Roll of the dice fails to secure valuable domain name.
The government of Monaco has lost a cybersquatting claim against the domain name Monaco.com.
Through its trademark holding company, Monaco Brands, the government licenses the use of the names Monaco and Monte Carlo in categories in which it holds trademark rights.
While Monaco has trademark protection in its home country, its rights are more limited elsewhere. In the United States, its trademarks are figurative marks that disclaim “Monaco.”
The domain name monaco.com is currently held by Escrow.com as part of a payment plan transaction. The seller has the surname Monaco, and the buyer is a newly formed company launching a sales automation and customer relationship management platform.
The government became aware of the potential sale after a broker representing the seller contacted prospective buyers, including the Complainant.
Although the domain was in escrow, the panel exercised its discretion to treat the buyer as the Respondent, as it was the party developing and intending to use the domain. The Respondent was represented by counsel John Berryhill.
Even though the buyer was the Respondent, a three-member Czech Arbitration Court panel found that Escrow.com, the seller, and the buyer each had legitimate interests in the domain name and that it was neither registered nor used in bad faith.
The panel noted that the startup has raised millions of dollars in funding, hired more than 30 employees, and retained a prominent intellectual property law firm to obtain a clearance opinion for its planned use of the Monaco name.
David Tayer represented the Complainant. Tayer is a panelist for Czech Arbitration Court and World Intellectual Property Organization. He was also a board member of AFNIC, the registry for France’s .fr domain.
The only other country I’m aware of that has tried to get its matching domain through UDRP is New Zealand. It was found guilty of reverse domain name hijacking in 2002.
Fun fact – co-panelist Dawn Osborne was a partner of Tony Willoughby, the presiding panelist in the NewZealand.com proceeding.
Fun fact, from a fun guy.
We don’t always see eye to eye.
But your wisdom and wit are mighty high.
Most times. 🙂
Reminds me: years ago I was against your ideas about domains as “property.” All these years and years later, couldn’t agree more, at least mostly, in light of the issues you raised.
You probably wouldn’t like me, and that’s okay. 😉
Luckily, the opposite outcome in this Monaco*com case versus the infamous France*com case. I expect to see a lot more sovereign governments attempt piracy of geo dotcoms in the future.
Hiring a broker is a risky proposition with their outreach efforts.
Mr. Berryhill, Esq. should become a UDRP panelist. He has more experience possibly than anyone on the UDRP topic. I see a growing number of panelist that represent complainants but fewer that represent domain registrants.
I agree on everything