WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

L’Anse du Portier v. Registration Private, Domains By Proxy, LLC / Rebecca Whitlocke

Case No. D2021-0601

1. The Parties

The Complainant is L’Anse du Portier, Monaco, represented by Monaco Intellectual Property (Mipro), Monaco.

The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Rebecca Whitlocke, France.

2. The Domain Name and Registrar

The disputed domain name <mareterramc.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2021. On February 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 26, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 3, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 5, 2021.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2021. Upon the Respondent’s request for an extension on March 26, 2021, the Center granted an extension for submission of Response through April 2, 2021. The Response was filed with the Center on April 2, 2021.

The Center appointed Adam Taylor as the sole panelist in this matter on April 13, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is constructing a new seafront area of Monaco known as “Mareterra”. According to the Complainant’s website, the project was launched in 2013.

The Complainant’s website is located at the domain name <mareterra.com>. The Complainant owns some other “mareterra” domain names including <mareterra.mc>.

The Complainant is the proprietor of a number of registered figurative trade marks for the word “Mareterra” plus design including Monaco trade mark no. 20.00012, filed on December 13, 2019, registered on January 14, 2020, in classes 1-45.

The Respondent, a journalist and blogger, operates a blog called “Access Riviera” which covers topics relevant to the French Riviera and Monaco and has achieved over 425,000 views.

In July 2017, the Respondent set up a Twitter account “@MareterraMC”, whose profile currently states: “Information page with updates about #Mareterra (previously Portier Cove Monaco) • Website/blog coming circa summer 2021. #mareterramc #portiercove”.

The Respondent registered the disputed domain name on December 13, 2020. It has since been used for a GoDaddy parking page with pay per click (“PPC”) links relating to fish and seafood.

5. Parties’ Contentions

A. Complainant

The following is a summary of the Complainant’s contentions:

The Complainant is well known. Its “Mareterra” project has been widely reported in the local and international press.

The name “MARETERRA” is shown as its “Establishment sign” on the official company records.

The Complainant’s registered trade marks predate the disputed domain name.

The disputed domain name is confusingly similar to the Complainant’s trade mark because it includes that trade mark. Furthermore, the disputed domain name illegitimately associates the mark with “MC”, which is the abbreviation for “Monaco” and comprises its country code Top-Level Domain.

The Complainant’s website and social media sites appear at the top of Google for searches against the word “mareterramc”.

The Respondent lacks rights and legitimate interests in the disputed domain name.

To the best of the Complainant’s knowledge, the Respondent has no registered trade marks or other rights in the term “mareterramc”. Nor has it ever used the name.

The Complainant has never authorised the Respondent to use this name or any similar name.

The Respondent’s use of the disputed domain name for a parking page does not constitute a bona fide offering of goods or services or an otherwise legitimate use of the disputed domain name for the purposes of the Policy. While parking pages are permissible in some circumstances, that is not so where the disputed domain name was registered with a complainant’s trade mark in mind and with the aim of profiting from a likelihood of confusion with the mark.

The disputed domain name was registered and is being used in bad faith.

The Respondent was likely to have registered the disputed domain name with knowledge of the Complainant’s reputation, bearing in mind the extensive publicity relating to the Complainant’s construction project and to the Complainant’s rights in its trade marks and domain names. The association of the brand “Mareterra” with “MC”, the abbreviation for Monaco, cannot be a coincidence. Furthermore, the Respondent is located less than 50 km from Monaco, where the project is regularly front-page news. Proof of the Respondent’s knowledge is shown by the fact that the Respondent referred to it in a blogpost dated November 13, 2020.

The disputed domain name mimics the Complainant’s existing domain names.

By using the disputed domain name for a parking page, the Respondent intended to create and profit from a likelihood of confusion with the Complainant’s trade marks and domain names.

The Respondent’s anonymous registration of the disputed domain name is further evidence of bad faith.

B. Respondent

The following is a summary of the Respondent’s contentions:

There is nothing to prove that the name “Mareterra” was present on the Complainant’s official corporate record when it was incorporated in 2014 and that it was not added later.

The Complainant has demonstrated no consumer recognition of the term “MC” in connection with its goods and services and can claim no exclusivity in this geographical indicator, which does not feature in its registered trade marks. Therefore, the disputed domain name is not identical or similar to any trade mark of the Complainant.

