Las Vegas Trademark Attorney

Rosetta Stone Files Adword Infringement Lawsuit Against Google

noreply@blogger.com (Ryan Gile) — Tue, 14 Jul 2009 00:34:00 +0000

After going after several third parties for purchasing Rosetta Stone’s trademarks as Google Adwords (see prior blog posts here and here), Rosetta Stone decided to go straight to the source and join the bandwagon of Google Adword trademark infringement lawsuits by filing its own action against Google in Virginia District Court over Google’s use and sale of Rosetta Stone’s trademarks as Google Adwords to third parties. See Rosetta Stone LTD v. Google Inc., Case No. 09-cv-00736 (E.D. Va. July 10, 2009). A copy of the complaint can be downloaded here.

Eric Goldman’s Technology & Marketing Law Blog provides an insightful analysis of the complaint and adds the case to his growing list of Google Adword lawsuits that he is tracking.

Mary Kay Cosmetics Sues Yahoo Over “Yahoo Shortcuts” Feature In E-mails

noreply@blogger.com (Ryan Gile) — Fri, 10 Jul 2009 01:15:00 +0000

Both Mediapost and TheDomains have stories today about the trademark infringement filed by Mary Kay Cosmetics against Yahoo. See Mary Kay Inc. v. Yahoo! Inc., Case No. 09-cv-01278 (N.D. Tex. July 6, 2009).

The crux of the complaint is over the “Yahoo Shortcut” feature of Yahoo’s e-mail services whereby certain keywords in a particular user’s yahoo e-mail are highlighted and by scrolling the cursor over the text of the keywords a pop-up window appears which contains the search results generated by that particular term as searched through various types of integrated searches including Yahoo’s basic web search, HowStuffWorks.com, Wikipedia, and, as was apparently the case case here, “Shopping Offers.”

From Mary Kay’s perspective, an e-mail sent by an authorized May Kay representative to a customer using Yahoo’s e-mail is being “hijacked and manipulated by Yahoo and provide an unfair advantage for the unauthorized re-sellers and other competitors.” [Comment: hijacking and manipulating might be a little strong.]

One interesting point is the argument that e-mail recipients might "mistakenly believe that the hyperlinks and pop-ups which include ads associated with the Mary Kay marks were affirmatively included or authorized by either Mary Kay or the Independent Beauty Consultant sending the email." Of course, isn’t this only true for a short period of time during which yahoo e-mail users learn about the function and after which, they will clearly recognize it for what it is – a quicklink for Yahoo search engine results? After all, is there anybody out there who is truly confused anymore by the Google search engine results that appear at the top in the highlighted area that reads “Sponsored Links”? And don’t most internet users today recognize after typing (or mistyping) a particular domain name thinking that it is the website for the brand they are looking for only to find the standard landing page with click-through links that the page is simply not the page they were looking for and then simply brings up a new web browser page to use one of the major search engines to find the brand for which they were looking?

Of course, Mary Kay’s action suffers the same uphill battle as any of the “Google adword” trademark infringement cases. Indeed, Yahoo’s popup function appears to be nothing more than an interface that allows a user to see certain search engine results (Yahoo’s or otherwise) for a particular term in a pop-up screen. So is having the link in the e-mail what is really bothering Mary Kay – or is it the search results themselves? And as noted in one of the articles, while Mary Kay complains about “unauthorized resellers,” some of the products being sold may be authorized products that were properly purchased and being resold (in which case the use of the Mary Kay name in reselling them is not trademark infringement).

So let the Yahoo Shortcut based trademark infringement lawsuits begin. Can a “Yahoo E-mail Shortcut” class action lawsuit be far behind? Anything can happen in Texas!!!

Las Vegas Review Journal Article Spotlights Local Man’s Trademark Battle in England

noreply@blogger.com (Ryan Gile) — Wed, 08 Jul 2009 00:01:00 +0000

This makes two posts in a row regarding trademark battles outside of the United States.

The Las Vegas Review Journal ran a story today (link here) about Las Vegas exporter Panch Prasad whose company, U.S. International Trading Corp., is the owner of the DuBarry brand of cosmetics which it purchased in 1997. The brand is described as the first American brand of cosmetics established in 1903 named by its founder, Richard Hudnut, after Comtesse Jeanne du Barry, the mistress of King Louis XV of France who killed by guillotine in 1793 during the French Revolution.

Prasad was apparently contacted in 2007 by a Englishman name Michael Miller who said he had investors who could help expand the sales of DuBarry in the U.K. Prasad later discovered that on June 13, 2007, Miller (through the company The Dubarry Perfumery Company Limited) went ahead and filed an application to register the mark DUBARRY in the United Kingdom. Prasad’s company already owned a UK registration for the mark DUBARRY ALL CLEAR (for Non-medicated toilet and cosmetic preparations) dating back to 1963, but that apparently was not enough for the UK Intellectual Property Office to refuse registration of Miller’s application.

Prasad filed a timely opposition to registration, but the article highlights the ever growing cost of the legal battle to protect his brand ($35,000 in legal fees so far). The article also focuses on the problems faced by exporters who sell their products in foreign countries without first securing trademark protection for their brands and the systems in place to allow trademark holders to protect their marks worldwide such as the Madrid System for the International Registration of Marks administered through the World Intellectual Property Organization or the Community Trade Mark system administered through the Office for Harmonization in the Internal Market (Trade Marks and Designs).

Indeed, earlier this year, Prasad’s company filed a Community Trade Mark Application for the DUBARRY mark, which if it registers will protect the name throughout the European Union (including the U.K.). But as noted by Prasad (who claims to spend $15,000 to $20,000 a month on attorneys to protect 100 trademarks worldwide), it’s not enough to obtain trademark registration protection for your brands – you have to continuously monitor the marketplace to ensure that there are no other companies attempting to infringe on and/or take advantage of the reputation and goodwill of those brands.

James Bond fails again to defeat DR. NO European Union trademark application

noreply@blogger.com (Ryan Gile) — Mon, 06 Jul 2009 07:01:00 +0000

While my primary focus is typical on news and decision related to U.S. trademark law, I’m making a exception given that the subject matter of this ongoing Community Trade Mark dispute involves James Bond.

Danjaq LLC (“Danjaq”), the company which owns all of the intellectual property rights associated with the famed JAMES BOND movie franchise, has lost another round in its ongoing opposition battle against a German Company seeking to register the mark DR. NO with the Office for Harmonization in the Internal Market (Trade Marks and Designs) (“OHIM”) ), the body in charge of registering Community Trade Marks valid throughout the European Union. See Danjaq LLC v. OHIM et al, Case T‑435/05 (Ct. First Instance June 30, 2009).

Joseph Wiseman as Dr. No

The Court of First Instance affirmed the decision by the lower OHIM tribunals to dismiss Danjaq’s opposition on the basis that Danjaq had not proven that the name DR. NO had been used by Danjaq as a trademark (i.e., source identifier) prior to the filing date of Mission Productions’ application.

On June 13, 2001, Mission Productions filed an application (No. 002256378) to register the mark DR. NO with the OHIM. The goods for which registration was sought were in five different classes:

– “Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; electric and/or electronic apparatus and instruments (included in class 9); apparatus for recording, transmission or reproduction of sound and/or images and/or electronic data; magnetic data‑carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire‑extinguishing apparatus; data carriers of all types containing programs, software programs, recorded sound carriers, recorded image and sound carriers”, in Class 9;
– “Vehicles; apparatus for locomotion by land, air or water”, in Class 12;
– ‘”Leather and imitations of leather, and goods made of these materials (included in class 18); animal skins; trunks and travelling bags; luggage; umbrellas, parasols and walking sticks; whips, harness and saddlery”, in Class 18;
– “Clothing, footwear, headgear”, in Class 25;
– “Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages”, in Class 32.

Danjaq filed an opposition on April 26, 2002 arguing a likelihood of confusion with its earlier unregistered mark DR. NO used in connection with the James Bond film the same name.

The OHIM’s Opposition Division rejected that opposition on September 28, 2004, holding that Danjaq had not proven that the DR.NO Mark was well-known or had been used as a mark in commerce. Danjaq filed a notice of appeal of the Division’s decision, but the Board of Appeal dismissed the appeal on September 21, 2005, and affirmed the Division’s position.

Danjaq appealed the decision to the Court of First Instance. On June 30, 2009, the Court of First Instance affirmed the decisions below.

The primary issue was whether Danjaq, in promoting the first James Bond film “Dr. No,” had used the mark DR. NO as a trademark prior to the filing date of Mission Productions’ application.

The court found that Danjaq had not:

[I]n the present case, an examination of the documents submitted by the applicant shows that the signs Dr. No and Dr. NO do not indicate the commercial origin of the films, but rather their artistic origin. For the average consumer, the signs in question, affixed to the covers of the video cassettes or to the DVDs, help to distinguish that film from other films in the ‘James Bond’ series. The commercial origin of the film is indicated by other signs, such as ‘007’ or ‘James Bond’, which are affixed to the covers of the video cassettes or to the DVDs, and which show that its commercial origin is the company producing the films in the ‘James Bond’ series. Moreover, even if the profits that the film Dr. No had generated within the Community are capable of showing the commercial success of the film in that territory, the fact remains that they cannot show that the signs in question are used as indicators of commercial origin.

