Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v; hao hao, jilimvp
WIPO Case No. D2024-4578
•23-12-2024
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v.
hao hao, jilimvp
Case No. D2024-4578
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 Respondent is hao hao, jilimvp, Philippines (the).
2. The Domain Name and Registrar
The disputed domain name <montecarlo1.casino> is registered with Dynadot Inc (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, communication to the Complainant on November 8, 2024, 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 November 13, 2024.
2024. On November 7, 2024, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On November 8, 2024, the Registrar transmitted
by email to the Center its verification response disclosing registrant and contact information for the disputed
domain name which differed from the named Respondent (Redacted for Privacy, Privacy Protect, LLC,
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 November 14, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 4, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 5, 2024.
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The Center appointed Alfred Meijboom as the sole panelist in this matter on December 10, 2024. 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 which was founded on 1863 by Sovereign Decree. With nearly 3,000 employees the Complainant is one of the largest employers in Monaco. Since 1863, the Complainant is operating the Casino de Monte-Carlo, and it currently also owns and operates three other casinos in Monaco, a resort, 34 restaurants and bars, and three spas, as well as cultural and leisure venues.
The Complainant is the owner of many trademark registrations which include the term MONTE-CARLO, including:
| - | Monégasque word mark CASINO DE MONTE-CARLO, with registration number 96.17407, registered on |
October 30, 1996, for goods and services in classes 3, 7, 9, 12, 14, 16, 18, 28, 34, 35, 38, 39, 41, 42, 43, and 45;
- Monégasque word mark MONTE-CARLO, with registration number 14.30170, registered on February 12, 2014 for services in class 41; and
- Monégasque word mark ONE MONTE-CARLO, with registration number 16.00277, registered on June 11, 2016 for services in classes 35, 36, 37 and 44.
The disputed domain name was registered on April 21, 2024 and is currently inactive, but was used to redirect Internet users to a gambling platform.
5. Parties’ Contentions
A. Complainant
The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.
Notably, the Complainant contends that the disputed domain name is confusingly similar to the
Complainant's trademarks MONTE-CARLO, CASINO DE MONTE-CARLO, and ONE MONTE-CARLO,
since the disputed domain name contains these trademarks in their entirety, without the hyphen and with a
“1” added or converted from “one,” while the CASINO DE MONTE-CARLO trademark combines the disputed
domain name with the Top-Level Domain (“TLD”) “.casino,” except for the word “de” which was omitted.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name because the Respondent holds no intellectual property rights over any trademark associating the terms “MONTE-CARLO” and “1” in the gambling business, the Complainant has never authorized the Respondent to register and use the disputed domain name, and the Respondent has registered and used the disputed domain name in bad faith.
The Complainant alleges that the Respondent has registered the disputed domain name in bad faith as the strong reputation and world renown of the Complainant's trademarks MONTE-CARLO and CASINO DE MONTE-CARLO in the field of gambling render it impossible for the Respondent to have been unaware that the registration and use of the disputed domain name would infringe the Complainant's rights. The Complainant also alleges that the Respondent's contact details in the WhoIs register do not refer to any real company address and are therefore deliberately misleading, making it impossible to easily identify the person who registered the disputed domain name. And the Complainant alleges that the Respondent is clearly professional in the gambling industry as the disputed domain name was previously used in
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connection with a gambling platform on which the Respondent claimed to be the “world’s top online casino” or “the most popular casino in Asia.” According to the Complainant, the Respondent should therefore have reasonably known of the notoriety and world fame of the Complainant’s trademarks when it registered the
disputed domain name.
The Complainant further contends that the Respondent has been using the disputed domain name in bad faith because it redirected to a gambling platform which contained numerous references to the gambling business and claims to be the best online casino in the “world’s top online casino” or “the most popular casino in Asia.” The Complainant also contends that the Respondent selected the TLD “.casino” only because it refers to the Complainant’s trademarks and core business and therefore attract more Internet users on its gambling platform. According to the Complainant it is therefore impossible that the Respondent’s decision to register the disputed domain name which is confusingly similar to the Complainant’s trademarks be purely fortuitous or coincidental, and creating such a strong likelihood of confusion between the Complainant’s trademarks and the disputed domain name is a clear example of bad faith not only during the registration process of the disputed domain name but also in its use.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Respondent did not file a Response. However, as set out in section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the consensus view of UDRP panels is that the respondent’s default does not automatically result in a decision in favor of the complainant. The Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from the Respondent’s default, paragraph 4 of the Policy requires the Complainant to support its assertions with actual evidence in order to succeed in this proceeding. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.
Under the Policy, the Complainant must prove that:
i. the disputed domain name is identical or confusingly similar to a 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
It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.
The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.
The entirety of the Complainant’s MONTE-CARLO trademark is reproduced within the disputed domain name, just as the Complainant’s ONE MONTE-CARLO trademark is entirely reproduced in the disputed domain name, with the element “ONE” converted into “1” at the end of the disputed domain name, which does not take away the similarity between the trademark and the disputed domain name. Accordingly, the
disputed domain name is confusingly similar to the Complainant’s MONTE-CARLO trademark for the
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purposes of the Policy.
The Panel finds the first element of the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.
Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.
The Complainant has undisputedly demonstrated that the Respondent has no trademark rights of its own in connection with the disputed domain name, the Respondent has not obtained consent from the Complainant to register and use the famous MONTE-CARLO trademarks in the disputed domain name in connection with a redirection in order to drive Internet consumers, likely seeking the Complainant, to unrelated online casino activities which, moreover, are not a bona fide offering of goods or services, nor a noncommercial or fair use of the disputed domain name.
The Panel finds the second element of the Policy has been established.
C. Registered and Used in Bad Faith
The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
| MONTE-CARLO trademarks to have a worldwide reputation (e.g., Société Anonyme des Bains de Mer et du | The Panel concurs with many other UDRP panels who have found the MONTE-CARLO and CASINO DE reputation, in absence of the Respondent’s rebuttal, the Panel infers that the Respondent must have had the Complainant’s trademarks in mind when it registered the disputed domain name, which makes the registration of the disputed domain name in bad faith. |
| commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s famous MONTE- | |
| In the present case, the Panel further notes that the Respondent intentionally attempted to attract, for the Policy. |
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The Panel finds that the Complainant has established the third element of 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 name <montecarlo1.casino> be transferred to the Complainant.
/Alfred Meijboom/
Alfred Meijboom
Sole Panelist
Date: December 23, 2024
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