Three of the four examples of media coverage supplied by the Complainant were published by entities that have commercial connections with the Complainant and are not independent media outlets.

The Complainant’s registered trade marks provide no exclusive rights to the single word “mareterramc” as they are combined figurative marks comprising the single word “Mareterra” in conjunction with a logo.

The Complainant has registered its trade marks in numerous classifications that are irrelevant to the Complainant’s main business activity, construction. The Respondent believes that the Complainant did so to block other individuals or companies who may wish to offer different and bona fide goods and services under the mark.

The Respondent possesses rights or legitimate interests in the disputed domain name.

The Respondent is a well-regarded media figure on the French Riviera and Monaco and has never contacted the Complainant or its competitors for commercial gain in connection with the Mareterra district.

The Respondent’s Twitter account proves that the Respondent has been commonly known by the disputed domain name. The extent of activity, some 2,790 tweets, is evidence that the Respondent has made a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark.

The Twitter page constitutes independent evidence that the Respondent is preparing to use the disputed domain name for a blog/website that publishes destination information and news updates about Monaco and its events, developments and lifestyle.

There is no likelihood of confusion with the Complainant’s mark as the Respondent is not involved in construction or property.

The Respondent has authored numerous articles in local and international media outlets over many years that portray Monaco in a favourable light. The Respondent has a legitimate interest in using the disputed domain name in relation to events, tourism and yachting.

The Respondent has never offered to sell or rent the disputed domain name to the Complainant, or to a competitor or anyone else. Nor has the Respondent published posts that are misleading as to their source, sponsorship or investment or sought to force the Complainant into an unwanted business arrangement.

The disputed domain name was not registered or used in bad faith.

The Complainant has not exercised due diligence in registering domain names relating to “mareterra” as there are many available unclaimed domain names such as <mareterra.fr>.

Contrary to the Complainant’s claims, the top two Google search results for searches against “mareterramc” are for the Respondent’s MareterraMC Twitter account and not for the Complainant.

The Respondent registered the disputed domain name through GoDaddy and, in accordance with the common practice of domain registration and hosting companies, GoDaddy set it up as a parking page pending the upload of a website by the Respondent. GoDaddy, not the Respondent, profits from the advertising on the page, which in any event does not include links relating to the Mareterra development. Furthermore, there is no possible confusion between the GoDaddy parking page and the Complainant’s registered business name.

The Complainant’s Instagram account called “mareterramonaco” has published only 27 posts since July 2020. Another Instagram account, “anse_du_portier_monaco”, account owner unknown, has published 93 posts since July 2018. This shows that the Complainant has not taken care to protect its mark on social media, nor showed a strong interest in digital promotion.

The Respondent, a well-respected journalist and marketing consultant who is a member of numerous forums, business networks and groups and is active on social media in connection with the reporting of local news and events, tourism, yachting trends and destination information, has never sought to disrupt the business of the Complainant or used the Respondent’s large international network to damage the Complainant’s reputation or create a likelihood of confusion with the Complainant’s mark.

The Complainant says that the Respondent has prior knowledge of the Complainant’s construction project but the Respondent is also aware of, and has written about, many other major projects not just in Monaco but elsewhere in southern France, the Italian border region and Europe.

The Complainant has quoted selectively from the November 13, 2020, blog. Contrary to the Complainant’s claim, the post relates to all Monaco ports and is not focused solely on the Mareterra project. The post makes no mention of the Complainant’s competitors or business partners.

The Complainant has failed to establish the third element of the Policy, under which it is required to prove not only that the disputed domain name was registered in bad faith but also that it is being used in bad faith.

The fact that the Complainant does not use the term “mareterramc” as part of its registered company name or email address supports the Respondent’s entitlement to the disputed domain name.

The Complainant has not shown that the Respondent has copied, reproduced, edited or used the combined trade marks in bad faith.

Some 146 registered corporate and business names in Monaco include the abbreviation “MC”.

At least five other international corporate/business websites use the word “Mareterra” in their names including an Italian gelato company in the United Kingdom, a coffee importer in Spain and a meat supplier in Caracas. This shows that businesses with the same name can co-exist across different jurisdictions and classes of goods and services. Trade marks that may be inherently descriptive in one context may be generic in another. The mere fact that a domain name is identical or confusingly similar to a trade mark does not automatically mean that it amounts to bad faith. The fact there are other users of the Mareterra name indicates that the Complainant does not possess a strong reputation in the name “Mareterramc”, nor has it clearly demonstrated rights to this name. The Complainant has not provided evidence of sales or public recognition.

The Respondent supplied her correct name and contact details when buying the disputed domain name. The Respondent used a legitimate privacy service to withhold the information from the public Whois directory. The Respondent’s purpose was to protect the Respondent’s business idea because travel, tourism and yachting-related websites linked to Monaco are very competitive fields. There is nothing criminal, fraudulent or negligent about this. Furthermore, the Complainant has not provided evidence of any activity indicative of bad faith such as using a false name, ignoring UDRP dispute communications or attempting to transfer the disputed domain name to a new holder or registrar during the dispute.

The Complainant gained an unfair advantage after the Complaint was filed by being allowed an opportunity to investigate the Respondent. The Respondent’s proximity to Monaco and professional activities were only mentioned for the first time when the amended UDRP Complaint was filed on March 9, 2021. The Respondent had made multiple attempts from February 27, 2021, to ask for copies of the original Complaint and Annexes, both from the Registrar and the Complainant’s representative but neither complied with the request. The Complainant was given an additional five days from the date it was advised of the Respondent’s name to search online and tarnish the Respondent’s connection to Monaco and Mareterra in any way it could.

The Complainant is engaged in reverse domain name hijacking for the following reasons: First, the Complainant did not make a good faith effort to determine the accuracy of its claims or contact the Respondent before initiating of the proceeding. It also ignored the Respondent’s initial email request for a full copy of the Complaint and Annexes. Second, the Respondent believes that the Complainant bought the domain name <mareterra.com> from a domain trader/reseller as long ago as 2003 and that it overpaid for the domain name. Third, the Complainant provided intentionally incomplete material evidence in that it did not supply complete corporate documents showing when the term ”Mareterra” was first officially associated with the Complainant. Also, the Complainant supplied a selective version of the Respondent’s blog post. Fourth, due process was not followed in that the Respondent was not initially sent electronic copies of the Complaint and annexes, forcing the Respondent to attempt to contact the Complainant’s representative for copies but was then ignored until a second communication attempt seven days later. Fifth, the Complainant is using the UDRP as a weapon to intimidate and unfairly deprive the Respondent of the disputed domain name.

6. Discussion and Findings

Under the Policy, the Complainant is required to prove on the balance of probabilities that:

- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.

A. Due Process

The Respondent complains that the Complainant has gained an unfair advantage by being allowed five days to amend its Complaint after the Registrar disclosed the Respondent’s identity as the underlying registrant in response to the Center’s standard request. The Respondent claims that this gave the Complainant an additional five days “to search online and tarnish the Respondent’s connection to Monaco and Mareterra…” because the original Complaint had made no mention of such matters.

However, in the relatively common scenario where disputed domain names are registered through a proxy or privacy service, or otherwise not publicly available, it is standard practice to give complainants an opportunity to amend their complaints after the Registrar discloses the identity of the underlying owner in order to enable complainants adjust their arguments in light of the new registrant information. Otherwise, complainants might be unfairly denied an opportunity to investigate what might be a crucial aspect of the case, namely the background and activities of the “real” owner of the domain name. Respondents often object to the way that they are characterised in Complaints. If so, the solution is not to conceal the identity of the respondent from the complainant but, rather, for the respondent to contest the allegations in the Response, as the Respondent has done.

Accordingly, the Panel does not consider that the opportunity afforded to the Complainant to amend its Complaint following disclosure of the Respondent’s identity constituted a failure of due process.

The Respondent also objects that neither the Registrar nor the Complainant responded to her requests for a copy of the Complaint and annexes, first made on February 27, 2021, and that she did not receive these until the Amended Complaint was served by the Center on March 9, 2021. However, section 4 of the Rules provides for formal service of a Response by the Center only after the preliminary procedures, such as Registrar verification and administrative compliance checks are complete. The Respondent had no entitlement to receive the Complaint at an earlier point.

Furthermore, not only has the Respondent had the benefit of the full 20-day period to file her Response, the Respondent also took advantage of her entitlement to an automatic four-day extension under paragraph 5(e) of the Rules. Indeed, the Respondent went on to file a very comprehensive Response.

