The owners of the world famous land gambling brands Casino de Monte Carlo and Casino de Monaco, La Société des Bains de Mer et du cercle des étrangers à Monaco, has won a branding case against Australian online casino company Around Pacific, resulting in an order that the domain name Casino-Monaco-Gold.com be transferred to the plaintiff.
Case No. D2008-1616 at the WIPO Arbitration and Mediation Center was handled by Debra J. Stanek following submissions in October 2008 from the land casino operation that the Go Daddy-registered domain name infringed their rights.
The land casino claimed that it was granted a monopoly in Monaco by a government authorisation dating back to 1863, and since then has operated land gambling operations in the principality. It also legitimately uses the Internet domain Monte Carlo Casino.com.
Despite this, Around Pacific registered the disputed domain name Casino-monaco-gold.com on January 15, 2006. The domain name currently resolves to a GoDaddy parking page offering a variety of links to gambling related websites.
La Société des Bains de Mer et du cercle des étrangers à Monaco claimed that the domain name is identical or confusingly similar to a trademark or service mark in which it has rights as the founder and manager of the Casino de Monte Carlo in Monaco, which it has operated for more than 140 years. The Casino de Monte Carlo has become famous worldwide and is one of the most recognized symbols of the Principality of Monaco. It attracts a clientele from numerous countries.
Since April 2, 1863, complainant has been granted by the authorities of the Principality of Monaco a monopoly for casino and gambling industries within the territory of Monaco, and is therefore the sole company that can organise games and gambling in Monaco. The trade marks Casino de Monaco and Casino de Monte-Carlo were registered some years ago and the disputed domain is confusingly similar to both. The registrants of the domain name are geographically distant from Monaco, being based in Australia, and they have not received any authorisation from Monaco officials to use the terms.
The disputed domain name was therefore registered in bad faith, and is using complainant's trademark and global fame to attract Internet users to visit Internet directories that are linked to casino websites. This conduct results in commercial gain for the owner of such portal website, as many websites remunerate Around Pacific for each click-through giving access to their site.
Around Pacific contended that the disputed domain name consists of three common words: casino (meaning a gambling place), Monaco (referring to a nation or the name of a location), and gold (referring to a metal, but sometimes meaning luckiness, wealth, etc). None of the words in the mark is identical or confusingly similar to complainant's mark. The disputed domain name does not contain a comparable unique term.
Stanek said that in order to prevail, the complainant must show that the domain is identical or confusingly similar to a mark in which complainant has rights; that the respondent has no legitimate claim or rights to it and it has been registered and is being used in bad faith.
She found that the complainant had met these requirements and ordered that the domain name be transferred to the complainant.
The case is of interest to online gambling operators, because there are at least seven (and perhaps more) online gambling websites powered by almost all the major software providers that use the names Monaco and Monte Carlo in their domains...could they be next on La Société des Bains de Mer et du cercle des étrangers à Monaco's clean-up list?
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