In addressing Danjaq’s use of DR.NO on comic books, music recording, books and posters, the court stated the following:

In the case of comic books, music recordings, books and posters, the signs Dr. No and Dr. NO are likewise not used as trade marks, but as a reference which is descriptive of the goods, indicating to consumers that they are music from the film Dr. No, a book or a comic book about the character of ‘Dr. No’, or a poster of that film or character. As is apparent from examining the documentation supplied by the applicant, some of the goods referred to are marketed to the public under other indicators of origin, namely ‘007’ and ‘James Bond’, which indicate to consumers that the commercial origin of the abovementioned goods relating to the film or the character of ‘Dr. No’ is the same as that of the films in the ‘James Bond’ series.

Danjaq also was not able to prove that any of the items that they claimed evidenced use of DR. NO as a mark had been put on the European market before the filing date of Mission Productions’ application.

Because the DR. NO mark could not be established by Danjaq as having been used as a source identifier, the court did not regarding them as having been well-known trademarks in any EU Member State within the meaning of Article 8(2)(c) of Regulation No 40/94 and Article 6 bis of the Paris Convention.

Finally, Danjaq tried to make the argument that Danjaq’s DR. NO title could still serve as grounds to oppose registration of the confusingly similar mark by Mission Productions. Under Article 8(4) of Regulation No 40/94, the existence of an earlier non‑registered trade mark or a sign other than a trade mark gives good grounds for opposition if the sign satisfies the following conditions: it is used in the course of trade; it is of more than mere local significance; it confers on its proprietor the right to prohibit the use of a subsequent trade mark; rights to the sign in question were acquired, pursuant to the law of the Member State in which the sign was used, prior to the date of application for registration of the Community trade mark

Unfortunately for Danjaq, the court found that the company had not provided sufficient evidence to show use of the title DR. NO in the two markets of the European Union (specifically, Sweden and Germany) which provide some protection for film titles (beyond copyright protection) against registration of a trademark which gives rise to a likelihood of confusion with such titles.

With Danjaq not able to satisfy one of the criteria under Article 8(4) of Regulation No 40/94, it could not rely upon the provision to sustain an opposition against Mission Productions’ application.

Sidenote: Do you think Danjaq is aware of this pending USPTO application for the mark DR. NO filed by Medical Research Institute for “Nutritional and Dietary Supplements”?

Re/Max Files Cybersquatting Lawsuit Against Las Vegas Real Estate Agent

noreply@blogger.com (Ryan Gile) — Thu, 02 Jul 2009 04:45:00 +0000

Steve Green of the Las Vegas Sun reported today (link here) on a cybersquatting and trademark infringement lawsuit filed by RE/MAX International, Inc. (“Re/Max”), against Cristine Rosa Lefkowitz and her corporation, C. Rosa, Inc. (“Defendants”). See RE/MAX International, Inc. v. C. Rosa, Inc. et al, Case No. 09-cv-01168 (D. Nev. June 29, 2009). A copy of the complaint can be downloaded here.

Re/Max, the owner of numerous trademark registrations the RE/MAX mark, offers real estate brokerage services through its numerous franchise offices located throughout the United States and in 70 countries worldwide. Re/Max has promoted its services online at http://www.remax.com/ since 1995.

According to the complaint, Re/Max became aware of the domain name http://www.remaxbrazil.com/ sometime in April 2007. The registrant was GoDaddy’s privacy service, Domains By Proxy. After threatening Domains By Proxy with liability if it didn’t reveal the name, Re/Max was contacted by Lefkowitz, a local Las Vegas real estate agent specializing in high-end Las Vegas real estate although she has not worked under or been affiliated with Re/Max (pictured below -- some locals might recognize her face as one of those agents advertising at the bus stops around town). Lefkowitz acknowledged owning the domain name as well as http://www.remaxriodejaneiro.com/. She claimed to have spoken with a Re/Max representative in Brazil about a master franchise for the country.

Cristine Rosa Lefkowitz

In May 2007, Re/Max’s counsel, after confirming that no one in Re/Max’s international department spoke with Lefkowitz, sent a letter to Lefkowitz’s counsel requesting that the domain names bet transferred to Re/Max. Re/Max also became aware of at least 10 other “remax” related domain names owned, through Domains By Proxy, by Lefkowitz.

At first, Lefkowitz’s counsel indicated that Lefkowitz would transfer the domain names to Re/Max. However, the same counsel later indicated he no longer represented Lefkowitz. When her new counsel contacted Re/Max, Lefkowitz apparently was no longer interested in transferring the domain names. However, this counsel did indicate that she would sell them to Re/Max for $15,000. When Re/Max reiterated its cybersquatting position, Lefkowitz’s counsel, in rejecting Re/Max’s offer to reimburse Lefkowitz for the registration costs of the domain names, stated that Lefkowitz would accept a “nuisance value settlement of $6,000.”

According to the complaint, since April 207, Defendants have purportedly been registering a litany of “remax” related domain names with the names of countries worldwide including remaxfrance.com, remaxsouthkorea.com, remaxbrunei.com, remaxmontecarlo.com, remaxperu.com, and remaxsrilanka.com.

Re/Max’s causes of action are for cybersquatting, registered trademark infringement, unfair competition, Nevada state trademark infringement, common law trademark infringement, and deceptive trade practices under Nevada law (NRS §598.0915).

Re/Max seeks an injunction against the Defendants to stop them from registering any more “remax” domain names, an court order transferring any and all “remax” domain names owned by Defendants to Re/Max, as well as cybersquatting statutory damages under 1117(d) (not less than $1,000 and not more than $100,000 per domain name as the court considers just).

Of course, the above reflects Re/Max’s side of the story. Steve Green’s article provides the “other side of the story” (as reporters are so often much better at providing than attorneys). According to Lefkowitz, who was surprised by the lawsuit and denied infringing on the RE/MAX trademark [Comment: but possibly not understanding cybersquatting law], said the names were registered years ago but “never activated” (which in her mind probably means she never put up anything – possibly not realizing that GoDaddy gladly puts up a “landing page” for its customers – of course, whether or not she shared in any click-through revenue is another issue). Lefkowitz stated that all of the domain names expired except remaxbrazil.com, which will expire in a few months.

Note: A quick WHOIS check of remaxperu.com and remaxsouthkorea.com reveals that they are set to expire June 9, 2010, and still in the name of C. Rosa Inc.

Nevada District Court Clarifies Nevada Limitations Period for Laches Presumption

noreply@blogger.com (Ryan Gile) — Mon, 29 Jun 2009 07:01:00 +0000

A Nevada District Court has clarified that, for purposes of determining whether the presumption of laches applies in a trademark infringement lawsuit filed in Nevada, the applicable statute of limitations period is four years. See Aristocrat Technologies, Inc. et al v. High Impact Design & Entertainment, et al, Case No. 07-cv-01033 (D. Nev. June 23, 2009).

Aristocrat Technologies, Inc. (“ATI”) produces and sells gaming machines under the word and design trademarks ARISTOCRAT (here and here), which ATI has registered both in the U.S. and internationally. High Impact Design & Entertainment (“HIDE Nevada”) had an agreement with ATI to purchase ATI’s gaming machines – an agreement that clearly indicated that ATI retained all rights, title and interest in its trademarks, and HIDE Nevada had no such rights. In June 2003, HIDE Nevada (without ATI's knowledge) applied to register the ARISTOCRAT design mark in Venezuela. ATI discovered HIDE Nevada’s Venezuelan application in December 2003 and demanded that HIDE Nevada withdraw the application; however, HIDE Nevada convinced ATI to wait until the mark had registered and then assign it to ATI later in order to avoid spending more time and money in registering the mark. ATI took no action at the time, and waited until it registered to HIDE Nevada’s Venezuelan affiliate company. But when the mark registered, HIDE Nevada refused to assign the mark over to ATI.

ATI initially sued HIDE Venezuela in August 2007. In August 2008, ATI filed an amended complaint adding HIDE Nevada and some individual defendants to the action. The defendants’ initial motion to dismiss for lack of subject matter jurisdiction was dismissed. Shortly thereafter, three of the Defendants (the “Moving Defendants”) filed Motions to Dismiss Case not Commenced within Three Years

The Moving Defendants argued that ATI's Lanham Act trademark infringement claims were not timely commenced and therefore the doctrine of laches should apply to bar the complaint based on the nearly four year delay from the time ATI learned of HIDE Nevada’s application for trademark registration in Venezuela and the date that ATI filed suit.

The court described the significance of the statute of limitations with respect to the defense of laches as follows:

While laches and the statute of limitations are distinct defenses, if the plaintiff filed a Lanham Act claim within the analogous limitations period under state law, courts strongly presume that laches is inapplicable. Reno Air Racing Ass'n, Inc. v. McCord, 452 F.3d 1126, 1138-39 (9th Cir. 2006). If the plaintiff filed suit outside the analogous period, courts have often presumed that laches is applicable. Id. at 1139. Because the Lanham Act contains no explicit statute of limitation, courts "borrow" the analogous state time period. Id. In determining the presumption for laches, the limitations period runs from the time the plaintiff knew or should have known about his cause of action. Id.

