves from the domain name <montecarlosbm.com>. The pages for this website include in the “heading” MONTE-CARLO Société Des Bains De Mer and in the large banner footer a “logo” in the following form:

This logo and the name “Monte-Carlo SBM” feature prominently on the Complainant’s Facebook, Instagram, Twitter, Youtube and LinkedIn pages. The Complainant’s Facebook page has more than 76,000 followers; its Instagram account, over 119,000 followers; its Twitter account, more than 21,600 followers and its Youtube account has almost 6,000 subscribers.

Amongst other things, the Complainant owns registered trademarks in Monaco for:

(a) CASINO DE MONTE-CARLO, which was first registered on August 13, 1996 under the number 17485 (with renewal number R96.17401); and

(b) MONTE-CARLO, which was registered on December 31, 2013, Number 14.30170.

In addition to its domain name, the Complainant has a number of other domain names which, it says, redirect to the website at the main page. This include <mcmontecarlo.com>, <sbmmc.com>, <nightlifebymcsbm.com>, <mccasino.hu>, <e-cmc.hu>, and a number of domain names registered in the “.mc” country code Top-Level Domain.

The first Respondent¹ registered the first disputed domain name, <mcc.casino>, on September 14, 2020. The second Respondent registered the second disputed domain name, <montecarlocaso.com>, on December 16, 2020.

Shortly before the Complaint was filed, each disputed domain name resolved to an active web page.

The second disputed domain name resolved to a web page headed with a “logo”:

“CMC (where the first “C” was reversed)
MONTE CARLO CASO
Casino Obligations”

And then the text:

“Monte Carlo Caso is the World’s first online casino where you can [profit] from the casino’s profit!”

According to the Complaint, the web page also featured images of the Complainant’s casino, its company name plate, images of a cruise liner in Monaco bay, and a helicopter featuring the separate MONACAIR trademark.

Clicking on the “Join Now” button re-directed the user to the website at the first disputed domain name, <mcc.com>.

This website enables players to play games such as blackjack, poker, roulette, baccarat, and other casino games. The landing page featured the same Respondent’s “logo” as the “logo” appearing on the <montecarlocase.com> website. The same images of the Complainant’s casino, a cruise liner, and a helicopter have also been featured. In addition, the Privacy Terms and the Terms and Conditions pages stated “The materials on this Site are provided by Monte-Carlo Casino Obligations (“Monte-carlo CASO”)….”

5. Discussion and Findings

No response has been filed by at least the first Respondent. The Complaint and Written Notice have been sent, however, to both Respondents at the electronic and physical coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that each Respondent has been given a fair opportunity to present his or its case.

When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:

(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.

A. Consolidation of Complaints

The Complainant has requested consolidation of its complaints as the disputed domain names have been registered in the names of a number of different entities.

Paragraph 3(c) of the Rules expressly permits a complaint to relate to more than one domain name where all the domain names are registered by the same domain name holder. Notwithstanding this express provision, panels have frequently held that the Panel’s powers under paragraph 10(e) of the Rules may permit consolidation of multiple domain name disputes, subject to satisfaction of the other requirements of Policy and Rules. In particular, paragraph 10(b) of the Rules requires the Panel to ensure that all parties are treated equally and each is given a fair opportunity to present his, her or its case.

In accordance with those requirements, panels have typically allowed joinder against multiple respondents who have registered different domain names where, amongst other things, the domain names in question, or the websites to which they resolve, appear to be under common control and consolidation would be fair and equitable to all parties. The onus of establishing that these requirements have been met falls on the party seeking consolidation. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.

As mentioned in section 4 above, the website which the second disputed domain name resolved to linked through to the website to which the first disputed domain name resolved to. Both websites prominently featured the Respondent’s “logo” and the same images of the Complainant’s casino, a cruise liner, and the MONACAIR helicopter. The terms and conditions on the first website also attribute responsibility for that site to “Monte Carlo Caso” which is, in effect, the second disputed domain name. In addition, in the email received from the second Respondent, he said (omitting formal parts):

“I believe there was a big missunderstanding [sic]. The domain montecarlocaso.com is a landing page for mcc.casino, which is an online business.Works to collect leads and referalls [sic].

“I would like to settle this ASAP and have no problem canceling the domain.

“Pls let me know how can we proceed with this ASAP.”

In these circumstances, it appears clear that both websites were being operated in conjunction with each other. If they were not under common control, their respective controllers were working together in the same enterprise or project. Accordingly, the Panel considers consolidation is appropriate.

For ease of reference, the Panel will refer just to the “Respondents” unless it becomes necessary in a particular case to distinguish between particular Respondents or disputed domain names.

B. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.

There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.

The Complainant has proven ownership of the registered trademarks identified in section 4 above.

The Complainant also claims rights in those expressions and the MC “logo” as unregistered trademarks which it says are protectable under the laws of Monaco.

A number of panels in prior decisions have recognised that the name of the Complainant’s main casino (at least, Casino de Monte-Carlo (or its English equivalent, Monte-Carlo Casino)) is very well-known around the world in respect of gambling, casinos, and entertainment. The Panel considers it likely that the Complainant can claim rights in those expressions as unregistered trademarks having regard to the length of operation of the main casino since 1863 and its renown.

The Panel considers it somewhat debatable whether the Complainant has rights in the acronym MC as an unregistered trademark. Although the Complainant has not submitted evidence of when it started using the MC “logo” or traffic statistics to its site, there is evidence of the number of followers to its various social media accounts which allows an inference that the number of visitors to the sites are likely much higher. Nonetheless, the Panel is not able to accept that the Complainant has established it has rights in “MC” alone as an unregistered trademark on the basis of the limited record in this case.

