WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Universal Spheres Inc.

Case No. D2010-0822

1. The Parties

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

The Respondent is Universal Spheres Inc of Drums, Pennsylvania, United States of America, and St John's, Antigua and Barbuda.

2. The Domain Name and Registrar

The disputed domain name <monacoclub.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 21, 2010. On May 21, 2010, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On May 21, 2010, Network Solutions, LLC 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 May 26, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 15, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 16, 2010.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on June 23, 2010. 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 Monegasque company, with 70% of the share capital owned by the Government of the Principaute de Monaco. Since April 2, 1863, the Complainant has held the exclusive monopoly for casino and gambling activities in Monaco. The Complainant has operated the Casino de Monte-Carlo, also known as the Casino de Monaco, in Monaco for more than 140 years. The Complainant's casino has been featured in numerous motion pictures, magazines and TV shows. The Complainant's casinos are known for its luxurious up-scale gambling facilities. The Complainant operates two palaces and two deluxe hotels, sixty conference and banqueting rooms, thirty-three bars and restaurants, three spas, as well as cultural and leisure venues including the Opera, the Salle des Etoiles, the Jimmy'z night club, the Monte-Carlo Golf Club and the Monte-Carlo Country Club.

The Complainant owns several trademark registrations, including CASINO DE MONACO (Monaco Registration No. 23610, filed on July 1, 2002), CASINO DE MONTE-CARLO (Monaco Registration No. 17485, filed on August 13, 1996), MONTE-CARLO CLUBBING (Monaco Registration No. 27719, filed on August 29, 2007), and MONTE-CARLO GOLF CLUB (Monaco Registration No. 22834, filed on May 31, 2001).

The disputed domain name was registered on August 25, 1998. The Respondent appears to have acquired the disputed domain name from Softlayer Technologies Inc in 2009. At the time of the filing of the Complaint, the disputed domain name reverted to a website which provided online gambling and gaming services including casino games, roulettes and bingo.

5. Parties' Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant contends that the disputed domain name is confusingly similar to the Complainant's trademarks CASINO DE MONTE-CARLO and CASINO DE MONACO. The Complainant submits that its trademarks should be accorded a broad ambit of protection. The Complainant relies upon several Panel Decisions which recognize the famous nature of its trademarks. (see La Société Anonyme des Bains de Mer et du Cercie des Etrangers àMonaco v. Thomas Proud, WIPO Case No. D2000-1316, La Societe Anonyme des Bains de Mer Et Du Cercle des Etrangers A Monaco v. Internet Marketing Associates., WIPO Case No. D2000-1317, Société des Bains de Mer et du Cercie des Etrangers à Monaco v. Empire Online Ltd, WIPO Case No. D2006-0289 and Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Lucian Toh and Max Wright, WIPO Case No. D2007-0249).

The Complainant further contends that the word “club” in the disputed domain name does not diminish the strong similarity to the Complainant's trademark CASINO DE MONACO, because the term “club” is a generic term which is often used to describe a “casino” or “nightclub”.

The Complainant submits that the Panel determining whether the disputed domain name infringes the Complainant's trademark rights must evaluate the domain name together with the content of the website with which it is identified. In this case, the disputed domain name is used in connection with the operation of a website which provides online gambling content, such as casino games, roulettes and bingos.

Rights or Legitimate Interests

The Complainant submits that the Respondent does not own a trademark registration which includes the words “Monaco” and “club” in Europe or the United States. The inference being that the Respondent is not commonly known by the words “Monaco” and “club”, and would have no reason to use the word “Monaco” because the Respondent is located in the United States. The Complainant also contends that the Respondent has never been authorized, licensed or given permission to use the Complainant's trademarks. The Complainant further submits that the Respondent is not making a bona fide use of the disputed domain name, and is using the disputed domain name in connection with online gambling and gaming services, which is in direct competition to the Complainant's services.

Registered and Used in Bad Faith

The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith for the following reasons: (i) the Complaint's trademarks are well-known and there is no doubt that the Respondent would have known about the Complainant's trademark rights when it registered the confusingly similar domain name; (ii) the Respondent is using the confusingly similar domain name to provide online gambling services including casino games, roulettes and bingo which are in direct competition to the Complainant's services and (iii) the Respondent has a history of trademark infringement and was sued in the District Court of Nevada by Station Casinos.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

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

(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. Identical or Confusingly Similar

The Panel finds that the Complainant owns several trademark registrations in Monaco for the trademarks CASINO DE MONTE-CARLO and CASINO DE MONACO, as evidenced by the Certificates of Registrations submitted with the Complaint.

In view of the Complainant's extensive use of these trademarks, the Panel is prepared to find that the CASINO DE MONTE-CARLO and CASINO DE MONACO trademarks have developed a significant reputation around the world for gaming and related services, and the operation of casinos, to the point where the marks must be recognized as well-known brands. Accordingly, the Panel is prepared to infer that the Respondent was aware of the Complainant's trademark rights in the CASINO DE MONTE-CARLO and CASINO DE MONACO marks, at the time that the Respondent acquired the disputed domain name.

The Panel is also prepared to find that the word “club” is often used to describe or denote a “casino”. Therefore, the use of the word “club” instead of “casino” in the disputed domain name does not serve to distinguish the disputed domain name from the Complainant's trademark.

The Panel concludes that the disputed domain name <monacoclub.com> is confusingly similar to the Complainant's trademark CASINO DE MONACO.

The Panel therefore finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel is prepared to find that the Respondent does not have rights or legitimate interests in the disputed domain name.

As noted above, the Panel finds that the Respondent must have been aware of the Complainant's rights in the well-known CASINO DE MONACO trademark when it registered the disputed domain name. The Respondent did not file any response to the Complainant's contentions and accordingly, the Respondent did not deny that it had such knowledge. The Respondent is operating a website in connection with the disputed domain name that provides online gambling and gaming services which is in direct competition to the Complainant's services. These factors support the conclusion that the Respondent adopted the disputed domain name in order to trade on the goodwill and reputation of the Complainant, and not because of any legitimate interest or right.

The Complainant has therefore satisfied the requirements under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is prepared to find that the Respondent has registered and is using the disputed domain name in bad faith.

The Panel finds that the Respondent must have been aware of the Complainant's trademark rights in the marks CASINO DE MONTE-CARLO and CASINO DE MONACO. The Respondent registered the disputed domain name and is using the disputed domain name in connection with operation of an online gambling and gaming website which is in direct competition to the Complainant's services, and which is obviously similar to the core business of the Complainant. The Panel is prepared to infer that the Respondent is deliberately trading on the goodwill and reputation of the Complainant and the Complainant's trademarks for the purposes of monetary gain.

Accordingly, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(iii) under the Policy.

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 disputed domain name <monacoclub.com> be transferred to the Complainant.

Christopher J. Pibus
Sole Panelist

Dated: July 8, 2010