In this case, the Moving Defendants’ position was that the analogous statute of limitations under Nevada law is three years, and because ATI waited more than four years to file suit, ATI's suit should be barred as untimely. The Moving Defendants relied upon the Reno Air case which cited to NRS §11.190(3), which provides for a three-year statute of limitations for actions involving fraud, as the applicable statute of limitations.

However, the court noted that the issue of the applicable statute of limitations was not really at issue in the Reno Air case:

The [Reno Air] Defendant asserted that the doctrine of laches should apply to bar the Plaintiff's claim, and the court specifically noted that the parties in that case had agreed that the three-year limitation period in NRS §11.190(3) should apply to determine the presumption for laches. Id. at 1139. Notably, as Plaintiffs in this case point out, the court in Reno Air did not specifically hold that the applicable statute of limitations for a Lanham Act claim is three years under NRS §11.190(3). Id. Rather, the Reno Air court accepted the parties' understanding without discussion, and undertook its analysis of the laches issue based on the fact that the parties agreed that the three-year period should apply. Id.

(bold italics emphasis added).

The court then went on to address which of Nevada’s statute of limitations should apply – agreeing with ATI’s arguments that it should be four years based on Nevada’s four year statute of limitations period for actions under Nevada’s deceptive trade practices laws:

By contrast, Plaintiffs in this case argue that the Court should look to the four-year statute of limitations in NRS §11.190(2) for actions involving deceptive trade practices in violation of NRS §598.0903 to 598.0999. (Pl.'s Opp'n (# 48) 4). They argue that both the Lanham Act and Nevada's deceptive trade practices statute are "designed to prevent consumer confusion and deception in the marketplace with respect to the source, sponsorship, approval, affiliation, connection, or association of goods and services" and therefore Nevada's four-year statute of limitations for deceptive trade practices is the most closely analogous. Id. at 5. This Court agrees. A review of the Lanham Act provisions regarding trademark infringement and Nevada's deceptive trade practices statute reveals that the two are indeed analogous and appear to address similar wrongs including the false or deceptive use of another's mark or product.

(bold italics emphasis added).

Accordingly, the court applied the four-year limitations period to determine whether laches is applicable in this case. In this case, accepting the Moving Defendants' assertion that Plaintiffs discovered the offending use in December 2003, the suit, filed on August 3, 2007, was within the four-year statute of limitations period, and therefore, the court presumed that laches was inapplicable.

The court added that, even though ATI’s suit was presumed to have been timely filed, laches could still apply if the Moving Defendants could show that they suffered prejudiced as a result of the ATI’s unreasonable delay in filing suit. The court noted that, given HIDE Nevada’s assurances that it would assign the Venezuelan trademark upon registration, it was not unreasonable for ATI to delay in filing its action upon initially discovering the application in December 2003. Moreover, the Moving Defendants apparently had not shown any evidence of prejudice as a result of the alleged delay. Thus, the court denied the Moving Defendants’ Motion to Dismiss.

Chicago’s SUPERDAWG Files Trademark Infringement Against NYC’s SUPERDOG

noreply@blogger.com (Ryan Gile) — Fri, 26 Jun 2009 13:30:00 +0000

Chicago's Superdawg

The Chicago Tribune reported earlier this week on the lawsuit filed by the owner of Chicago’s famed SUPERDAWG restaurant (pictured above) against a New York man, Danny Omari, doing business under the SUPERDOG. See Superdawg Drive-In, Inc. v. Danny Omari d/b/a Superdog, Case No. 09-CV-03758 (N.D. Ill. June 22, 2009). A copy of the complaint is available here.

Superdawg Drive-In, owner of the registered SUPERDAWG mark, claims that Omari’s use of SUPERDOG infringes their nationwide reputation (because Superdawg does not currently have a NYC location) . Superdawg even cites an NY article about Omari’s new eatery – adding the disclaimer that Omari’s Superdog is “no relation to Chicago’s iconic Superdawg”

Omari has a trademark registration application pending with the PTO for the design mark HOT DOG CONCEPT SUPERDOG (pictured above). Surprisingly, the PTO did not find his mark to be conflicting with Superdawg’s registered mark.

Interestingly, Omari has already modified his home page slight in what appears to be an attempt to distinguish his mark from Superdawg – the design appears as below to read SUPER HOT DOG. [Comment: hmm...probably not enough to call off the dawgs].

Eighth Circuit Overturns Lower Court’s Laches Decision in CRISTAL Trademark Infringement Lawsuit

noreply@blogger.com (Ryan Gile) — Fri, 26 Jun 2009 02:00:00 +0000

The relatively new-on-the-block Minnesota Law, Technology & Intellectual Property Blog reports on the decision by the Eighth Circuit Court of Appeals overturning a lower court’s decision dismissing a trademark infringement lawsuit on the basis of laches. See Champagne Louis Roederer v. J. Garcia Carrion, S.A., et al., No. 08-2907 (8th Cir. June 24, 2009).

Cristal Champagne

Champagne Louis Roederer, maker of CRISTAL CHAMPAGNE, sued J. Garcia Carrion, S.A., maker of a sparkling wine sold under the mark CRISTALINO, for trademark infringement. The lower court dismissed the lawsuit on the basis that Roederer had constructive notice of Carrion’s use of the CRISTALINO mark as early as 1995 and the action was therefore barred by the doctrine of laches.

Cristalino Cava

The Court of Appeals found that the district court had not done a meaningful analysis of the issue of progressive encroachment to determine if 1995 was really the date when Carrion’s use became actionable infringement for purposes of applying the doctrine of laches.

The Court further noted that Carrion was certainly on notice regarding Roederer’s objection to Carrion’s use of the CRISTALINO mark. Roederer had opposed several trademark registration applications filed by Carrion in Spain, the U.S. and Columbia in the early and late 1990s -- long before Carrion has made a significant investment in improving a particular production plant in 2003.

Finally, the Court found that the district court had erred in finding that Carrion would be prejudiced by this delay if Roederer’s lawsuit proceeded. Carrion’s investment in improving its production plant did not appear to be so related to the CRISTALINO brand (only 9% of the plant’s output) that Carrion would not have otherwise made it without the CRISTALINO brand. Thus, Carrion had failed to show that it suffered undue prejudice as a result of Roederer's delay in bringing suit. The Court found that this alone was sufficient to bar Carrion’s use of the laches defense.

GIRLS GONE WILD Sues Wireless Companies Over GIRLS GONE MOBILE

noreply@blogger.com (Ryan Gile) — Wed, 24 Jun 2009 15:55:00 +0000

Xbiz reports (link here) on the trademark infringement lawsuit filed last week in the U.S. District Court for the Central District of California by the companies behind the GIRLS GONE WILD brand (Mantra Films, Inc. and GGW Marketing, LLC) against several wireless carriers (including AT&T and Verizon) and mobile phone content providers for using the mark GIRLS GONE MOBILE to promote “adult themed entertainment products” such as downloadable videos, photos, and wallpaper of “youthful women.” See Mantra Films, Inc. et al v. Oasys Mobile, Inc. et al, Case No. 09-cv-04420 (C.D. Cal. June 19, 2009). A copy of the complaint can be downloaded here.

One of the Defendants, Oasys Mobile, Inc., filed an intent-to-use application to register the mark GIRLS GONE MOBILE back in 2007. No opposition was filed when it was published for opposition in December 2008 and a notice of allowance has issued.

In addition to the usual trademark infringement, unfair competition, trademark dilution, cybersquatting, and intentional interference claims, there is also a breach of contract claim against one of the Defendants, Waat Media, Inc. According to the complaint, Waat had a Wireless Distribution Agreement with Mantra for exclusive rights to distribute Girls Gone Wild content over wireless networks. Mantra claims that Waat has breach this Agreement by not paying the quarterly royalties due since June 30, 2008.

Eric Gardner over at THR,Esq. gives his thoughts on the complaint.

Bellagio Loses Bet on Specimen of Use for DUNES mark for Casino Services

noreply@blogger.com (Ryan Gile) — Thu, 18 Jun 2009 15:45:00 +0000

The TTABlog® writes today (link here) on the Trademark Trial and Appeal Board’s decision affirming the PTO’s refusal to allow Bellagio, LLC, the MGM-Mirage subsidiary which owns the Bellagio Hotel & Casino, to register the mark DUNES for “casino services” based on a specimen of use showing the mark on a slot machine (pictured below). See In re Bellagio, LLC, Serial No. 77175007 (June 2, 2009) (not precedential).

Bellagio argued that its DUNES slot machines, which appear throughout the Bellagio casino floor (and are not themselves available for purchase by casino patrons), are used for gaming in Bellagio's casino, thus offering casino services to customers and thereby creating an association between the DUNES mark and the Bellagio.

