Deliberate intent to associate with geographic location was not sufficient to show bad faith

For over 150 years Complainant has enjoyed a government-granted monopoly for casino and gambling activities, and is the sole company entitled to organize games and gambling in Monaco. Respondent registered the domain names <montecarlo.biz> and <montecarlo.ws> in 2002 and 2005.

The Panel denied the Complaint, finding there was no bad faith registration or use.

No bad faith registration

Complainant registered the term “Monte Carlo” as a trademark in 2013, after Respondent registered or acquired the domain names (in 2002 and 2005 respectively). When Respondent acquired the domain names, Complainant owned only the CASINO DE MONTE-CARLO trademark.

As there may be legitimate and non-infringing third party uses of the “Monte Carlo” denomination by others, the Panel was not prepared to infer that the purpose or aim of the registration of the domain names was to take advantage of confusion between the domain names and the trademark owned by Complainant (or indeed any other intellectual property rights, such as a brand or name owned by Complainant).

The Panel observed that even if previous UDRP panels already ordered transfer of many domain names to Complainant, those cases concerned domain names including the terms “Casino”” and “Monte Carlo”. Consequently, it did not preclude a decision in this case denying the complaint in different circumstances and, in particular, if the disputed domain names did not contain any reference to casino or gambling.

No bad faith use

Concerning the criteria of bad faith in the use of the domain names, the fact that the domain names did not appear to resolve to any website may create inefficiencies in terms of the allocation and availability of domain names. But that on its own was not sufficient in this case for the Panel to make a finding of bad faith. Such a finding required the Complainant to show by a preponderance of evidence that it was more likely than not that the Respondent acted in bad faith. The Panel found here that such a showing had not been made.

A deliberate intent to associate with the geographic location was likewise not sufficient to show bad faith with respect to Complainant.

Moreover, the Panel was unable to identify, in any reliable manner, other circumstances demonstrating bad faith, including, for example, Complainant having a particularly well-known trademark, a lack of response to the Complaint, and the registrant’s concealment of its identity. Complainant did not demonstrate that it was well-known under the term MONTE CARLO which was more, in itself, a reference to a geographic location.

Finally, as to Complainant’s contention relating to a rerouting towards a sports betting site prior to the Complaint, the Panel concluded that there was insufficient probative evidence of this in the record to establish bad faith. The only document supplied by Complainant consisted in a print out of the site without any link with or reference to the domain names. Respondent admitted that there was fleeting use of the domain names in connection with online sports betting. It was not apparent, however, based on the limited record before the Panel that this demonstrated Respondent used the domain names in a deliberate attempt to create confusion with Complainant. Accordingly, even if the Panel considered that Respondent did not contest a fleeting nexus with a sports-related online utilization, in the Panel’s view that use would, on its own, be insufficient to demonstrate bad faith in the use of the domain names.

La Société Anonyme des Bains de Mer et du Cercle des Etrangers à Monaco v. Ritz Advisory Ltd., WIPO Case No. D2015-1087

About the Author: Evan Brown is a technology and intellectual property attorney helping clients with a wide variety of issues, including domain name disputes under the UDRP. Call him at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases