## Facts

- Société des Bains de Mer et du Cercle des Étrangers à Monaco (SBM), a Monaco company, has long operated the Casino de Monte Carlo and used “Casino de Monte Carlo” as a service mark since the 1800s.
- SBM did not operate a casino in the United States, but for years marketed its Monte Carlo resort and casino services to U.S. consumers through substantial, continuous U.S.-based promotions, including operation of a New York promotional office and extensive advertising and solicitation efforts.
- Five related companies controlled by a French national operated over 150 online gambling websites and registered numerous domain names incorporating “Casino de Monte Carlo” or close variants.
- The companies’ websites used casino-themed imagery and representations associated with SBM’s casino and suggested an affiliation or connection to Monte Carlo.
- SBM initiated an administrative domain-name proceeding that resulted in transfer of certain domains to SBM.
- The companies then filed a federal declaratory action challenging SBM’s rights; SBM counterclaimed under the Lanham Act, including trademark infringement and claims under the Anticybersquatting Consumer Protection Act (ACPA).

## Issues

1. Whether SBM’s U.S. promotional activities and provision of casino services in Monaco to U.S. customers constituted “use in commerce” sufficient to create protectable U.S. service-mark rights under the Lanham Act.
2. Whether a foreign service mark can be protected under U.S. trademark law when services are rendered abroad but are advertised to, and purchased by, U.S. consumers who travel abroad.
3. Whether the companies’ domain-name registrations and website uses were likely to cause confusion and constituted cybersquatting under the ACPA.

## Decision

- The Fourth Circuit affirmed summary judgment for SBM, holding that SBM had protectable U.S. rights in the “Casino de Monte Carlo” service mark based on its use in commerce involving U.S. consumers.
- The court concluded that SBM’s systematic U.S.-directed promotions and resulting patronage by U.S. customers traveling to Monaco satisfied the Lanham Act’s “use in commerce” requirement for service marks.
- The court held the companies’ “Casino de Monte Carlo”-based domain names and associated website content created a likelihood of confusion as to affiliation or sponsorship.
- The court upheld liability under the ACPA, finding bad-faith registration and use of multiple domains incorporating SBM’s mark to profit from the mark’s goodwill.
- The court stated the district court reached the correct result but relied on incorrect reasoning; the correct basis was that SBM’s mark was used in U.S. commerce, not an extraterritorial extension untethered from U.S. commerce.

## Legal Principles

- “Commerce” under the Lanham Act encompasses all commerce Congress may lawfully regulate; “use in commerce” is not limited to services physically rendered within U.S. borders.
- For service marks, substantial, continuous solicitation of U.S. consumers and the sale of services to those consumers abroad can constitute “use in commerce” sufficient to establish U.S. trademark rights.
- Protectable rights may exist without U.S. registration if the mark is used in U.S. commerce and the claimant has priority over later users.
- Use of a mark in domain names and website content that suggests affiliation with the mark owner and trades on the mark owner’s reputation can support a likelihood-of-confusion finding under the Lanham Act.
- Registering and using multiple domain names incorporating another’s distinctive mark, with intent to divert traffic and profit from consumer confusion, can establish ACPA bad-faith cybersquatting.

## Conclusion

The Fourth Circuit held that a foreign casino’s sustained U.S.-directed promotions and resulting transactions with U.S. patrons traveling abroad constituted “use in commerce” creating enforceable Lanham Act service-mark rights, and it affirmed judgment that the defendants’ “Casino de Monte Carlo” domain names infringed those rights and violated the ACPA.


Int’l Bancorp, LLC v. Société des Bains de Mer & du Cercle des Étrangers à Monaco, 329 F.3d 359 (4th Cir. 2003), cert. denied, 540 U.S. 1106 (2004)