District Court Dismisses Rosetta Stone’s Adwords Lawsuit Against Google

I previously blogged (link here) about the Google Adwords trademark infringement lawsuit brought by language software company Rosetta Stone against Google. See Rosetta Stone LTD v. Google Inc., Case No. 09-cv-00736 (E.D. Va.).

On April 28, 2010, the U.S. District Court for the Eastern District of Virginia granted Google’s Motion to Dismiss. A sampling of the new coverage on the decision from Reuters, Marketwatch, Cnet, and Washington Post.

The order granting Google's Motion to Dismiss (link here) indicates that a memorandum explaining the basis for the decision will be forthcoming. We can’t wait. To be continued. . . .

[Update: Eric Goldman's Technology & Marketing Law Blog provides an excellent summary of the court's decision filed on August 3, 2010.]

UFC files In Rem Cybersquatting Action Against theultimatefighter.com

Las Vegas-based Zuffa LLC (“Zuffa”), the company which owns the marks THE ULTIMATE FIGHTING CHAMPIONSHIP and UFC in connection with mixed-martial arts competitions, filed an in rem lawsuit in the U.S. District Court for District of Nevada against the domain name theultimatefighter.com. See Zuffa, LLC v. theultimatefighter.com, Case No. 10-cv-00582 (D. Nev. File April 21, 2010). A copy of the complaint can be downloaded here (HT: Steve Green).

In addition to its more widely known UFC and ULTIMATE FIGHTING CHAMPIONSHIP marks, Zuffa has also registered the mark THE ULTIMATE FIGHTER in connection with the following goods/services (the applications of which were all filed June 2004 on the basis of intent to use):

• laser video discs, digital video discs, digital versatile discs and CD-ROM discs, all featuring sports events and mixed martial arts (link here) – claimed date of first use November 2005;
• tee-shirts; team uniform reproductions, namely jerseys featuring reproductions of professional athletic team logos; hats; caps; and for entertainment in the nature of an on-going television program in the field of sports and mixed martial arts (link here) – claimed date of first use January 2005; and
• tank tops; shorts, headwear; workout and sports apparel, namely shorts and shirts (link here) – claimed date of first use January 2005.

According to the complaint, Zuffa (and its predecessors-in-interest) began using THE ULTIMATE FIGHTER in 2003 in connection with a reality show named “The Ultimate Fighter” - although the complaint later acknowledges that the show has been broadcast on the Spike television network since as early as 2005. There is also a vague mention of some common law rights resulting from use of the name in connection with a Las Vegas gym where the reality show was filmed.

Of course, the date when the mark became distinctive is relevant because it is only cybersquatting if the domain name was confusingly similar to a mark that was distinctive on the date of registration. The domain name in dispute was purportedly registered by Anton Resnick with the registrar eNom on January 22, 2004 (long before Zuffa’s aforementioned trademark applications). The domain name http://www.theultimatefighter.com/ currently is redirected to a Yahoo page dedicated to mixed martial arts.

Zuffa argues that Resnick’s registration of the domain name http://www.theultimatefighter.com/ was a bad faith intent to profit from Zuffa’s trademark rights in THE ULTIMATE FIGHTER (i.e., cybersquatting). It is puzzling, however, why Zuffa waited over six years to go after Resnick for this so-called bad faith cybersquatting for a domain name registered six months before Zuffa had even filed the aforementioned intent-to-use trademark applications. Also interesting is that Zuffa owns the domain name http://www.ultimatefighter.com/, but WHOIS records suggest it was created only recently in January 2010. [DotWeekly ran an article in late March about the domain name acquisition by Zuffa from Marchex -- a company known for buying and selling domain names].

