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 Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States of America / Saman Farazmand, Algeria.
The disputed domain names <monte-carlo1.biz>, <monte-carlo1.com> and <monte-carlo1.net> (the “Disputed Domain Names”) 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 March 25, 2020. On March 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On March 25, 2020, 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 2, 2020 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 amended Complaint on April 3, 2020.
The Center verified that the Complaint together with 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 the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 27, 2020.
The Center appointed Lynda M. Braun as the sole panelist in this matter on May 21, 2020. 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.
Established in 1863, the Complainant is a company organized under the laws of Monaco with its registered office in the Principality of Monaco. The Complainant has been granted a monopoly for the provision of casino gaming services in the Principality of Monaco and operates the Casino de Monte-Carlo, as well as a number of hotels and spas, including the Thermes Marins Monte-Carlo and the Monte-Carlo Beach Club. On February 22, 2019, the Complainant opened its high-end new residence under the name “One Monte-Carlo”. This residence, located next to the Hôtel de Paris Monte-Carlo on the Place du Casino in Monaco, brings together leading luxury brands and a selection of outstanding restaurants. In all, the Complainant employs approximately 3,000 people and is the largest employer in the Principality of Monaco.
The Complainant owns several trademarks, including, but not limited to:
CASINO DE MONTE-CARLO, Registration Number R96.17407, registered in the Principality of Monaco on June 13, 1996, for goods and services in international classes 3, 7, 9, 12, 14, 16, 18, 28, 34, 35, 38, 39, 41, 42, 43, and 45; .MONTE-CARLO, Registration Number 14.30170, registered in the Principality of Monaco on December 31, 2013 in international class 41; and ONE MONTE-CARLO Registration Number 19.00108, registered in the Principality of Monaco on March 15, 2019, in international classes 9, 35, 36, 41, 43 and 44 (collectively the “MONTE CARLO Mark”).
The Disputed Domain Names were registered on January 26, 2020. As of the writing of this Decision, the Disputed Domain Names all resolve to a website promoting gambling in Farsi. According to evidence submitted by the Complainant, the Disputed Domain Names previously resolved to an inactive website, except for <monte-carlo1.com>, which resolved to a gambling website with rolling pictures.
The following are the Complainant’s contentions:
- the Disputed Domain Names are confusingly similar to the Complainant’s trademark.
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
- the Disputed Domain Names were registered and are being used in bad faith.
The Complainant seeks the transfer of the Disputed Domain Names from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding:
(i) the Disputed Domain Names are identical or confusingly similar to trademarks or service marks in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) the Disputed Domain Names were registered and are being used in bad faith.
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, are the Disputed Domain Names identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Names are confusingly similar to the MONTE CARLO Mark as set forth below.
It is uncontroverted that the Complainant has established rights in the MONTE CARLO Mark based on its years of use and its registered trademarks for the MONTE CARLO Mark. The general rule is that “registration of a mark is primafacie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the MONTE CARLO Mark.
The Disputed Domain Names consist of the entirety of the MONTE CARLO Mark with the addition of the number “1”, separating “monte” and “carlo” with a hyphen, and each one followed by a different generic Top-Level Domain (“gTLD”): “.com”, “.biz” or “.net”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of other terms. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Further, the presence or absence of punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity. See Six Continents Hotels, Inc. v. Helen Siew, WIPO Case No. D2004-0656 (citing Six Continents Hotels, Inc. v. Georgetown Inc., WIPO Case No. D2003-0214 (hyphens do not “serve to dispel Internet user confusion here”)); Fort Knox National Company v. Ekaterina Phillipova, WIPO Case No. D2004-0281 (“this Panel believes that the expression true-pay is similar to the trademark TRUEPAY”).
Finally, the addition of a gTLD such as “.com”, “.biz” or “.net” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182. Thus, the Panel concludes that the Disputed Domain Names are confusingly similar to the Complainant’s MONTE CARLO Mark.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its MONTE CARLO Mark. Nor does the Complainant have any type of business relationship with the Respondent. Based on the use made of the Disputed Domain Names to create a website with gambling images, the Panel finds that the Respondent was not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Names. On the contrary, based on the evidence before the Panel, the Respondent registered the Disputed Domain Names for commercial gain.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark may be suggestive of opportunistic bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Based on the circumstances here, the Respondent registered and used the Disputed Domain Names in bad faith to target the Complainant’s MONTE CARLO Mark for commercial gain.
Second, bad faith may be found where the Respondent knew or should have known of the Complainant’s registration and use of the MONTE CARLO Mark prior to registering the Disputed Domain Names. See Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. Such is true in the present case in which the Respondent registered the Disputed Domain Names years after the Complainant obtained its trademark registrations for the MONTE CARLO Mark. In addition, using the Disputed Domain Names to resolve to websites depicting gambling scenes with roulette wheels, blackjack tables, poker tables, Keno and other types of casino games strongly suggests that the Respondent had the MONTE CARLO Mark in mind when registering the Disputed Domain Names. The fame of the MONTE CARLO Mark makes it disingenuous for the Respondent to claim that it was unaware that the registration of the Disputed Domain Names would infringe the Complainant’s rights. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights in the complainant’s trademarks).
Finally, the webpages to which the Disputed Domain Names resolve display activities at a casino. This indicates that the Respondent, by using the Disputed Domain Names, has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s MONTE CARLO Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites, as provided in paragraph 4(b)(iv) of the Policy.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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, <monte-carlo1.biz>, <monte-carlo1.com> and <monte-carlo1.net> be transferred to the Complainant.
Lynda M. Braun
Date: June 9, 2020
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