International Bancorp, LLC v. Societe Des Bains De Mer Et Du Cercle Des Etrangers A Monaco

329 F.3d 359 (4th Cir. 2003)

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Nature of the Case

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Facts

D owns and operates historic properties in Monte Carlo, Monaco, including resort and casino facilities. It has operated the 'Casino de Monte Carlo' trademark since 1863. The mark is registered in Monaco, but not in the United States. D promotes this casino, along with its other properties, around the world. For 18 years, D promoted its properties from a New York office staffed with four employees. and $1 million annually, include trade show participation, advertising campaigns, charity partnerships, direct mail solicitation, telephone marketing, and solicitation of media coverage. P consists of five companies formed and controlled by a French national, which operate more than 150 web sites devoted to online gambling. Fifty-three of those web sites include domain addresses using some portion of the term 'Casino de Monte Carlo.' The sites also exhibit pictures of the real Casino de Monte Carlo's exterior and interior, contain renderings that are strikingly similar to the Casino de Monte Carlo's interior, and make allusion to the geographic location of Monte Carlo, implying that they offer online gambling as an alternative to their Monaco-based casino, though P operates no such facility. D challenged P in the World Intellectual Property Organization (WIPO). A panel ruled against P and ordered the transfer of the 53 domain addresses to D. P brought suit in federal court against D seeking declaratory judgment. D counterclaimed under the Lanham Act for trademark infringement under section 1125(a); under section 1125(c); cybersquatting under section 1125(d)(1); and unfair competition in violation of section 1126(h). The court ruled in favor of D on its trademark infringement claim and on its cybersquatting claim, awarding D $ 51,000 in statutory damages and transfer of 43 of the 53 contested domain addresses. P appealed.