The Panel does not find that there was any failure of due process in connection with the service of the Complaint on the Respondent.

B. Identical or Confusingly Similar

The Panel considers that the Complainant has established unregistered rights in the term “Mareterra” for purposes of the Policy arising from the Complainant’s extensive use of that term in connection with its development in Monaco. While the Respondent contests the extent and nature of the supporting evidence supplied by the Complainant, she does not seriously dispute that the Complainant is engaged in a major building project known as “Mareterra” and indeed, at one point, the Respondent refers to it as the “Mareterra development”. In these circumstances, it does not assist the Respondent that some of the examples of media coverage supplied by the Complainant were published by entities with commercial connections to the Complainant.

The Complainant also owns a registered trade mark that includes the word “Mareterra”. While the trade mark also contains design elements, as the Respondent observes, section 1.10 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that assessment of confusing similarity involves comparing the (alpha-numeric) domain name and the textual components of the relevant mark and that design or figurative/stylised elements which are incapable of representation in domain names are largely disregarded.

The Respondent places significant weight on the fact that the disputed domain name includes the suffix “MC”, claiming that the Complainant has failed to demonstrate that it has used, or acquired any rights in, the combined term “Mareterra MC” and that the Complainant can claim no exclusivity in the geographical indicator “MC”.

However, under this first element, it is sufficient for the Complainant to establish that the trade mark is “confusingly similar” to the disputed domain name. It is not required to prove that they are identical.

Section 1.7 of WIPO Overview 3.0 makes clear that the first element functions primarily as a standing requirement. The test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trade mark and the disputed domain name. Where at least a dominant feature of the relevant mark is recognisable in the disputed domain name, it will normally be considered confusingly similar to that mark for purposes of UDRP standing.

Section 1.8 of WIPO Overview 3.0 adds that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive, geographical or otherwise, would not prevent a finding of confusing similarity under the first element.

Here, the Complainant’s trade mark is readily recognisable within the disputed domain name and, accordingly, the addition of the geographical abbreviation “MC” for Monaco does not avert a finding of confusing similarity.

The Respondent asserts that the Complainant registered its trade mark in a very wide range of classes in order to block others from offering different and bona fide goods and services under the mark. However, that is not a relevant consideration for the Panel which, under the first element, is concerned only with whether or not the Complainant possesses a trade mark that is identical or confusingly similar to the disputed domain name.

For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark, both registered and unregistered.

The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

C. Rights or Legitimate Interests

As explained in section 2.1 of WIPO Overview 3.0, the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.

Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.

Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests.

The Respondent claims that she has been commonly known by the disputed domain name under paragraph 4(c)(ii) of the Policy. The Respondent also relies on paragraph 4(c)(iii) of the Policy, asserting that she is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trade mark.

However, the Panel notes the following:

1. The Respondent is a journalist and blogger who lives within 50 km of Monaco and operates a highly read blog about the French Riviera and Monaco.

2. In 2017, the Respondent started using the name “MareterraMC” for a Twitter account, whose profile states that it is an information page with updates about “#Mareterra (previously Portier Cove Monaco)”, i.e., the Complainant’s development. According to sample tweets supplied by the Respondent, the Twitter account has in fact been used for information about the wider region, not just the Complainant’s project.

3. The Twitter profile also states: “Website/blog coming circa summer 2021”. Presumably this relates to a proposed website at the disputed domain name although it is not clear when it was added to the profile.

4. The Respondent registered the disputed domain name in December 2020. It has since resolved to a GoDaddy parking page with PPC links relating to fish and seafood.

The Response asserts that the existence of the Twitter account constitutes independent evidence that the Respondent is preparing to use the disputed domain name for a blog/website that publishes destination information and news updates about Monaco and its events, developments and lifestyle. The Respondent claims that this constitutes evidence of legitimate noncommercial or fair use of the disputed domain name.

In the Panel’s view, use of the Twitter account does not of itself constitute use of the disputed domain name and the Respondent has not provided any evidence of demonstrable preparations to use the disputed domain name, whether for information about the Complainant’s development or about the wider region or otherwise.

In any event, even if one were to assume for the sake of argument that the Respondent had used the disputed domain name for the purposes claimed and that the Respondent’s motive was entirely noncommercial, the Respondent would still have difficulty in establishing fair use.

