In January we told you that the Government of Monaco, officially; Gouvernement de la Principauté de Monaco SAM Marques de l’Etat de Monaco filed a UDRP against the domain name MonteCarloVodka.com which is not only a domain name but a brand of Vodka.
Monaco wasn’t happy about their name being put on a Vodka, the logo on the bottle which they said closely resembled the coat of arms of the Principality of Monaco, all without their permission and to make matters worse the Vodka was produced not in Monaco but in France.
“The Panel accepts that the Complainants have rights in respect of the MONTE-CARLO trade mark on the basis of Monegasque trade mark No. 10.27960, registered on July 14, 2010, and International trade mark No. 1069076 registered on December 1, 2010 with a priority date of June 2, 2010.”
“The Disputed Domain Name incorporates the Complainants’ MONTE-CARLO trade mark in its entirety. ”
Except for a hyphen between “Monte” and “Carlo”, the only difference between the Disputed Domain Name and the Complainants’ mark is the inclusion of the generic term “vodka”.
The Panel finds that “Monte Carlo” is the distinctive and prominent component of the Disputed Domain Name and the addition of the generic term “vodka” and hyphen does nothing to distinguish the Disputed Domain Name from the Complainants’ trade mark.
The Complainants contend that the Respondent is not connected or associated with the Complainants and is not on any other basis licensed or authorised to use their MONTE-CARLO trade mark. The Panel accepts that the Complainants have not licensed or otherwise authorised the Respondent to use the MONTE-CARLO trade mark.
The Panel also notes that there is no evidence that the Respondent has been commonly known by the Disputed Domain Name and finds that the use of the Website to market and/or sell the Vodka precludes any argument that the Disputed Domain Name is being used for legitimate noncommercial or fair use purposes.
However in the current case, the Vodka has no affiliation with the city of Monte Carlo or the Principality of Monaco, and is in fact distilled and bottled in Cognac, France.
In addition, the Panel notes that each bottle of the Vodka bears the words “Monte Carlo” in large font, along with a logo which is similar to the coat of arms of the Principality of Monaco.
As such, the Panel finds that the Respondent is taking advantage of the fame of the Complainants MONTE-CARLO trade mark for the purpose of marketing and/or selling the Vodka.
The Respondent therefore cannot be said to have used the Disputed Domain Name in connection with a bona fide offering of goods or services.
Further, the Complainants submit that the Respondent is not commonly known by the “Monte Carlo” name.
While the Respondent submit that it has a pending US trade mark application for the mark “MONTE-CARLO WORLD’S MOST PRESTIGIOUS VODKA” dated July 8, 2011, the Panel notes that in §2(a) (15 U.S.C. §1052) of the US Trade Mark Law: Rules of Practice & Federal Statutes (“US Trade Mark Law”), trade mark applications shall be refused if they consist of a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of goods and is first used by the applicant in connection with wines or spirits on or one year after the date the WTO Agreement (dated April 15, 1994) enters force in the United States.
In addition, §2(b) (15 U.S.C. §1052) of the US Trade Mark Law prohibits the registration of a trade mark comprising of the coat of arms of any US State, municipality or foreign nation.
As a result, the Panel does not find it likely that the Respondent’s pending US trade mark application will be successful or would give the Respondent any legitimate interests in the Disputed Domain Name. Accordingly, in the Panel’s view, the Complainants have made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name and therefore the Respondent now has the burden of demonstrating that it does possess such rights or legitimate interests.
The Respondent has no rights or legitimate interests in the Disputed Domain Name, which may in itself be an indication of bad faith.
The Complainants assert that the Disputed Domain Name is being used to offer for sale counterfeit goods bearing the MONTE-CARLO trade mark. Irrespective of whether the Vodka can be considered to be counterfeit, the Panel finds that the Respondent’s conduct in registering the Disputed Domain Name to market and/or sell the Vodka without the authorization, approval or license from the Complainants amounts to bad faith registration and use under paragraph 4(b)(iv) of the Policy
Further, as discussed in relation to the Respondent’s lack of rights or legitimate interests in the Disputed Domain Name, the Website, as well as the Vodka, bears a logo which is confusingly similar to that of the coat of arms of the Principality of Monaco.
The Panel finds that there is no plausible explanation for the Respondent’s use of the MONTE-CARLO trademark along with a logo which is confusingly similar to the coat of arms of the Principality of Monaco other than to trade on the Complainants’ goodwill in the trade mark, and to attract for commercial gain, Internet users to the Disputed Domain Name by creating a likelihood of confusion with the Complainants’ MONTE-CARLO trade mark as to the source, sponsorship, affiliation, or endorsement of the Vodka
Given the degree of fame of the Complainants’ MONTE-CARLO trade mark, the Panel accepts that the Respondent has registered and uses the Disputed Domain Name solely for the purpose of capitalising on the Complainants’ reputation and goodwill to generate profits. In these circumstances the Panel finds that there is no basis on which to infer that the Respondent has used the Disputed Domain Name in any manner or for any purpose otherwise than in bad faith.