However, the Board found that this specimen failed to provide the necessary “direct association” between the mark and the applied-for services such that the mark would be “readily perceived as identifying the source of the services.” The Board also noted that there was no evidence that “placing a mark on a slot machine is a typical manner for a casino to use its mark in connection with casino services” nor did Bellagio provide any evidence that the DUNES mark was used on other advertising to promote its casino services.

In the end, the Board found that the association that Bellagio argued customers encountering the DUNES slot machine would have in connecting such slot machines to Bellagio’s casino services offerred where the slot machine is located was not direct, but instead would require “at least one mental” step (including possibly an awareness of the fact that the Bellagio is located where the former Dunes Hotel & Casino used to stand).

The Dunes Hotel & Casino
(demolished in 1993 to make way for the Bellagio)

[Query: Do you think it would have made a difference if the services recited in Bellagio's application had been "gambling services" instead of "casino services"?]

Toy Maker Seeks Declaratory Judgment That “Boogie Board” is Generic for … Guess What?

noreply@blogger.com (Ryan Gile) — Tue, 16 Jun 2009 04:47:00 +0000

Wham-O's BOOGIE® body board

Hong Kong based toy company Manley Toys, Ltd., the maker of the BANZAI line of water toys including a water slide with a Banzai “boogie board” (pictured below), filed a declaratory judgment action against Wham-O, Inc., the owner of the registered trademark BOOGIE (for body boards), after receiving a cease and desist from Wham-O over the use of the term “boogie board”. See Manley Toys, Ltd. v. Wham-O, Inc., Case No. 09-cv-04198 (C.D. Cal. June 12, 2009). A copy of the complaint is available here.

Banzai's Water Slide with "Boogie Board"

Pardee Homes Sues Beazer Homes over SMART LIVING

noreply@blogger.com (Ryan Gile) — Thu, 11 Jun 2009 02:49:00 +0000

On June 8, 2009, Nevada and SoCal home builder and real estate developer Pardee Homes filed a trademark infringement lawsuit against home building competitor Beazer Homes in the U.S. District Court for the District of Nevada. See Pardee Homes v. Beazer Homes USA Inc. et al, Case No. 09-cv-01038 (D. Nev. File June 8, 2009). A copy of the complaint can be downloaded here.

Pardee Homes, a subsidiary of Weyerhaeuser Real Estate Company, is the owner of the registered trademark LIVINGSMART (word mark and design mark pictured below) for “building construction and real estate development services” in Class 37). The mark has become incontestable as of October 1, 2008.

Pardee also owns several other registrations and pending applications for other “SMART” marks (covering Class 37 and/or Class 36 services) including WHERE SMART SOLUTIONS LIVE; EARTHSMART; EARTHSMART and design; HEALTHSMART; HEALTH SMART and design; WATERSMART; SMART SOLUTIONS; and ECO-SMART LIVING.

In 2008, Beazer Homes received a registration for the mark SMARTDESIGN (for planning and laying out of residential communities; Construction of residential communities; housing services, namely, repair, improvement, and construction of residential real property in class 37). Also in 2008, Beazer Homes filed applications to register the marks ESMART HOMES and ESMART BY BEAZER HOMES (both for construction services, namely, planning, laying out and construction of residential homes in class 37).

On February 20, 2009, Pardee filed Oppositions with the Trademark Trial and Appeal Board (TTAB) opposing registration of both of these marks. See Weyerhaeuser Real Estate Company; Pardee Homes and Trendmaker Homes, Inc. v. Beazer Homes Holdings Corp., Opposition Nos. 91188948 and 91188950 (T.T.A.B. February 20, 2009). Then on February 24, 2009, Pardee initiated a cancellation of Beazer’s SMARTDESIGN mark. See Weyerhaeuser Real Estate Company; Pardee Homes and Trendmaker Homes, Inc. v. Beazer Homes Holdings Corp., Cancellation No. 92050587 (T.T.A.B. February 24, 2009).

According to the complaint, Pardee learned this month (June 2009) that Beazer, despite having notice of Pardee’s portfolio of SMART marks, recently adopted the marks SMART LIVING and BUY LOW . . . LIVE SMART, both of which Pardee alleges is confusingly similar to its LIVING SMART mark.

Pardee claims that Beazer is using the SMART LIVING mark in connection with the sale of homes on its website (apparently being used in connection with a Nashville, Tennessee community – although it appears to be used in more of a fair use, descriptive sense rather than as a mark).

Pardee also claims Beazer is using SMART LIVING as the title of a magazine to promote its homes. You can check out one recent issue for yourself here (2MB PDF).

Finally, Pardee cites a June 1, 2009, press release announcing its nationwide BUY LOW, LIVE SMART sales event, which was also promoted through an e-mail blast stating that “living smart means saving money and energy with our eco-friendly home features.”

Pardee’s causes of action are for registered trademark infringement under 15 U.S.C. § 1114; federal unfair competition under 15 U.S.C. § 1125(a); and common law unfair competition.

[Update: The Las Vegas Sun reported on Friday, June 12, 2009 (link here) that Beazer had apparently altered its ad campaign in response to the lawsuit, so that instead of "BUY LOW LIVE SMART" it now reads "BUY LOW . . .LIVE WELL." While its not clear if all of Pardee's claims have been addressed, the word around town is that the two sides have settled their dispute. I guess Pardee would say that Beazer made the "SMART" decision. ].

The owner of that popsicle is Monte…Del Monte.

noreply@blogger.com (Ryan Gile) — Mon, 08 Jun 2009 07:01:00 +0000

Rebecca Tushnet managed to combine two of my favorite topics—naked licensing and James Bond—into a single post about Del Monte’s attempts to distance itself from one of it's popsicles rembling the naked torso of current JAMES BOND 007 actor Daniel Craig.

Scene from "Casino Royale"
(Most of the women I know would prefer to lick the real thing)

ICANN’s Proposed Uniform Rapid Suspension Program For Fighting Cybersquatters

noreply@blogger.com (Ryan Gile) — Sat, 06 Jun 2009 00:00:00 +0000

ICANN's Implementation Recommendation Team (“IRT”) issued a report on May 29, 2009, which recommends the implementation of a new type of domain name proceeding that trademark owners could pursue in order to go after cybersquatters cheaper and faster. The proceeding is tentatively called the Uniform Rapid Suspension System (“URS”) and the IRT is recommending that it be mandatory for all new generic Top Level Domains (gTLDs).

The purpose of the URS is to provide a cost effective and timely mechanism for brand owners to protect their trademarks and to promote consumer protection on the Internet. The URS is not meant to address questionable cases of alleged infringement (e.g., use of terms in their generic sense) or for anti-competitive purposes or denial of free speech, but rather for those cases in which there is no genuine contestable issue as to the infringement and abuse that is taking place.

For a fee of $200 (for up to 25 domain names), trademark owners submit a complaint (the form of which is attached as Appendix B to the report) and notice will be sent to the domain name registry so that it can freeze the domain name to prevent transfers or other changes to the registration (but the website remains up). After the freeze, notice is given to the registrant to file an answer to the complaint (the form of which is attached as Appendix D to the report) within 14 days. The complaint and answer are then reviewed by an examiner who looks at the same three basis issues examined under the UDRP (domain name identical or confusingly similar to a valid mark, registrant’s rights or legitimate interests in the domain name, and bad faith), but under a “clear and convincing” standard of proof rather than preponderance of the evidence of the UDRP

The URS would only allow a complaining party to “freeze” a domain name for the remainder of the registration term – resolving to a specific error page. The System would not result in the cancellation of the domain name or the transfer of the domain name to the complainant.

Supposedly, if there is any genuine contestable issue as to whether a domain name registration and use is an abusive use of a trademark, the complaint will be denied terminating the URS process without prejudice to further action (i.e., a UDRP or actual lawsuit). “The URS is not intended for use in any questionable proceedings, but only clear cases of trademark abuse.” Moreover, any trademark owners found to repeatedly misuse the URS are supposed to be removed from the system and denied access to the URS for a set period of time.

Finally, both sides would have rights to appeal the decision. If the complaint is denied, the complainant may initiate a proceeding de novo under the UDRP or in a court of appropriate jurisdiction. If the complaint is granted, the Registrant may request reconsideration on the original record by a “URS ombudsman” on the grounds that the decision was “arbitrary and capricious or an abuse of discretion” or may initiate a de novo proceeding in a court of appropriate jurisdiction.

The Report gives the following illustration of how the URS in practice:

For example, if the trademark in question is BRANDXYZ for use in connection with computers and the domain name in question is brandxyzz.[gtld] and is used in connection with an abusive pay-per-click site, the site would be frozen. If the domain name is brandxyzcomputers.[gtld] and the record shows that it is a bona fide retailer who legitimately sells BRANDXYZ computers, the URS complaint would be denied.

[Comment—does stating “used in connection with an abusive pay-per-click site” imply an acknowledgment that that there can be such things as “nonabusive” pay-per-click sites” or is it more likely that all pay-per-click sites are deemed abusive by the ICAAN's IRT?]

For those not interested in reading the IRT report, TheDomains.com has a succinct yet detailed (and somewhat critical--but fairly so in my opinion) review of the proposed URS System.