Section 2.5 of WIPO Overview 3.0 explains that, fundamentally, a respondent’s use of a domain name will not be considered “fair” if it falsely suggests affiliation with the trade mark owner.

Section 2.5.1 of WIPO Overview 3.0 adds that, generally, UDRP panels have found that domain names identical to a complainant’s trade mark carry a high risk of implied affiliation and that, even where a domain name consists of a trade mark plus an additional term, UDRP panels have largely held that such a composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trade mark owner. For example, certain geographic terms (e.g., <trademark-usa.com>, or <trademark.nyc>) are seen as tending to suggest sponsorship or endorsement by the trademark owner.

Here, the disputed domain name consists of the Complainant’s trade mark MARETERRA plus “MC” denoting Monaco. In the Panel’s view, the disputed domain name therefore carries a risk of implied affiliation with the Complainant, the same way that say “MicrosoftUS” would carry a risk of affiliation with Microsoft.

Accordingly, even on the assumption that the Respondent had started to use the disputed domain name in the manner that she claims, the Panel considers that this would not constitute fair use of the disputed domain name for the purposes of paragraph 4(c)(iii) of the Policy.

This conclusion does not of course mean that the Respondent has no legitimate interest in blogging about the Complainant’s development or, more generally, about events, tourism and yachting in the region, just that the Respondent has not demonstrated that it would be fair to use the disputed domain name for this purpose.

The Panel also considers that the Respondent has failed to establish rights or legitimate interests based on being commonly known by the disputed domain name under paragraph 4(c)(ii) of the Policy, given that (1) the name of the Twitter account - on which the Respondent relies in this context - is materially the same as the disputed domain name and therefore carries the same risk of implied affiliation; and (2) the Panel has concluded in section 6.D. below that the Respondent selected both the Twitter account name and the disputed domain name with reference to the Complainant’s trade mark.

Nor does the Panel consider that use of the disputed domain name for a registrar parking page with PPC links relating to fish and seafood constitutes a bona fide offering of goods or services by the Respondent under paragraph 4(c)(i) of the Policy, again in view of the nature of the disputed domain name and its selection by the reference to the Complainant’s trade mark.

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.

D. Registered and Used in Bad Faith

In the Panel’s view, it is clear that the Respondent registered the disputed domain name with the Complainant’s trade mark in mind. Indeed, the Respondent has not specifically denied this.

As stated above, the record before the Panel indicates that the Respondent started using “MareterraMC” as the name for the Respondent’s Twitter account in 2017. The fact that the Twitter account profile describes it as an information page for the Complainant’s development indicates that the Respondent selected Twitter account name by reference to the Complainant’s trade mark.

In the Panel’s view, therefore, it is unlikely that, when the Respondent registered the identical term in the disputed domain name some years later, she did so independently of the Complainant’s trade mark.

As stated in section 4 above, thus far the disputed domain name has been used for a GoDaddy parking page with PPC links relating to fish and seafood.

In the Panel’s view, paragraph 4(b)(iv) of the Policy applies. By using the disputed domain name, comprising the Complainant’s trade mark, the Respondent has intentionally attempted to attract Internet users to her website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.

The Respondent objects strongly and contends that GoDaddy, and not the Respondent, profits from the PPC links. However, section 3.5 of WIPO Overview 3.0 makes clear that respondents cannot disclaim responsibility for “automatically” generated PPC links on their websites and that neither the fact that such links are generated by a third party such as a registrar, nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith.

The likelihood of confusion is not diminished by the fact that at some point users arriving at the site will probably realise that it is not connected with the Complainant because the PPC links do not relate directly to the Complainant’s industry, as the Respondent points out. Paragraph 4(b)(iv) of the Policy is concerned with the intentional attracting of Internet users. Here, the disputed domain name creates an implied risk of affiliation with the Complainant, and a third party profits from at least some of the traffic intended for the Complainant.

In any case, even if the Panel had not found that the parking page constitutes bad faith use, the Panel in any case considers that there has been a “passive holding” in bad faith.

Section 3.3 of the WIPO Overview 3.0 explains that, from the inception of the UDRP, panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. While panels will look at the totality of the circumstances in each case, factors that have been considered relevant include: the degree of distinctiveness or reputation of the complainant’s mark, the failure of the respondent to provide any evidence of actual or contemplated good-faith use and the implausibility of any good faith use to which the domain name may be put.

