Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v; Rochelle Cyril Salcedo, derrick Rose, casinomonaco
WIPO Case No. D2024-2199
•09-08-2024
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v.
ROCHELLE CYRIL SALCEDO, derrick Rose, casinomonaco
Case No. D2024-2199
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 Respondents are Rochelle Cyril Salcedo (the “1st Respondent”) and Derrick Rose (the “2nd
Respondent), both of the Philippines.
2. The Domain Names and Registrars
The disputed domain names <agcasinomonaco8.com>, <agcasinomonaco8.net>, <casinomonaco.vip>,
<casinomonaco8.biz>, <casinomonaco8.co>, <casinomonaco8.com>, <casinomonaco8.live>,
<casinomonaco8.net>, and <casinomonaco8.xyz> are registered with GoDaddy.com, LLC. The disputed
domain name <casinomonaco88.com> is registered with Wix.com Ltd. (the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2024. On May 30, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 30, 2024, 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 (Domains by Proxy, LLC, and Redacted for Privacy) and contact information in the Complaint.
The Center sent an email communication to the Complainant on June 7, 2024, with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, requesting the Complainant to either file separate complaint(s) for the disputed domain names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all domain names are under common control. The Complainant filed an amended Complaint on June 10, 2024.
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
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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 June 14, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2024.
The Center appointed Francine Tan as the sole panelist in this matter on July 26, 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 organized under the laws of Monaco and is the largest employer in the Principality of Monaco. Its main shareholders are the Principality of Monaco and the ruling family. The Complainant has been operating the Casino de Monte-Carlo since 1863. It also operates the Monte-Carlo
Bay Casino, the Casino Café de Paris, and the Sun Casino in Monaco. The Complainant’s casino and resort
facilities are world famous and considered as one of the most luxurious, and have been featured in
numerous motion pictures, magazines and television shows such as James Bond films, Cars 2, Ocean’s
Twelve, Iron Man 2, and Madagascar 3.
The Complainant is the registered proprietor of numerous trade marks, including the following:
- Monaco Trademark Registration No. 02.23234 for CASINO DE MONACO, registered on
September 30, 2002; and
| - | Monaco Trademark Registration No. 96.17407 for CASINO DE MONTE-CARLO, registered on October 30, 1996. |
The respective registration dates of the disputed domain names are as follows:
| - | <agcasinomonaco8.com>, registered on March 30, 2024; |
| - | <agcasinomonaco8.net>, registered on March 30, 2024; |
| - | <casinomonaco8.biz>, registered on March 30, 2024; |
| - | <casinomonaco8.co>, registered on March 30, 2024; |
| - | <casinomonaco8.com>, registered on March 30, 2024; |
| - | <casinomonaco8.net>, registered on March 30, 2024; |
| - | <casinomonaco8.xyz>, registered on March 30, 2024; |
| - | <casinomonaco.vip>, registered on April 1, 2024; |
| - | <casinomonaco8.live>, registered on April 3, 2024; and |
| - | <casinomonaco88.com>, registered on April 5, 2024. |
With the exception of the disputed domain names <agcasinomonaco8.com>, <agcasinomonaco8.net>, and
<casinomonaco8.biz>, which led to inactive webpages, the remainder of the disputed domain names
resolved to online gambling websites.
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 names.
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Notably, the Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. More specifically:
| - | The disputed domain names are confusingly similar to the CASINO DE MONACO trade mark in which the Complainant has rights as they all include the words “Casino” and “Monaco” which are recognizable in the disputed domain names and correspond to the main elements of the Complainant’s trade mark. |
| - | The addition of the number “8” which is a number associated with luck in Asian culture and the addition of the letters “ag” do not prevent a finding of confusing similarity. |
| - | The Respondents have no rights or legitimate interests in respect of the disputed domain names. The Respondents are not authorized by the Complainant to use the Complainant’s trade marks or to register the disputed domain names. There is no evidence that the Respondents have trade mark rights in any of the terms forming the disputed domain names. |
| - | The disputed domain names were registered and are being used in bad faith. The Complainant’s distinctive CASINO DE MONACO trade mark is well-known especially in the field of gambling and has been used extensively. The Complainant’s trade mark has been the target of numerous cybersquatters for nearly 20 years. The Respondents were undoubtedly aware of the Complainant and its CASINO DE MONACO trade mark at the time of registering the disputed domain names. The Respondents’ various websites feature depictions of official logos and references which show that they are professionals in the gambling industry. |
B. Respondent
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Preliminary Procedural Issue: Multiple Respondents
The amended Complaint was filed in relation to nominally different domain name registrants. The Complainant alleges that the domain name registrants are the same entity or mere alter egos of each other, or under common control. The Complainant requests the consolidation of the Complaint against the multiple disputed domain name registrants pursuant to paragraph 10(e) of the Rules.