The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See e.g., WIPO Overview 3.0, section 1.7.

The second disputed domain name <montecarlocaso.com>

In undertaking the comparison, it is permissible in the present circumstances to disregard the generic
Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.

Disregarding the “.com” gTLD, the disputed domain name consists of the Complainant’s registered trademark MONTECARLO and the term “caso”. As this requirement under the Policy is essentially a standing requirement, the addition of the suffix “caso” does not preclude a finding of confusing similarity. See e.g., WIPO Overview 3.0, section 1.8. Apart from anything else, the Complainant’s trademark plainly remains visually and aurally recognisable within the disputed domain name.

The Complainant also contends that the suffix element “caso” is the word “casino” with the letters “I’ and “n” omitted. The Complainant contends therefore that the second disputed domain name is akin to the English translation of its CASINO DE MONTE-CARLO trademark with typographical errors equivalent to typosquatting. This is at least arguably the case.

The first disputed domain name <mcc.casino>

First, this disputed domain name consists of an acronym for the English translation of the Complainant’s trademark, Casino De Monte-Carlo. Second, while it is usual to disregard the new gTLD component, “.casino”, it is permissible to take it into account in appropriate cases. Typically, this has been done where the disputed domain name including the gTLD embodies the complainant’s trademark. See e.g., WIPO Overview 3.0, section 1.11 and cases such as Swarovski Aktiengesellschaft v. Aprensa UG haftungsbeschraenkt, Mike Koefer, WIPO Case No. D2016-2036, <swarov.ski>.

The present case is not on all fours with these types of case as it would need to be seen as a partial initialism “MC” plus “casino” with a superadded “c”. However, the “.casino” gTLD component does give context to the disputed domain name. The panel in Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206, which concerned the CANYON mark and the domain name <canyon.bike> acknowledged the potential effect of the gTLD component in this way.

A three letter acronym of this kind may of course represent many different things or entities. That could well still be the case even in the context of casinos.

In such a case, it is permissible to take into account the content of the website to which the second disputed domain name resolves. As noted in WIPO Overview 3.0, section 1.15, the content of a website is usually disregarded when considering whether a domain name is confusingly similar to a complainant’s trademark. However, panels have recognised that it is permissible to reference the content of a website in cases of doubt to confirm whether it appears prima facie that the Respondent has been targeting the Complainant’s trademark. In the present case, there can be no doubt that is the case. The website to which the second disputed domain name resolved has the features already described including direct reference to “Monte-Carlo Casino”, use of images of the Complainant’s main casino, the Casino de Monte Carlo (or in English, the Monte Carlo Casino), and other indicia highlighting a connection with Monte Carlo and Monaco.

Accordingly, the Panel finds that the Complainant has established that both disputed domain names are confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.

C. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondents have no rights or legitimate interests in the disputed domain names.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which a Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or

(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1.

It is clear from the Complaint and the limited Response from the Second Respondent that there is no dispute that the Respondents are not licensed by or in any way associated with the Complainant. Neither disputed domain name is derived from either Respondent’s own name. Searches undertaken by the Complainant do not disclose any trademark from which the Respondents could have derived either disputed domain name.

The uses being made by the disputed domain names are, or appear to be, commercial businesses providing casino or gambling-type services and do not qualify as legitimate noncommercial or fair uses.

The casino or gambling-type services apparently being offered by the Respondents from or through the websites to which the disputed domain names resolve are effectively in competition with the types of service being provided by the Complainant. As discussed below in section 5.D., the Respondents must have been aware of the Complainant’s trademark and the potential for confusion with the Complainant and its trademark use of the disputed domain names gives rise to. In such circumstances, the use of the disputed domain names does not qualify as a good faith offering of goods or services.

These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondents have no rights or legitimate interests in the disputed domain name. Apart from the second Respondent’s claim that it is all a misunderstanding, the Respondents have not sought to rebut that prima facie case or advance any claimed entitlement. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.

D. Registered and Used in Bad Faith

Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd WIPO Case No. D2010-0470.

Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.

There can be little doubt that the Respondents were well-aware of the Complainant’s trademarks in this case. As already noted, the Complainant’s main casino has been operating under its name for over 160 years and is very well-known around the world. Neither Respondent has any apparent connection with Monte Carlo or Monaco. The second disputed domain name (at least) directly references Monte Carlo. The content of both websites plays heavily on the connection with Monte Carlo and includes images of the Complainant’s main Monte Carlo casino. The Respondents’ “logo” used on both websites also featured the acronym “CMC” (albeit with the first “C” reversed) which are the initials of the Complainant’s Casino de Monte-Carlo trademark.

All of these factors show the Respondents were well-aware of the Complainant’s casino and trademarks. These features are also deployed in a way likely to convey, falsely, an association with or connection between the Respondents’ websites and services and the Complainant’s famous casino.

In these circumstances, therefore, the Panel finds the Complainant has established that the Respondents registered both disputed domain names in bad faith under the Policy and have been using them in bad faith.

Accordingly, the Complainant has established all three requirements under the Policy.

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 disputed domain names, <mcc.casino> and <montecarlocaso.com>, be transferred to the Complainant.

Warwick A. Rothnie
Sole Panelist
Date: April 26, 2021

¹ To simplify matters, Panel will disregard WhoisGuard, Inc. as it is the privacy service, unless it is necessary to refer to it specifically.