Despite having filed a very detailed Response, the Respondent has nowhere explained why it would have been appropriate to use the disputed domain name, which reflects the name of specific development project in Monaco, for destination information and news updates about the Monaco region. Or indeed, why the Respondent proposed to use the disputed domain name rather than her other blogging outlets for such activity.

Even if the Respondent genuinely intended to use the disputed domain name for the purpose she claims, the Panel fails to see how this could amount to a good-faith use, given the risk of implied affiliation of the disputed domain name with the Complainant, as explained in section 6.C. above. As also explained above, the likelihood of confusion is not diminished by the possibility that at some point users arriving at such a site would realise that it is not connected with the Complainant. The Respondent would nonetheless have intentionally attracted Internet users to her site by creating a likelihood of confusion with the Complainant’s mark and would no doubt have profited in some way, even if only indirectly, from at least some of the traffic intended for the Complainant.

The Panel considers that the following additional assertions by the Respondent do not assist her case for the reasons explained below:

1. That the Complainant allegedly failed to exercise due diligence by registering many of the unclaimed available domain names relating to “Mareterra”. It was a matter for the Complainant to decide which of the inordinate number of possible domain names it wished to register in connection with its trade mark. The fact that the Complainant did not register any particular variation for whatever reason does not of itself justify the Respondent registering either that the disputed domain name or any other domain name reflecting the Complainant’s trade mark.

2. That the Complainant has allegedly not taken care to protect its mark on social media, nor shown a strong interest in digital promotion. Again, these are matters for the Complainant and do not of themselves justify the Respondent’s registration of the disputed domain name.

3. That the top two Google search results for searches against “mareterramc” are for the Respondent’s Twitter account and not for the Complainant. While the Complainant was wrong to suggest otherwise, and it is surprising that the Complainant did not spot the Respondent’s Twitter account, the fact that this account comes up top for such searches only reinforces the fact that customer confusion is likely to occur if the Respondent uses the disputed domain name in a similar manner.

4. That the Respondent is a well-regarded media figure on the French Riviera and Monaco who is a member of numerous business networks and groups and is active on social media in connection with local reporting and who has never contacted the Complainant or its competitors for commercial gain in connection with the Mareterra district or offered to sell the disputed domain name to the Complainant or a competitor or published misleading posts or sought to force the Complainant into an unwanted business arrangement or reproduced the Complainant’s logo or used the Respondent’s large international network to damage the Complainant’s reputation and that the Respondent has written about many other major building projects in Europe. While the Panel has no reason to doubt the veracity of any of these assertions by the Respondent, in the Panel’s view they do not of themselves demonstrate that the disputed domain name was registered or used in good faith or invalidate the Panel’s bad faith findings above.

5. That the Complainant does not use the term “mareterramc” as part of its registered company name or email address and that there is no possible confusion with the Complainant’s registered business name. This case is not concerned with possible confusion with the Complainant’s registered corporate name, only its trade mark.

6. That some 146 registered corporate and business names in Monaco include the abbreviation “MC”. In the Panel’s view, this point in fact assists the Complainant as it shows that “MC” is a common geographical indicator with little power to distinguish between the disputed domain name and the Complainant’s trade mark.

7. That at least five businesses in other industries in other countries use the word “Mareterra” in their names. Given that this term comprises two Italian words meaning “sea” and “land” respectively, and that there are similar words with similar meanings in other languages, it is perhaps not surprising that a few other businesses unrelated to the Complainant have independently coined the same term. However, as illustrated by the fact that the Respondent’s Twitter account describes itself as an information page about the Complainant’s development, the Respondent did not adopt the name independently of the Complainant.

For all of the above reasons, the Panel concludes that the disputed domain name was registered and is being used in bad faith by the Respondent and that he Complainant has therefore established the third element of paragraph 4(a) of the Policy.

The Panel would add that it accepts that the Respondent supplied her correct name and contact details when buying the disputed domain name and that the Panel has therefore taken no account of the Complainant’s assertion that the disputed domain name was registered “anonymously”.

It is unnecessary for the Panel to consider the Respondent’s submissions regarding reverse domain name hijacking in light of the outcome of the case.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <mareterramc.com> be transferred to the Complainant.

Adam Taylor
Sole Panelist
Date: May 3, 2021