Incorp and Legalzoom Settle Trade Libel Lawsuit

noreply@blogger.com (Ryan Gile) — Thu, 04 Jun 2009 19:01:00 +0000

I previous wrote (link here) about the lawsuit filed by Incorp Services, Inc., (“Incorp”), a company that helps parties form corporations and other business entities throughout the United States and which also offers registered agent services for business entities nationwide, filed a lawsuit against Legalzoom.com, Inc. (“Legalzoom”), the “document preparation” company that also helps interested parties form corporations and other business entities. See Incorp Services, Inc., v. Legalzoom.com, Inc., Case No. 09-cv-00273 (D. Nev.).

Incorp alleged that customers who formed business entities through Legalzoom and who wanted to use Incorp as their registered agent had been told by LegalZoom’s representatives that Incorp “is not in good standing” with several states, that Incorp “cannot be used” as a registered agent; that InCorp is “not licensed to do business in” certain states: that Incorp “cannot legally do business in” certain states; that InCorp is “not legal” in certain states; and other similar statements – all of which Incorp maintained are false given its good standing status in all fifty states and the District of Columbia.

On May 27, 2009, the parties notified the court that the dispute had been resolved. A stipulation for dismissal with prejudice was filed with the court on June 2, 2009. No terms of the settlement were disclosed. Both sides will bear their own attorneys fees and costs.

My new favorite TTAB website - TTAB ACROSS THE BOARD

noreply@blogger.com (Ryan Gile) — Wed, 03 Jun 2009 13:00:00 +0000

Over this past weekend, I stumbled across TTAB ACROSS THE BOARD. This may be old news for some, but I had never heard of it and I think the website is a must-know for TTAB practitioners – and will soon become their favorite TTAB related website (with the exception of The TTABlog® of course).

As most TTAB practitioners know, filings for TTAB opposition or cancellation proceedings are electronically available through the TTAB’s TTABVUE system. While there is a way to search final decision of the TTAB (link here), there is no current way to search all of the electronic filings filed in such opposition or cancellation proceedings . . . until now.

TTAB ACROSS THE BOARD, a personal project of its creator, attorney Chris Shiplett, is a searchable database of TTAB case status information and TTAB filings that is synchronized nightly with the TTAB’s records. Of course, the search function is only as good as the underlying documents – and searchability will depend on whether the PDF files filed in TTAB proceedings have readable text or are scanned in. Nonetheless, it does appear to fill in a hole where one existed (and which surprisingly the TTAB itself never bothered to implement itself – even though it would probably be in the best position to have done so).

The website also allows registered users to put cases on a “watch list” and even an RSS feed for true TTAB junkies that need to know about every single filing with the TTAB filing when it happens. The website is currently free (and hopefully can stay that way although I would imagine that the creator would appreciate some sponsorships to help defray the cost of what could soon become a popular database). Mr. Shiplett is currently seeking feedback on his website so give it a try and e-mail him with your thoughts and comments.

Psion Agrees to Surrender NETBOOK Registered Trademark

noreply@blogger.com (Ryan Gile) — Tue, 02 Jun 2009 13:33:00 +0000

Back in February, Intel Corp. filed a declaratory judgment action against Psion Teklogix, Inc. seeking a declaration that Psion’s registered trademark NETBOOK is generic for laptop computers (previously blogged here). The action was filed after Intel (along with numerous other well-known names like Dell, HP, and Best Buy) received a cease and desist letter from Psion.

Intel was challenging Psion’s trademark registration on the grounds that while Psion may indeed have used the term NETBOOK in connection with small portable computers at one time, it abandoned the name in 2003 (making its 2006 Section 8 Declaration of Use fraudulent). Dell had also filed its own cancellation proceeding with the Trademark Trial and Appeal Board against Psion. That action was stayed pending the outcome of Intel’s declaratory judgment action.

News reports out yesterday (here and here) reported that Psion has agreed to settle the Intel lawsuit.

Psion stated in a press release that as part of its “amicable agreement” with Intel, it would surrender (i.e. voluntarily cancel) its NETBOOK trademark registration and will no longer pursue against trademark enforcement actions against any third parties using the term:

The litigation has been settled through an amicable agreement under which Psion will voluntarily withdraw all of its trademark registrations for ‘Netbook’. Neither party accepted any liability. In light of this amicable agreement, Psion has agreed to waive all its rights against third parties in respect of past, current or future use of the ‘Netbook’ term.

Ozzy Osbourne Files Lawsuit Against Anthony Iommi Over BLACK SABBATH Trademark

noreply@blogger.com (Ryan Gile) — Mon, 01 Jun 2009 07:01:00 +0000

Multiple news sources (Reuters, E! Online, Entertainment Weekly) reported over the weekend on the lawsuit filed last week in the U.S. District Court for the Southern District of New York by Ozzy Osbourne against his Black Sabbath band partner Anthony Iommi over ownership of the BLACK SABBATH mark. See John Osbourne (p/k/a Ozzy Osbourne) v. Anthony Iommi , Case No. 09-cv-04947 (S.D.N.Y. Filed May 26, 2009). Blabbermouth.net has a posting of the complaint here.

In December 2008, Iommi filed his own trademark infringement lawsuit against Signature Network (previously blogged here) over the sale of unlicensed “Black Sabbath” Merchandise. As part of that complaint, Iommi described how he came to be the sole owner of the “Black Sabbath” trademark. Particularly, with respect to Ozzy Osbourne, on June 30, 1980, Osbourne and his company, Monowise, Ltd. assigned and transferred

any and all rights of any kind or nature that they have or have had in the name 'BLACK SABBATH' .... OSBOURNE further agree[d] that he will not hereafter, directly or indirectly, use, permit, or authorize the use of the name 'BLACK SABBATH' or any part of it or any similar name in connection with any activities in and throughout the entertainment industry.

Interestingly, it was that dispute with Signature Network that may have started the dispute leading up to Ozzy’s present lawsuit. According to correspondence dated April 2008 from Ozzy’s attorney to Iommi’s attorney (attached as exhibits to Ozzy’s complaint), Ozzy became aware of Iommi’s cease and desist letter to Signature Network and Iommi’s claim to be the sole owner of the BLACK SABBATH mark. Apparently at that time the letter was sent out, Iommi and Ozzy had been negotiating some kind of agreement memorializing their joint ownership of the BLACK SABBATH mark as well as negotiating a renewal of the license agreement by Signature Network.
In a letter from Ozzy’s attorney sent on January 29, 2009 (after Iommi’s lawsuit against Signature Network had been filed), Ozzy’s response to the aforementioned assignment is that Ozzy and his wife, Sharon Osbourne, had been in charge of controlling the nature and quality of the services rendered under the BLACK SABBATH mark since 1997 (when the BLACK SABBATH reunion tour began).

This same sentiment is echoed in Ozzy’s official press release statement regarding the lawsuit which explains in the following manner why his prior assignment of the BLACK SABBATH name in the early 1980s may not be relevant to the goodwill inherent in the BLACK SABBATH name today:

Throughout the last 12 years, it was my management representatives who oversaw the marketing and quality control of the “Black Sabbath” brand through OZZFEST, touring, merchandising and album reissues. The name "Black Sabbath" now has a worldwide prestige and merchandising value that it would not have had by continuing on the road it was on prior to the 1997 reunion tour.

Ozzy also apparently was not even aware of the federal trademark registration that Iommi had obtained from the U.S. Patent and Trademark Office until recently.

Ozzy’s seeks a declaration that he is at least a joint owner of the BLACK SABBATH mark and that Iommi is not the sole owner of the mark. Ozzy also seeks cancellation of the BLACK SABBATH federal registration on the basis that Iommi, when he filed the application in March 1999, made a knowingly false statement to the PTO when he declared that no other person had any right to use the BLACK SABBATH mark in commerce. Two additional causes of action for monies owed and misappropriation of Ozzy’s right of publicity are also claimed.

Software Maker Files Declaratory Judgment Action Against The Naked Cowboy

noreply@blogger.com (Ryan Gile) — Thu, 28 May 2009 16:00:00 +0000

The Naked Cowboy

Bloomberg reports that European mobile phone software maker Gameloft has filed a declaratory judgment action against Robert Burck, better known as “The Naked Cowboy” (the self-appointed most famous “busker” in New York City), in the U.S. District Court for the Central District of California. See Gameloft S.A. et al, v. Robert Burck, et al,, Case No. 09-cv-3769 (C.D. Cal. Filed May 27, 2009). A copy of the complaint can be downloaded here.

(Click here for prior blog posts regarding Burck’s lawsuit against against Mars Incorporated, the maker of M&Ms candies, over an M&M ad featuring a cartoon M&M guitar-playing street performer wearing a cowboy hat, boots, and underwear – all reminiscent of Burck’s alter ego).

Burck obtained a registration for the mark NAKED COWBOY for various entertainment services on April 9, 2002. He obtained second registration on September 2, 2003, for a design mark resembling The Naked Cowboy’s likeness (pictured below) for various clothing items including, of course, underwear.

According to the Bloomberg article, one of Gameloft’s games contains a character name Nick who wears a cowboy hat and plays the guitar in Times Square. (It is not clear from the article if Nick is wearing white underwear and white boots).