As for why Zuffa chose to bring this in rem action in a jurisdiction where neither the domain name registrant, the domain name registrar, or the domain name registry is located, the following is the jurisdictional statement:

This Court has in rem jurisdiction over pursuant to 15 U.S.C. § 1125(d) and 28 U.S.C. § 1655 and interpretive case law. Upon information and belief, this Court cannot exercise personal jurisdiction over the registrant of, as the registrant is located outside of the State of Nevada and/or website is not interactive. As a separate and independent basis for in rem jurisdiction, upon service of this Complaint upon the registrar of , the registrar will deposit domain name into the registry of the Court. In addition, the situs of domain name is, or will be, in this judicial district where the owner of the trademark contained in domain name is located.

Of course, see my previous blog post here regarding another in rem cybersquatting lawsuit filed in the District of Nevada (by the same law firm) citing the same jurisdictional argument as a basis for in rem jurisdiction. In that particular case, the plaintiff brought a Motion for Temporary Restraining Order, which was not only denied by the court, but which prompted the court sua sponte to dismiss the entire in rem action outright the very next day due to lack of jurisdiction under 15 U.S.C. § 1125(d)(2)(A). A copy of the court’s order in that case, which details the relevant "interpretive case law" quite nicely, can be found here.

Nonetheless, by searching the domain names at issue in that case, it appears that just filing the complaint was enough to get the domains at issue transferred. And more than likely, that is the strategy being pursued here by Zuffa.

"South Butt" Parody Lawsuit Comes To A Quiet End

Pittsburgh Trademark Lawyer provides closure on the North Face v. South Butt trademark “parody” dispute (previously blogged here and here). And it looks like “Little Jimmy Winkelman” got the last laugh – with North Face apparently allowing him to continue selling his “South Butt” merchandise (which was made all the more valuable in large part due to the lawsuit filed by North Face).

Court Decision Upholds Jus Tertii Defense in BASMA Trademark Lawsuit

United Food Imports, Inc. (“United Food”), a wholesale distributor of packaged food products imported from Egypt, sued several food distributors alleging trademark infringement for the unauthorized use of the mark BASMA in connection with products being sold to members of the Middle Eastern community residing in the United States. See United Food Imports, Inc. v. Baroody Imports, Inc. et al, Case No. 09-cv-02835 (D. N.J.).

As part of the Defendants’ counterclaims against United Food, Defendants claimed that a company named Orouba Agrifoods Processing Co. (“Orouba”), which produced the allegedly infringing goods distributed by the Defendants, is the rightful owner of the BASMA mark which United Food is claiming as its trademark. United Food filed a motion to dismiss Defendants’ counterclaims arguing that Defendants’ counterclaims improperly asserted a jus tertii defense (i.e., a claim asserting that a third party has rights in a trademark superior to the party claiming trademark rights).

Defendants allegations incorporated the factual allegations that Orouba set forth in its own petition to cancel United Food’s U.S. trademark registration of the BASMA mark. See Orouba Agrifoods Processing Company v. United Food, Cancellation No. 92050739 (T.T.A.B. Filed March 23, 2009). In short, Orouba claimed that it began using the BASMA mark in the United States in late 1999 (although its own application for the BASMA mark currently reflects date of first use anywhere as December 31, 1999 and use in commerce as February 17, 2003) and owns several foreign registrations of such mark (in Egypt, Turkey, United Arab Emirates, and Germany). In 1998, Orouba entered into an agreement to supply United Food with goods for resale in the United States. In 2004, United Food filed a trademark registration application with the United States Patent and Trademark Office (“PTO”) to register the BASMA mark in connection with various frozen fruits and vegetables (claiming use since January 1, 1998). Orouba terminated its agreement with United Food in September 2005. Orouba attempted to oppose United Food’s application (see Orouba Agrifoods Processing Company v. United Food, Opposition No. 91172895 (T.T.A.B. Filed September 15, 2006), but the opposition was dismissed with prejudice by the Board on February 12, 2008, after Orouba failed to file a brief on the merits in the case. The mark was then registered by the PTO on March 18, 2008. On March 23, 2009, Orouba filed the aforementioned cancellation petition, which was suspended in July 2009 pending the outcome of a separate lawsuit by United Food alleging trademark infringement against Orouba. See United Food Imports, Inc. v. Orouba Agrifoods Processing Co., Case No. 09-cv-04484 (S.D.N.Y.).

