Enforcing Trademark Rights of Word Alleged to be Generic

In the 1950s Dr. Alfred Tomatis, a French ear, nose and throat specialist developed a psycho-therapeutic method that is known as the “Tomatis Method”. In 1979 he obtained a trademark on the name TOMATIS which he assigned to Tomatis International SA (TISA). After his death in 2001 TISA encountered financial difficulties and the trademark was sold by a trustee in bankruptcy to Tomatis Developpement SA, the Complainant in Tomatis Developpement SA v. Mozart-Brain-Lab, D2009-1790 (WIPO March 31, 2010). The Complainant manages public and private Tomatis centers in several countries. The Respondent’s Chairman who was trained by Dr. Tomatis and as an acolyte had a close professional relationship with him performs “research on the Tomatis method and has published scientific articles in the Journal of Neurotherapy.” The Respondent itself operates a Tomatis museum and organizes Tomatis training. It states that it uses the domain name <tomatis.com> to communicate “general facts about the Tomatis method, its origins and field of application.” As the Panel notes “[t]he circumstances of this case are unusual” in that the Respondent does not fit into “the usual template for a cybersquatter wanting to cash in on trademarks or to tarnish or dilute them.”

Nevertheless, the Complainant has a trademark and the Respondent is using it without permission. Either the Respondent has an affirmative defense under paragraph 4(c)(iii) of the Policy or the registration and use of the domain name is in bad faith. The contents of the website (although downplayed by the Respondent) indicates that the “Respondent is deriving an indirect benefit … in that is one of many purveyors of the Tomalis method.” Respondent’s Chairman stated in a declaration that he believed that “Tomalis” was a generic term. “However, a subjective belief does not excuse the fact that, in order to demonstrate good faith the Respondent should not have taken the transfer of the disputed domain name [from a prior registrant whose license it knew had been terminated] when it must surely have known of the Complainant’s trademark rights.”

The Respondent’s alternative point is frivolous, but worth noting because it emphasizes the sequence that must be followed when a claim is made that a trademark has become generic. The Respondent asserted that the “Complainant has to prove that the term is not descriptive.” This is manifestly without merit; in fact, reverses the parties’ burdens of proof. Once “the USPTO has made a determination that a mark is registrable, by so issuing a registration, as was the case here, an ICANN panel is not empowered to nor should it disturb that determination,” U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum December 9, 2003). Where the complainant has registered the trademark with “the United States Patent and Trademark Office (or a comparable foreign trademark office)”, the respondent has the burden of rebutting the presumption of validity, Town of Easton Connecticut v. Lightning PC Inc., FA0808001220202 (Nat. Arb. Forum October 12, 2008).

However, the essence of the argument that “Tomatis” has become generic for a therapeutic method and should be canceled is not without merit if pursued in the right forum. In Pilates, Inc. v. Current Concepts Inc., et al., 120. F.Supp.2d 286 (S.D.N.Y. 2000) (which the Respondent cites and the Panel comments on) the Court “canceled the United States … trademark for the name ‘Pilates’ because it was a generic term used by consumers to identify a particular method of exercising.” In the Respondent’s opinion, the “same principle applies to the word ‘Tomatis’ … [because the] intent of Dr. Tomatis was to promote his therapy in order to help as many people as possible.” But in Tomatis “[t]here are no court proceedings in contemplation” and absent a judgment canceling the trademark, the “facts in this case are not such that the Panel should decline to order transfer of the disputed domain name.”

Gerald M. Levine <udrpcommentaries.com>

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