Apparently, Burck has threatened to take legal action against Gameloft for trademark infringement. Thus, Gameloft took preemptory action by filing for a declaratory judgment of non-infringement.

Gameloft seeks a declaration that its Nick character is protected by the First Amendment and does not infringe on Burck’s trademark rights. Gameloft describes Nick as a “minor part of the game” representing “a humorous caricature that imitates the style of Times Square performers for comic effect and is not a literal depiction of the Naked Cowboy.”

By filing this case in California (as opposed to waiting until Burck takes action – likely in New York where Burck is located), Gameloft may be hoping to take advantage of last year’s decision Ninth Circuit decision in E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., __ F.3d __ (9th Cir. Nov. 5, 2008) (blogged here). In that case, the Ninth Circuit ruled that the First Amendment protected the makers of the video game Grand Theft Auto: San Andreas from trademark infringement claims brought by the owner of an East Los Angeles strip club named “Play Pen” over a depiction of a fictional “East Los Santos” strip club named “Pig Pen” in the video game. The court held that Rock Star’s modification of the “Play Pen” mark had some artistic relevance in the underlying work and was not explicitly misleading, and thus was protected by the First Amendment.

Think Computer Agrees to Drop Cancellation Petitions Against FACEBOOK

noreply@blogger.com (Ryan Gile) — Wed, 27 May 2009 04:01:00 +0000

WebProNews reported that the dispute between Facebook, Inc. (“Facebook”) and Think Computer Corporation (“Think Computer”) over the trademark FACEBOOK had been resolved with a confidential settlement agreement.

In April 2008, Think Computer filed a cancellation petition with the Trademark Trial and Appeal Board to cancel Facebook’s trademark registration for the mark FACEBOOK. See Think Computer Corporation v. Facebook, Inc., Cancellation No. 92049206 (T.T.A.B. Filed April 15, 2008). A second cancellation proceeding was instituted in March 2009 over a second registration for FACEBOOK. See Think Computer Corporation v. Facebook, Inc., Cancellation No. 92050675 (T.T.A.B. Filed March 12, 2009).

Think Computer’s founder, Aaron Greenspan, attended Harvard along with Facebook’s cofounder Mark Zuckerberg in 2002-2004. In August 2003, Think Computer put out a web-based student portal called houseSYSTEM, which contained a section called "The Universal Face Book."

In both cancellation petitions (here and here), Think Computer claimed 1) priority of use (using the marks “FACEBOOK,” “FACE BOOK,” “UNIVERSAL FACE BOOK,” and “FACENET” at least as early as September 19, 2003 in connection with “on-line information services featuring information regarding, and in the nature of, collegiate life, classifieds, virtual communities and social networking)”; 2) genericness (the terms “FACEBOOK” and “FACE BOOK” have been used for decades to describe books displaying faces of students or other individuals); and 3) fraud on the PTO.

Regarding the allegations of fraud, Think Computer claimed that Facebook’s initial application declaration or “no other person. . . has the right to use the mark” was false because the Facebook founders were aware of Think Computer’s use of the Facebook mark. Interestingly, the fraud allegations also make reference to Facebook’s Petition to Make Special (under T.M.E.P. §1710) its two pending FACEBOOK applications in order to expedite their examinations. Facebook filed its petitions because it was in the midst of litigation with ConnectU, which had threatened a bidding war over the facebook.com domain name. Think Computer alleged that the rushed examination allowed Facebook to rush through its applications, and thereby preventing the PTO from considering a possible genericness refusal or other similar marks that had been used in the marketplace.

Of course, like so many trademark disputes, the veracity of Think Computer’s allegations will never be tried as the parties announced that all outstanding claims between the parties, including the issue regarding the FACEBOOK trademarks, have been amicably resolved.

Cartier files (and later withdraws) trademark lawsuit against Apple over “Fake Watch” iPhone App

noreply@blogger.com (Ryan Gile) — Sat, 23 May 2009 04:09:00 +0000

Trademark litigation watchers are well aware of Cartier's aggressive protection of its “TANK” line of watches (created by Louis Cartier in 1917, who was supposedly inspired by the Renault tanks that Cartier saw during World War I). I previously wrote (link here) about one such lawsuit Cartier filed against Donna Karen.

So it probably came as no surprise when news came out today (reports here and here) that Cartier had filed a trademark infringement lawsuit against Apple Inc. alleging that an iPhone app named Fake Watch infringed Cartier's trademark and trade dress rights associated with Cartier's Tank watches. [Update: the complaint can be viewed here (HT: Marty Schwimmer)]

The Fake Watch app (made by a company named Digitopolis Co. and available for downloading on Apple's online iTunes store) displays the time using an image of "look-alike famous wristwatches" (one of which apparently looks like Cartier’s TANK watch).

Cartier claimed that Apple’s "use of Cartier's Tank mark and Cartier's trade dress and proprietary designs is likely to cause consumers to believe that Cartier's and defendant's goods originate from the same source."

But by the end of the day, reports surfaced that Apple had removed the app from iTunes and Cartier’s lawyer issued a statement that Cartier would be withdrawing the lawsuit (WSJ report here).

If only all trademark disputes could be settled this quickly.

[Update: Ron Coleman presents his thoughts about what is really going on behind the scenes with respect to this filed and later withdrawn complaint by Cartier.]

Another Quacky Lawsuit Involving Duck Tours

noreply@blogger.com (Ryan Gile) — Wed, 20 May 2009 20:45:00 +0000

I previously wrote here about the ongoing dispute between two amphibious tour operators battling over use of the term “duck tour” in connection with amphibious tours. Now comes news of another amphibious tour company’s lawsuit against a competing amphibious sightseeing tour company – only this one involves the “quack” sound of a duck.

On May 19, 2009, Ride the Ducks International, LLC (“Ride The Ducks”) filed a trademark infringement lawsuit against Bay Quackers, LLC (“Bay Quackers”) in the U.S. District Court for the Central District of California. See Ride the Ducks International, LLC v. Bay Quackers, LLC, Case No. 09-cv-2195 (C.D. Cal.). A copy of the complaint can be downloaded here.

Ride The Ducks, based in Georgia, describes itself as the nation's largest amphibious tour operator and amphibious vehicle manufacturer. It operates a fleet of over 75 amphibious tour vehicles offering amphibious sightseeing tours in numerous cities including Baltimore, Branson, Philadelphia, Seattle, and San Francisco to over 1,000,000 guest each year.

As described in the complaint,

To foster participation by its customers, Ride The Ducks distributes a duck call device, known as a “Wacky Quacker,” to its patrons for use while aboard the amphibious vehicle. The customers use the Wacky Quacker devices during the course of the tour to quack at one another, the tour personnel and random passers-by. Ride the Ducks tour guides, likewise, use the “Wacky Quacker” duck calls to encourage participation of the tour patrons.

In addition to having a registered trademark for WACKY QUACKERS (for duck calls and toy noise makers), Ride The Ducks is the owner of a registered sound mark for “a quacking noise made by tour guides and tour participants by use of duck call devices throughout various portions of the tours” in connection with “tour guide services over land and water by amphibious vehicles” (the “Ride The Ducks Sound Mark”). The mark was registered in September 2001, and in August 2007, Ride The Ducks filed a Section 15 Declaration of Incontestability making its registration “incontestable.” Subject to certain limitations (see 15 U.S.C. §§1065 and 1115(b)), an "incontestable" registration is conclusive evidence of: (1) validity of the registered mark; (2) the registration of the mark; (3) the owner's ownership of the mark; and (4) the owner's exclusive right to use the mark with the goods/services. See 15 U.S.C. §1065. Most importantly, an “incontestable” registration cannot be cancelled on the basis that it is merely descriptive.

Ride The Ducks maintains that consumers recognize the Ride The Ducks Sound Mark as representing Ride The Ducks’ “high-quality tour guide services.” [really?-ed.]

The complaint accuses Bay Quackers, a San Francisco-based amphibious tour company, of handing out similar duck call devices to its tour patrons for use while aboard the amphibious vehicle during the tour which makes a sound “similar to, if not identical to” the Ride The Ducks Sound Mark.

Ride The Ducks sent cease and desist letters to Bay Quackers on at least three occasions throughout 2008 and one time as recently as April 20, 2009 (the letters are included as an exhibit to the complaint), but apparently Bay Quackers has continued to hand out duck call devices as part of its tours.

Ride The Ducks causes of action are for registered trademark infringement under 15 U.S.C. §1114, federal unfair competition under 15 U.S.C. §1125(a), and unfair competition under California law (Cal. Bus. & Prof. Code §17200). Ride The Ducks seeks injunctive relief, destruction of all of Bay Quackers’ duck sound noise makers, Bay Quackers’ profits, treble damages, costs and attorneys fees.

Vegas™Esq. Comments:
This is one of those cases where your initial reaction might be one of disbelief. How can a company claim exclusive rights to a duck sound in connection with “duck tours”? Moreover, how could the PTO have granted a trademark registration for this type of sound mark?