Defendants’ counterclaims in the instant case sought a judgment declaring that Orouba is the rightful owner of the BASMA trademark, cancellation of United Food’s registration, and damages arising from United Food’s fraudulent registration (pursuant to 15 U.S.C. § 1120).

While the court granted United Food’s motion to dismiss the counterclaims on the grounds that Defendants do not have standing to bring claims that affirmatively assert Orouba’s rights, the court chose not to prevent Defendants from asserting its arguments as an affirmative defense since the Defendants were in privity with Orouba. See United Food Imports, Inc. v. Baroody Imports, Inc. et al, 2010 U.S. Dist. LEXIS 33585 (D. N.J. April 6, 2010) (unpublished).

The court noted that Defendants’ counterclaims were essentially claims against United Food on behalf of Orouba. As such, the court dismissed such counterclaims outright for lack of third party standing on the part of the Defendants to bring these claims on behalf of Orouba. Moreover, the rare exceptions where third party standing is acceptable (i.e., where the third party is unable to assert their rights and there is an identity of interests between the third party and the party bringing claims) did not apply in light of the ongoing litigation between United Food and Orouba in which Orouba could assert such claims against United Food.

Defendants then argued in the alternative that their arguments should be allowed as an affirmative defense instead of a counterclaim. United Food argued that Defendants should not be allowed to assert any arguments regarding Orouba’s rights on the basis that it would constitute an improper jus tertii defense:

“Jus tertii in the trademark context arises when defendant alleges that plaintiff has no ‘title’ because plaintiff itself is an infringer of a third party with rights allegedly superior to plaintiff.” McCarthy, § 31:157. Thus, “[d]efendant in effect argues that, ‘Somebody has a right to sue me, but it’s not you.” McCarthy, § 31:158.

The court decided in favor of allowing Defendants to assert Orouba’s rights as a jus tertii defense given the contractual relationship that allegedly existed between Defendants and Orouba in that Orouba supplied the Defendants with the allegedly infringing goods. This contractual relationship placed the Defendants in privity with Orouba such that Defendants could claim some entitlement to the priority rights of Orouba with respect to the BASMA mark.

Accordingly, while the court dismissed Defendants’ counterclaims, because the court could infer from the allegations that Orouba and Defendants were in privity with one another, the court decided not to preclude the Defendants at this pleading stage of the case from presenting their arguments as an affirmative defense to the suit.

District Court finds that Casino De Monte Carlo owner has no enforceable trademark rights to CASINO DE MONACO

The Casino de Monte Carlo in Monaco

A New York District Court has determined that the owner of the Casino De Monte Carlo does not have enforceable trademark rights in the mark CASINO DE MONACO and has granted summary judgment in favor of a UK company that had been sued for trademark infringement and cybersquatting over its use of the name GRAND MONACO CASINO in connection with an online casino. See In re. Casino de Monaco Trademark Litigation, 2010 U.S. Dist. LEXIS 33950 (S.D.N.Y. March 31, 2010).

Societe des Bains de Mer et du Cercle des Etrangers a Monaco’s (“SBM”) is the operator of all casino properties in the Principality of Monaco, most notably the Casino De Monte Carlo. Playshare PLC (“Playshare”) is a UK company that acquired an online casino that has used or is using various online designations including GRAND MONACO, GRAND MONACO CASINO, GRAND MONDIAL and GRAND MONDIAL CASINO and related domain names.

