La Société des Bains de Mer et du cercle des étrangers à Monaco v. Virtual Clicks
Case No. D2008-1614
1. The Parties
Complainant is La Société des Bains de Mer et du cercle des étrangers à Monaco, Place du Casino, Monte Carlo, of Monaco, represented by De Gaulle Fleurance & Associés, France.
Respondent is Virtual Clicks, San Diego, California, of United States of America.
2. The Domain Name and Registrar
The disputed domain name <monacovirtualonlinecasino.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2008. On October 23, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name at issue. On October 23, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 30, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 19, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 20, 2008.
The Center appointed William F. Hamilton as the sole panelist in this matter on December 2, 2008. 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
In 1863, the Principauté de Monaco granted the Société des Bains de Mer et du cercle des étrangers à Monacoa casino and gambling monopoly within Monaco. For over 140 years, the Société has operated a casino and gambling business in Monaco.
The Société owns the mark CASINO DE MONACO which was registered on September 30, 2002, and the mark CASINO DE MONTE-CARLO, registered on August 13, 1996 and renewed on October 10, 2006, with the Monaco Trademark Office. Complainant is referred to by the public as both the Casino de Monaco and Casino de Monte Carlo.
Respondent registered the domain name <monacovirtualonlinecasino.com> on January 18, 2004. The domain name currently resolves to a website offering a variety of links related to “Las Vegas” gambling, resort and tourist locations.
5. Parties' Contentions
A. Complainant
Complainant asserts that the disputed domain name <monacovirtualonlinecasino> is confusingly similar to its mark CASINO DE MONACO, that Respondent has no rights or legitimate interests in the disputed domain name, and that the name was registered and is being used in bad faith to attract unsuspecting Internet users.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant must prove each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Complainant must carry its burden of proof by a preponderance of evidence. Bootie Brewing Company v. Deanna D. Ward and Grabebootie Inc.,
WIPO Case No. D2003-0185.
A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant's mark. Respondent has merely reversed the order of the words “monaco” and “casino”, dropped the insignificant “de” and then added two generic terms, “virtual” and “online” between them. It is well-established that the transposition of words from a word mark and the addition generic terms is insufficient to avoid confusion. Société des Bains de Mer et du Cercle des Etrangers à Monaco v. LaPorte Holdings, LLC., WIPO Case No. D2005-0526, Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Mark Bolet,WIPO Case No. D2006-1245;Hoffmann-La Roche Inc. v. One Step Closer, Bob Dilan,
WIPO Case No. 2008-0719.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out in particular, but without limitation, three circumstances which, if proved by Respondent, shall be evidence of Respondent's rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii), namely:
(i) before any notice of the dispute to Respondent, Respondent's use of, or demonstrable preparation to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods and services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain names, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent has not provided an explanation for its use of Complainant's mark. Respondent's use is not authorized and Respondent has never been a licensee of Complainant. It is apparent that Respondent intends to utilize the contested domain name for commercial gain. There is no evidence that Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
Accordingly, Complainant has established that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain names registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain names; or
(ii) The Respondent has registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain names, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's websites or other on-line locations, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's websites or locations or of a product.
The Panel has no difficulty in concluding that Respondent registered and is using the disputed domain name to attract Internet users to Respondent's website by confusing Internet users in violation of Policy paragraph 4(b)(iv). It is beyond doubt that Respondent was aware of Complainant's well-known mark and domain name. Respondent has merely reversed words found in Complainant's mark and added two generic terms. Respondent's bad faith is further illustrated by the fact that the disputed domain name resolves to a gambling oriented website composed principally of links promoting “Las Vegas” resorts, gambling activities and tourist related locations.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <monacovirtualonlinecasino.com> be transferred to Complainant.
William F. Hamilton Sole Panelist
Dated: December 11, 2008
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