Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v; John Doe

WIPO Case No. D2025-1261

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v.
John Doe

Case No. D2025-1261

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 John Doe, United States of America (“United States”).

2. The Domain Names and Registrar

The disputed domain names <monacocasinocertificate.com> and <monacocasinocertification.com> are registered with Spaceship, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2025.
On March 28, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On March 31, 2025, 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 (Privacy service provided by Withheld for Privacy ehf) and
contact information in the Complaint. The Center sent an email communication to the Complainant on March
31, 2025, 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 4, 2025.

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 7, 2025. In accordance with the Rules, paragraph 5, the due date for Response was April 27, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 28, 2025.

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The Center appointed Dawn Osborne as the sole panelist in this matter on May 2, 2025. 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

Founded on April 6, 1863 by a Sovereign Decree passed by Prince Charles III, Monte-Carlo Société des employer in the Principality of Monaco.
Bains de Mer is a company organized under the laws of Monaco with its registered office in the Principality of
Monaco. Its main shareholders are the Principality of Monaco and its ruling family, namely, the House of

At first, Monte-Carlo Société des Bains de Mer was set up as a public company to run the famous Casino de casino gaming services in the Principality of Monaco. Therefore, Monte-Carlo Société des Bains de Mer has been the sole corporation with the state permission to operate casinos in the Principality of Monaco since April 2, 1863. The most recent renewal of Monte-Carlo Société des Bains de Mer’s Privilège des Jeux was granted to Monte-Carlo Société des Bains de Mer by the Ordonnance Souveraine No. 15.732 dated March 13, 2003.

The Complainant is the owner of the trade mark CASINO DE MONACO, registered, inter alia, as trade mark no 02.23234 in Monaco since September 30, 2002.

The disputed domain names registered on September 18, 2024 resolve to parking pages.

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 names are confusingly similar to the Complainant’s trade mark CASINO DE MONACO, given they both include the terms “Monaco” and “Casino”, which are directly recognizable within the disputed domain names and corresponds to the main elements of the Complainant’s trademark CASINO DE

MONACO. The addition of the words “certificate” or “certification” does not prevent a finding of such confusing similarity between the disputed domain names and the Complainant’s CASINO DE MONACO trademark.

The Respondent has no rights or legitimate interests in the disputed domain names. The Complainant has not authorised the Complainant and the Respondent is not commonly known by the disputed domain names.

There is no use of the disputed domain names so there is no bona fide offering of goods or services or a legitimate noncommercial or fair use. The disputed domain names are being passively held. The trademark CASINO DE MONACO is well-known especially in the field of gambling. Nonetheless, the Respondent deliberately decided to register the disputed domain names associating “Monaco” and “Casino” with the words “certificate” and “certification”, leading internet users to believe that they are like official websites of the Complainant’s world-famous casino. The Respondent has provided false contact information to the WhoIs database a strong indication of bad faith.

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B. Respondent

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

6. Discussion and Findings

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 of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“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 Panel finds the CASINO DE MONACO mark is recognizable within the disputed domain names.
Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.7.

Although the addition of other terms here, “certificate” and “certification” may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain names and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

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 names. 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 names such as those enumerated in the Policy or otherwise.

The Respondent is not authorised by the Complainant or commonly known by the disputed domain names.

Since the disputed domain names have not been used there is no legitimate noncommercial fair use or bona fide offering of goods or services.

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The Respondent has supplied false contact details to the WhoIs register for the disputed domain names which demonstrates a lack of rights or legitimate interests.

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.

In the present case, the Panel notes that the Respondent has not used the disputed domain names.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness and reputation of the Complainant’s trademark, that the Complainant is the

only company licensed to provide gambling services in Monaco and finds that in the circumstances of this case the passive holding of the disputed domain names does not prevent a finding of bad faith under the Policy.

Further the Respondent’s submission of false address details to the WhoIs database indicates bad faith.

WIPO Overview 3.0, section 3.2.1.

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 names <monacocasinocertificate.com> and

<monacocasinocertification.com> be transferred to the Complainant.

/Dawn Osborne/
Dawn Osborne
Sole Panelist
Date: May 12, 2025