SBM holds a U.S. trademark registration for the mark CASINO DE MONACO for “providing casino services within a hotel resort environment” which issued on December 20, 2005, under Section 44(e) of the Lanham Act based on SBM’s registration of the mark in Monaco but also with a claim of acquired distinctiveness based on Section 2(f) of the Lanham Act. SBM also has a second application pending for CASINO DE MONACO for “casino services” but that application (filed in the midst of the dispute at issue) has been opposed by Playshare. See Societe Anonyme Des Bains De Mer Et Du Cercle Des Etrangers v. PlayShare PLC, Opposition No. 91188636 (T.T.A.B. Filed Jan. 30, 2009).

On March 21, 2007, SBM filed a Uniform Domain Name Dispute Resolution Policy (“UDRP”) complaint with the World Intellectual Property Organization (“WIPO”) against the approximately 65 domain names that Playshare acquired as part of the online casino it acquired which included the words “grand” and/or “monaco” with “casino” as part of a URL that led to Playshare’s online casino. In response to SBM’s UDRP complaint, Playshare made a decision to change the name of its online casino to GRAND MONDIAL and even registered the name as a trademark (although the opinion is not clear where the mark was registered and no records appear with the PTO). Despite the name change, SBM continued forward with its claims regarding the “monaco casino” domain names. On May 25, 2007, the WIPO arbitration panel decided in favor of SBM finding Playshare’s domain names confusingly similar to SBM’s trademark and ordered Playshare’s domain names transferred to SBM. See Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Lucan Toh and Max Wright, Case No. D2007-0249 (WIPO May 25, 2007).

On June 6, 2007, SBM sued Playshare alleging that Playshare’s use of the aforementioned names and domain names infringed its trademark rights to the mark CASINO DE MONACO, including even Playshare’s new name GRAND MONDIAL. On June 19, 2007, Playshare filed its own declaratory judgment action against SBM in Arizona district court seeking a declaratory judgment that its use of the domain names did not violate the Anticybersquatting Consumer Protection Act (“ACPA”) and that SBM’s registered mark for CASINO DE MONACO is invalid and unenforceable. The Arizona action was consolidated with the New York action and Playshare’s declaratory judgment causes of actions were treated as counterclaims.

Both sides filed cross motions for summary judgment. The Court denied SBM’s motion and granted Playshare’s motion with respect to SBM’s claims and Playshare’s counterclaims related to CASINO DE MONACO.

The court first addressed the validity of SBM’s CASINO DE MONACO mark. Playshare argued that despite SBM’s registration of CASINO DE MONACO, SBM has no protectable rights under the Lanham Act in its mark since it does not provide any goods or services using the mark in the U.S. SBM does not operate an on-line gaming business, does not operate any casinos in the U.S and has no casino by the name of Casino de Monaco

Nonetheless, SBM argued that it did use the mark as a service mark in the U.S. in connection with an established business or trade.SBM focused on its New York subsidiary that engages in “sales offerings” to U.S. residents of casino services at SBM’s casinos in Monaco. SBM also contended that the name CASINO DE MONACO is an umbrella term for all its Monaco-based casinos, that the mark is used on SBM’s website and verbally when promoting its casino and casino-related services, and that CASINO DE MONACO is a nickname for the Casino de Monte-Carlo, and many people, including Americans, use the name CASINO DE MONACO to refer to the Casino de Monte-Carlo “which embodies tremendous goodwill, glamour, elegance and style in the gaming industry.”

In the end, however, the court rejected SBM’s arguments and concluded that SBM’s activities in the United States relating to SBM’s mark CASINO DE MONACO did not constitute “services” within the meaning of the Lanham Act (services that are not “solely for the benefit of the performer” but rather services “rendered to others”). The court also rejected SBM’s attempt to conflate its CASINO DE MONACO mark with its more established CASINO DE MONTE-CARLO service mark. CASINO DE MONACO is not an actual casino unlike Casino de Monte-Carlo. The court also noted that “any secondary meaning that the mark CASINO DE MONACO can acquire vis-a-vis the use of the mark CASINO DE MONTE-CARLO is limited by the fact that SBM is in an on-going dispute with U.S.-based Victoria Partners over the Monte-Carlo designation when used with the casino business. Without some resolution, the mark CASINO DE MONTE-CARLO can be reasonably construed as not “identifying a single source of origin.” (italics in original). [For prior blog posts on this ongoing dispute, click here and here].