The disputed domain name registrants did not comment on the Complainant’s request.
Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.
On this preliminary issue, the Panel has to consider whether (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2.
On the issue of common control, non-exhaustive factors to be considered include the Respondents’ identities and contact information; the webhosts; the content or layout of websites corresponding to the disputed domain names; any evidence of Respondent affiliation with respect to the ability to control the disputed domain names; the nature of the marks at issue (e.g., where a registrant targets a specific sector); the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue; and any naming patterns in the disputed domain names.
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The Panel notes the following:
(i) the 1st Respondent’s disputed domain names <agcasinomonaco8.com>, <agcasinomonaco8.net>, and <casinomonaco8.biz> resolve to inactive webpages;
(ii) the 1st Respondent’s disputed domain names <casinomonaco.vip>, <casinomonaco8.co>, <casinomonaco8.com>, <casinomonaco8.live>, <casinomonaco8.net>, and <casinomonaco8.xyz> all resolve to websites which are identical in content and appearance (“1st Respondent’s websites”);
(iii) the 2nd Respondent’s disputed domain name <casinomonaco88.com> resolves to a website (2nd Respondent’s website) which is not identical to the 1st Respondent’s websites.
The Panel also notes that:
(i) the 1st Respondent’s disputed domain names and the 2nd Respondent’s disputed domain name were registered within a week of each other;
(ii) the 1st Respondent’s disputed domain names and the 2nd Respondent’s disputed domain name have similar naming patterns;
(iii) the 1st Respondent’s websites and the 2nd Respondent’s website use the same logo at the top left corner of the respective websites, as well as the same favicon, and both resolve to gambling websites; and
(iv) both registrants’ websites target the gambling industry, which is the industry in which the Complainant has trade marks.
Neither Respondent objected to the Complainant’s request for consolidation. Accordingly, in the interest of procedural efficiency, the Panel finds that consolidation in this case would be fair and equitable to all Parties.
The decision hereafter refers to the 1st Respondent and the 2nd Respondent collectively (as the
“Respondent”).
6.2 Substantive Issues
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 trade mark and the disputed domain names. WIPO Overview 3.0, section 1.7.
The Complainant has shown it has rights in the trade mark CASINO DE MONACO. The omission of the word “DE” (which means “of” in French) in the disputed domain names is of little or no significance as “CASINO” and “MONACO” are the distinctive elements of the Complainant’s trade mark and recognizable within the disputed domain names.
The Panel agrees that the addition of the elements “ag” and/or “8” in the respective disputed domain names does not prevent a finding of confusing similarity between the disputed domain names and the CASINO DE MONACO 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.
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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. There is no evidence that the Respondent is commonly known by any of the disputed domain names and that she was licensed or authorized by the Complainant to use the CASINO DE MONACO trade mark or to register the disputed domain names. The Complainant’s use and registration of the CASINO DE MONACO trade marks long predate the registration dates of the disputed domain names.
The Respondent failed to rebut the prima facie case established by the Complainant 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 Panel finds the second element of the Policy has been established.
C. Registered and Used in Bad Faith
The disputed domain names incorporate the entirety of the distinctive portions of the Complainant’s well- established and famous trade mark. The Panel is persuaded that the Respondent knew of and targeted the Complainant and its CASINO DE MONACO trade marks at the time she registered 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.
| “by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, | The Panel concludes in this case that the circumstances fall within paragraph 4(b)(iv) of the Policy, i.e. of a product or service on [her] web site or location”. |
| Taking into account the strong global reputation of the Complainant’s well-known CASINO DE MONACO trade mark and length of use, a presumption of bad faith by the Respondent, who is unauthorized and unaffiliated to the Complainant, can be made. Furthermore, taking into account the Complainant’s business activity and the content of the websites to which the majority of the disputed domain names direct (in other words, the common area of commerce), the pattern of registration, intended consumers, the absence of any credible explanation for the Respondent’s choice of the disputed domain names, are all factors the Panel has considered in arriving at its conclusion that that the Respondent has registered and is using the disputed domain names in bad faith. WIPO Overview 3.0, sections 3.1.4 and 3.2.1. | |
| Regarding the three disputed domain names which resolved to inactive webpages, the Panel notes the strong global reputation of the Complainant’s mark and the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use does not prevent a finding of bad faith. WIPO Overview 3.0, section 3.3. |
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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 names <agcasinomonaco8.com>, <agcasinomonaco8.net>,
<casinomonaco.vip>, <casinomonaco8.biz>, <casinomonaco8.co>, <casinomonaco8.com>,
<casinomonaco8.live>, <casinomonaco8.net>, <casinomonaco8.xyz>, and <casinomonaco88.com> be
transferred to the Complainant.
/Francine Tan/ Francine Tan Sole Panelist Date: August 9, 2024
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