But when you take a step back, you can begin to appreciate how this type of “duck call” device, when used in connection with this tour operation, is somewhat distinctive. After all, such “duck calls” are not a necessary type of mark that all amphibious tour operators would need to use in order to effectively compete in the amphibious tour marketplace. Just because it seems obvious to hand out “duck call” devices for patrons on a “duck tour” does not mean that it cannot serve as a unique source identifier – especially if there were no other “duck tour” companies out there doing it.

Of course, claims to a sound trademark normally are accompanied by challenges that the sound mark fails to function as a mark (i.e., is the “quacking noise made by tour guides and tour participants” marketed in such a way that customers would really identify it as identifying a single source when used in connection with an amphibious tour or would customers just recognize that patrons are making the sound of a duck while on a generic “duck tour”?). It’s a valid question and one that Bay Quackers will certainly raise should it decide to challenge Ride The Ducks. However, with its incontestable trademark registration, Ride The Ducks certainly has the upper hand in this quacky dispute.

If you care to see the Ride The Duck Sound Mark in action, check out this YouTube video.

[May 21, 2009 Update: John Welch pointed out that Boston Duck Tours does have its own registered sound mark for "the sound of a human voice making quacking noises like a duck" in connection with "conducting sightseeing tours." Interestingly, when Ride The Duck's application was originally published for opposition, Boston Duck Tours filed extensions of time to oppose registration. The threatened opposition resulted in the filing of a post-publication amendment that apparently resolved Boston Duck Tours' issue -- and what change was made? Ride The Ducks' original description was "a quacking noise made by tour guides and tour participants by use of duck calls throughout various portions of the tours." The amended description, and ultimately registered mark, was directed to "duck call devices." So it appears that the Ride The Ducks' focus on the "device" made all the difference . . . and reflects an important limitation on the scope of Ride The Ducks trademark rights.]

GunBroker.com Seeks Declaratory Relief Against Heckler & Koch and the Trademark Enforcement Efforts of Continental Enterprises, Inc.

noreply@blogger.com (Ryan Gile) — Tue, 19 May 2009 00:30:00 +0000

On May 14, 2009, GunBroker.com, LLC (“GunBroker”), the owner of the website www.GunBroker.com, filed a declaratory relief action against Heckler & Koch Inc. (“H&K”), the U.S. subsidiary of the German firearm manufacturer Heckler & Koch, GmbH, in the U.S. District Court for the Middle District of Georgia. See GunBroker.com LLC v. Heckler & Koch Inc., Case No. 09-cv-00051 (M.D. Ga.). A copy of the complaint can be downloaded here.

H&K is the owner of the registered HK logo trademark (pictured above) as well as numerous other registered marks that H&K uses in connection with certain models of H&K firearms such as USP, P7, and MP7 (some of which are also occasionally used in connection with other items including swords and knives).

Heckler & Koch's MP7

GunBroker’s website offers an online auction service for third parties to sell merchandise such as firearms, knives, swords, and hunting equipment and accessories to interested parties. Sellers create the auction listing and submit it to GunBroker, which then adds the auction to its site, administers the auction, notifies the auction winner, and provides details on how the winner can contact the seller. GunBroker’s Website User Agreement specifically prohibits the posting of items for sale that violate any third party’s intellectual property rights, and GunBroker provides a mechanism for trademark holders to report any violations.

According to the complaint, on August, 27, 2008, GunBroker’s predecessor-in-interest received a letter from the “Office of the General Counsel” for Continental Enterprises, Inc. (“CE”). The letter indicated that CE had been engaged by H&K to protect H&K’s intellectual property and that several hundred auction listings on GunBroker’s website violated H&K’s trademark and copyright rights. The letter enclosed a 16 page printout from GunBroker’s website that showed a list of auction listings (over 340) posted by third party sellers on the website who were attempting to sell merchandise and in some way using one or more of the H&K trademarks.

The basis of CE’s engagement to enforce H&K’s intellectual property rights was a letter from James E. Baker, Jr., an attorney with the Baltimore, Maryland law firm of Baxter, Baker, Sidle, Conn & Jones, P.A. (the “Baxter Firm”), which purportedly confirmed that H&K had engaged the services of CE to identify and investigate any unauthorized uses of H&K’s intellectual property. Apparently, however, the letter did not explain the relationship between the Baxter Firm and H&K nor did it indicate whether or not the Baxter Firm is an agent of H&K or otherwise entitled it to act on behalf of H&K.

According to the complaint, the owner of CE is Mr. Karl Manders, a career private investigator (but not a lawyer) who, through his company, concentrates exclusively on the enforcement of intellectual property rights. GunBroker believes that CE obtains a percentage of any settlement proceeds that CE receives from its efforts. CE has supposedly acted on behalf of such companies as Heineken USA, Inc., Just Born, Inc., and Big Dog Holdings, Inc.

GunBroker also notes in its complaint that Indiana’s Rules of Professional Conduct (Rule 5.4(a)) prohibits a lawyer from entering into a partnership with a non-lawyer and from sharing legal fees with a non-lawyer and cites Indiana State Bar Legal Ethics Opinion (Indiana State Bar Association, Legal Ethics Committee, Opinion #7, 1991) discussing that Rule 5.4(a) was designed to prevent “the possibility of control by a lay person who is interested in profit, rather than the client’s interests, and control by a person who is unregulated by the profession.”

GunBroker alleges that it has become the target of CE’s “for profit” intellectual property enforcement efforts. Click here for one website’s detailed discussion about CE’s trademark enforcement efforts – including a separate page entitled “What To Do If Contacted By Continental Enterprises.”

GunBroker’s complaint notes that the list of allegedly infringing auctions provided by CE did not distinguish between allegedly infringing use of H&K’s trademarks and the fair use of H&K’s trademarks by sellers listing authentic H&K products or otherwise making a fair use of H&K’s trademarks. Moreover, despite GunBroker’s request, neither CE nor H&K have used the mechanism on GunBroker’s website, to report a specific violation or to clarify which if any, specific postings on GunBroker’s website that CE or H&K believe infringe on H&K’s trademarks.

CE has threatened that GunBroker’s further advertisement or sale of “infringing merchandise” would be considered “willful infringement,” and would subject GunBroker “to enhanced penalties, including, but not limited to, treble or statutory damages and attorneys fees.” CE has also threatened to “advise H&K to take whatever steps it deems necessary to fully protect its intellectual property rights.”

Based on CE’s actions and threats regarding GunBroker’s alleged trademark infringement of H&K’s trademarks through the third party auction listings on GunBroker’s website, GunBroker maintains that a substantial controversy exists between the parties to warrant GunBroker’s request for declaratory relief.

GunBroker seeks a declaratory judgment that it has not infringed H&K’s trademarks, that it has not committed any contributory trademark infringement through the auction listings by sellers comparing their product to an H&K product, selling products that are compatible with an H&K product, selling products that are a “knock-off or look alike” to an H&K product, or reselling a used H&K product, and that such uses of H&K’s trademarks by sellers in their auction listings is fair use.

Federal Texas Court Finds Domainer Texas International Property Associates Liable for Cybersquatting

noreply@blogger.com (Ryan Gile) — Sat, 16 May 2009 02:33:00 +0000

Federal District Court Judge Ed Kinkeade of the Northern District of Texas dealt a defeat to domain name company Texas International Property Associates while giving a cybersquatting victory to Hoerbiger Holding AG (“Hoerbiger”). The court dismissed with prejudice all of TIPA’s causes of action against Hoerbiger and granted summary judgment in Hoerbiger’s favor on its counterclaim of cybersquatting. See Texas International Property Associates v. Hoerbiger Holding AG, 2009 U.S. Dist. LEXIS 40409 (N.D. Tex. May 12, 2009).

Hoerbiger conducts business in the fields of compression technology, automation technology, drive technology, and actuator technology. Hoerbiger has a trademark registration for the mark HOERBIGER (obtained October 8, 2002) and owns the website www.hoerbiger.com.

TIPA, a well-known domainer company that owns a portfolio of approximately 500,000 internet domain names that it uses to generate advertising revenues via click-through revenue, owned the horbiger.com domain name. When Hoerbiger first became aware of the domain name in June 2007, the site provided access to various hyperlinks labeled Automation, Compressor, Business, Valve, Web Site, Motion Control, Actuators, Storage, Cylinder, Linear Actuators and Control Valves – and a visitor, by clicking on those hyperlink labels was taken to a series of sponsored results or advertising links related to the user’s selection.

Hoerbiger asked TIPA to transfer the horbiger.com domain name, but TIPA refused, so Hoerbiger filed a UDRP action with the World Intellectual Property Organization (“WIPO”) against TIPA with respect to the domain name. The WIPO panel hearing the UDRP action found that Hoerbiger had shown that the horbiger.com domain name was confusingly similar to its HOERBIGER trademarks, that TIPA had no rights or legitimate interests in respect to the horbiger.com domain name, and that TIPA had registered and was using the horbiger.com domain name in bad faith. Accordingly, the panel, on October 19, 2007, ordered the horbiger.com domain name transferred to Hoerbiger.

