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Trademark Validity Not an Issue in UDRP Proceeding

Parties should be reminded that the UDRP is not a trademark court even though it adjudicates rights to trademark infringing domain names. The limited jurisdiction of the UDRP does not authorize the Panel to determine the issue of a trademark’s validity, so that when an allegation of invalidity is presented as a defense (as it is from time to time) Panels must work with what they have. What the Panel had in Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Lucan Toh and Max Wright, D2007-0249 (WIPO May 25, 2007) was a trademark for CASINO DE MONACO that issued in 2005 with a priority date of 2002 and concluded that the registrations were abusive.

Although not often, some old cases return for judicial adjudication. What Société des Bains won at UDRP it lost in the District Court for the Southern District of New York, In re Casino De Monaco Trademark Litigation, 07 Civ. 4802 (DAB) (S.D.N.Y. 3-31-2010). The judge “vacated” the UDRP decision. Was the UDRP Panel misguided in not giving weight to the Respondent’s allegation that the trademark was invalid? That is not the Panel’s call. It has limited authority which does not include determining a trademark’s validity. Trademark registration creates a rebuttable presumption that the mark is distinctive. The Panel in Société des Bains focused on the elements necessary for the Complainant to prove its case and found abusive registration. The district court, on the other hand, focused on the issue of validity.

Under UDRP jurisprudence, 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). Since registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning it “is not for the Panel to decide whether the registration of the marks should or should not have been granted,” Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum September 16, 2002). Panelists lack authority to ignore valid trademark registrations that have been subject to examination and opposition. The Cyberbingo Corporation v. 207 Media Inc. D2005-0714 (WIPO October 4, 2005) (Canadian parties).

To the extent a respondent wishes to challenge the USPTO’s determination of any of a complainant’s federally registered marks, there are “appropriate administrative and/or judicial avenues available [for that purpose] such as by filing an action in the USPTO to cancel that registration or alternatively instituting federal litigation,” Sound Unseen, Ltd.; Apple Bottoms, LLC; and Cornell Haynes p/k/a “Nelly” v. Patrick Vanderhorst, D2005-0636 (WIPO August 18, 2005).

Upon the Order of transfer the Respondents commenced a federal action in Arizona that was removed and consolidated with another action in the Southern District of New York. The Judge determined that Société des Bains failed to prove that CASINO DE MONACO had ever been used in commerce anywhere in the world. Its

registration … required that it affirm that it had a bone fide intent to use the mark…. However … [it] has not used the mark in any meaningful way anywhere… [and] the record is devoid of evidence that would create a genuine issue of material fact that [it] uses the mark CASINO DE MONACO to identify its services, anywhere, but particularly in the United States.

The District Court stated that “WIPO did not address the validity of Société des Bains‘ trademark and its decision is to be given no deference here,” citing, Incorporated v. Excelentisimo Ayuntamiento De Barcelona, 330 F.3d 617, 625-26 (4th Cir. 2003). Since the trademark is invalid and unenforceable the Counterclaimants (former Respondents in the UDRP proceeding) could not be in violation of the Anticybersquatting Consumer Protection Act.

Gerald M. Levine <>

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  1. Trademark validity | Strummage - February 19, 2012

    […] Trademark Validity Not an Issue in UDRP Proceeding | | www …May 24, 2010 … The limited jurisdiction of the UDRP does not authorize the Panel to determine the issue of a trademark’s validity, so that when an allegation of … […]

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