The court noted that SBM’s Section 44(e) based registration only required it to affirm that it had a bona fide intent to use its foreign registered mark. The court went on the state:

However, regardless of SBM’s intent, which is disputed, SBM has not used the mark in any meaningful way anywhere. And SBM has not shown that it has used the mark in the United States at all. SBM argues that its “U.S. based direct sales activities represent ‘material aspects’ of SBM’s casino business...and thus are properly considered ‘services...rendered in commerce.” for SBM’s mark CASINO DE MONACO. However, the record is devoid of evidence that would create a genuine issue of material fact that SBM uses the mark CASINO DE MONACO to identify its services, anywhere, but particularly in the United States. First, there does not exist in Monaco, or anywhere else, a casino identified by the name Casino de Monaco. Nevertheless, SBM asserts that the mark CASINO DE MONACO is: (1) used as a nickname or moniker for Casino de Monte-Carlo; (2) employed on casino website(s); and (3) an umbrella term/brand to refer to SBM’s five casinos in Monaco. However, all that SBM can show to support these representations are self-serving affidavits. Even if this claimed use of the mark CASINO DE MONACO was not insignificant on this record, which it is, all of its use of the mark occurs outside of the United States. There is no real evidence that the claimed nickname/moniker/umbrella term that signifies CASINO DE MONACO has ever existed in the United States.

(internal citations omitted) (emphasis in original).

Furthermore, regarding the one example that SBM could show of use in the United States of the mark CASINO DE MONACO on SBM’s own website, it turns out that such webpages were created on or after April 14, 2008 (almost a year after the lawsuit was filed) and SBM did not show any evidence that anyone in the U.S. ever viewed the pages. The court added that “[i]t does not bolster SMB’s [sic] position that all activity SBM engages in the United States amounts to nothing more than advertising and promotion of SBM’s operations outside the U.S., i.e., in Monaco. What is clear is that there is no evidence on the record that this limited activity ever implicated the mark CASINO DE MONACO.” (emphasis in original).

The court decided that SBM’s “utter lack of use of the mark CASINO DE MONACO anywhere, let alone in the United States,” required it to refuse to enforce any purported trademarks rights by SBM in the mark. Accordingly, the court did not have to engage in any likelihood of confusion analysis. The court did find enough limited activity to protect SBM’s purported right to the unregistered mark CASINO DE MONTE-CARLO because SBM actually utilizes that mark in the United States – but since SBM’s complaint did not allege any infringement of this mark, such rights were irrelevant for purposes of deciding the motions.

Based on its determination that SBM held no enforceable trademark rights to the mark CASINO DE MONACO, the court granted summary judgment on Playshare’s declaratory judgment causes of actions direct to SBM’s CASINO DE MONACO mark. The court found SBM’s trademark registration for CASINO DE MONACO invalid and unenforceable and ordered it to be canceled. The court further granted Playshare’s Motion for Summary Judgment on all of SBM’s federal claims based on the CASINO DE MONACO mark (and choosing to dismiss all state claims by declining to exercise supplemental jurisdiction). Moreover, the court declared that Playshare’s use of the designations GRAND MONACO, GRAND MONACO CASINO, GRAND MONDIAL CASINO and GRAND MONDIAL does not infringe on SBM’s (now cancelled) mark CASINO DE MONACO. Finally, because SBM’s entire basis for its cybersquatting claim was based on rights to the mark CASINO DE MONACO and since the mark was found invalid and unenforceable, then, as a matter of law, Playshare cannot be in violation of the ACPA with respect to its domain names. The court vacated the WIPO decision and ordered the domain names to remain with Playshare.