No rights for third parties as a result of lapsed registration
In Société des Bains de Mer et du Cercle des Etrangers à Monaco v Internet Billions Domains Inc, World Intellectual Property Organization (WIPO) panellist Luca Barbero has ordered the transfer of 10 domain names to the complainant, holding that its failure to renew the domain names' registrations did not give the respondent rights to register them.
Société des Bains de Mer et du Cercle des Etrangers à Monaco (SBM) is the sole company granted authority to organize gambling in Monaco. It has been operating under the name Casino de Monte Carlo for over 140 years and owns the trademark CASINO DE MONTE-CARLO. It obtained a ruling from the US Court of Appeals for the Fourth Circuit last year ordering the transfer of 43 domain names incorporating the mark CASINO DE MONTE-CARLO (see Trademark Act offers protection for services provided outside the United States). However, after the domain names were transferred, SBM failed to renew some of the registrations on time. Internet Billions Domains Inc registered 10 of these names, which consist of variations of 'sexycasinomontecarlo.com' and 'monte-carlocasino.com', in its own name. SBM filed a complaint with WIPO.
Barbero ordered the transfer of the disputed domain names. He found that the names were confusingly similar to the CASINO DE MONTE-CARLO trademark despite the addition of other elements. He further held that Internet Billions had no legitimate interest in the domain names as:
- it was not authorized by SBM to use the famous mark;
- it was not licensed to operate a casino;
- it was based in Costa Rica; and
- it had no business links whatsoever with SBM.
Barbero also held that SBM's failure to renew its domain name registrations did not grant third parties any legitimate interest in them. Barbero concluded that Internet Billions had registered the names in bad faith and ordered their transfer.
Rachel Aaron, Hammonds, London
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