TIPA subsequently filed suit against Hoerbiger in Texas state court on November 15, 2007, claiming that Hoerbiger has no rights in the horbiger.com domain name, and asking the court to prevent the transfer of the domain name to Hoerbiger. The case was removed to federal court by Hoerbiger, who added counterclaims federal trademark infringement, federal unfair competition, cybersquatting, and federal trademark dilution along with various state and common law claims. TIPA later amended its complaint to allege reverse domain name hijacking and fraudulent trademark registration and sought to prohibit the transfer of the domain name and cancellation of Hoerbiger’s registered mark HOERBIGER. Hoerbiger moved for summary judgment on all of TIPA’s claims and sought partial summary judgment on its cybersquatting counterclaim.

Hoerbiger’s cybersquatting claim alleged that registration of the horbiger.com domain name was done in bad faith for the purpose of “typosquatting” (i.e., using a domain name that is a typo or intentional misspelling of distinctive or famous mark).

In order to establish a cybersquatting claim under the Anti-Cybersquatting Protection Act (“ACPA”), a plaintiff must show that its mark was distinctive or famous at the time of registration of the domain name, (2) that the domain name registered is identical or confusingly similar to the distinctive or famous trademark, and (3) that the domain name registrant registered, trafficked, or used the domain name with a bad faith intent to profit plaintiff’s mark. See 15 U.S.C. § 1125(d)(1)(A)).

Hoerbiger argued that its federal registration of HOERBIGER made the mark presumptively distinctive and further argued that the HOERBIGER mark had acquired a secondary meaning as evidenced by TIPA’s own intentional copying of the HOERBIGER mark (evidenced by TIPA’s own advertising links to automation and compression products on its horbiger.com domain name). TIPA attempted to argue that HOERBIGER was not distinctive because the name is a surname; however, the court found the argument “disingenuous, given that TIPA itself has used ‘Horbiger,’ a very similar misspelling of ‘Hoerbiger,’ in association with advertising links for automation and compression, a deliberate copying.” The court found, with little discussion, that Hoerbiger had registered the mark, used it in connection with automation and compression, and that it had acquired secondary meaning, and thus was distinctive for purposes of the cybersquatting cause of action.

The court then found that the domain name horbiger.com was “identical or confusingly similar” to the HOERBIGER mark (noting that the domain name was deliberately used as a misspelling of Hoerbiger given that the website provided advertising links for automation and compression, the same products offered by Hoerbiger).

Finally, with respect to the factor of TIPA’s bad faith intent to profit from the Hoerbiger’s mark, the Court, analyzing the nine non-exclusive factors used to determine if a domain name owner had a bad faith intent to profit under the ACPA, found that most of the factors favored TIPA: 1) TIPA had no intellectual property rights in the domain name; 2) the horbiger.com domain name is not a legal name used to identify TIPA; 3) TIPA had not previously used the horbiger.com domain name in connection with the bona fide offering of goods or services; and 4) TIPA was using the site to generate revenue and not for a bona fide noncommercial or fair use. The court also noted that TIPA “must have known that the horbiger.com misspelling of HOERBIGER was confusingly similar, given that TIPA was using that misspelling to provide advertising links for automation and compression products.”

The only factor that slightly favored TIPA was that TIPA had never offered to sell the name to Hoerbiger; but the court quickly set that aside noting that TIPA was using the name for monetary gain - generating click-through advertising revenues for links to automation and compression.

The court rejected TIPA’s arguments that it was holding the domain name “in the surname sense” – based on the evidence showing that TIPA had used the website to provide links related to automation and compression -- products associated with the HOERBIGER mark. And in response to TIPA’s arguments that it bought the domain name because it was a “valuable internet property” (not because it was a trademarked term), the court again focused on the fact that TIPA had been using the horbiger.com domain name to provide advertising links to automation and compression, products that are expressly associated with the registered trademark at issue, as opposed to using the domain name to provide links unrelated to automation and compression -- activities that would more easily comport with good faith.

And when TIPA argued that it was not a cybersquatter because its domain name portfolio policy was to maintain domains with surnames and generic terms, the court found the argument puzzling given that the evidence showed TIPA using the horbiger.com domain name in its trademarked sense, namely to generate revenue in connection with automation and compression. The court also rejected TIPA’s invocation of the “fair use” defense set forth in 15 U.S.C. § 1115(b)(4) (which includes defense to infringement for use by a person of their own name in connection with their business and not as a mark) finding that finding that TIPA was not using the horbiger.com as a surname (much less using it as the name of someone in TIPA’s business).

The court stated:

Most significantly, since TIPA was using the domain to provide links related to automation and compression, it clearly knew that “horbiger” was a slight misspelling of Hoerbiger, a company dedicated to automation and compression. By using the name as it did, TIPA was generating advertising revenues based upon the deliberate use of a confusingly similar name. Further, when WIPO ruled that TIPA should transfer the domain name to Hoerbiger, TIPA refused to comply, instead protracting the issue by bringing this dispute.

[Comment: Since when is a domain name owner's use of the legal process to fight a UDRP action an indication of bad faith under the ACPA?]

In short, the court found that there were no genuine issues of material fact regarding Hoerbiger’s cybersquatting claim and entered judgment in favor of Hoerbiger on such claim.

The court then blasted through each of TIPA’s claims against Hoerbiger (without much discussion or explanation) – dismissing TIPA’s claims for fraudulent trademark registration, conversion, trespass to chattels, and tortious interference with a contract and/or peaceful use or enjoyment of property.

Regarding fraudulent trademark registration, TIPA argued that Hoerbiger’s failure to disclose to the U.S. Patent and Trademark Office (“PTO”) that the English translation of HOERBIGER is Horbiger, which is primarily a surname was an alleged false statement of fact. The court disagreed stating that TIPA offered no authority to support its argument that such an omission amounted to a fraudulent misrepresentation that would justify cancellation of the mark. With respect to conversion, TIPA argued that Hoerbiger, by filing the UDRP action, had “locked” the domain name, thereby committing conversion. The court disagreed noting that TIPA had not shown that Hoerbiger improperly initiated the UDRP action with respect to the horbiger.com domain name. With respect to trespass to chattels, the court rejected this claim on the same basis as it rejected the conversion claim noting the lack of any evidence of damage to the domain name or that TIPA is even currently the owner of the name. Finally, with respect to TIPA’s claim for tortious interference with a contract and/or peaceful use and enjoyment of property, the court agreed with Hoerbiger that TIPA did not show that it suffered any damage as a result of Hoerbiger’s efforts to gain ownership of the horbiger.com domain name

With that, the court entered summary judgment in favor of Hoerbiger on its cybersquatting counterclaim, dismissed with prejudice all of TIPA’s claims against Hoerbiger, and held over for trial Hoerbiger’s remaining counterclaims for federal trademark infringement, unfair competition, and trademark dilution as well as its state law claims.

Andre Agassi and Steffi Graf Play Doubles Match Against Cybersquatters

noreply@blogger.com (Ryan Gile) — Wed, 13 May 2009 16:45:00 +0000

Andre Agassi & Steffi Graf

Looks like Andre Agassi and Steffi Graf have finally decided to go after their .COM domain names nearly 8 years after the names were registered by other parties. And as long as they are taking legal action, why not go after the registrants of their names with the .NET and. INFO domain name registries.

On May 12, 2009, both Agassi and Graf filed similar cybersquatting lawsuits in the U.S. District Court for the District of Nevada. See Agassi Enterprises, Inc. v. andre-agassi.com et al, Case No. 09-cv-00849 (D. Nev.) and SGF License, LLC v. steffigraf.com et al, Case No. 09-cv-00850 (D. Nev. Filed). A copy of the Andre Agassi complaint can be downloaded here.

Agassi Enterprises, Inc. (“AEI”), which owns the right to use Andre Agassi’s names and related intellectual property pursuant to an employment agreement it has with Andrew Agassi since 1994, sued three domain names containing the name Andre Agassi (andreagassi.com, andreagassi.net and andre-agassi.info). [Note: While the case caption indicates the names at issue are andre-agassi; the text of the complaint indicates that the .COM and .NET domain names at issue are without a dash]. Similarly, SGF License, LLC, Graf’s intellectual property licensing company, sued three domain names containing the name Steffi Graf (steffigraf.com, steffigraf.net and steffigraf.info).

In the Agassi case, the andreagassi.com domain name was registered with Tucows, Inc. by Standard Bearer Enterprises Limited, a company in St. Johns, Antigua, on October 4, 2001; the andreagassi.net domain name was registered with GoDaddy.com, Inc. by Garvin Advertising Agency, a company in Panama City, Florida, on February 22, 2009; and the andre-agassi.info domain name was registered with GoDaddy.com, Inc. by DomainsByProxy, a private domain registration service company in Scottsdale, Arizona, on June 3, 2007.

In the Graf case, the steffigraf.com domain name was registered by a company named Marketing Express on June 1, 2001; the steffigraf.net domain name was registered by Domain Admin on March 9, 2009; and the steffigraf.info was registered by Alexander Shadikhan on March 31, 2009.

Interestingly, the Las Vegas power couple, rather than filing separate actions against each of the registrants, opted instead to file “in rem” actions against the domain names themselves.

Under 15 U.S.C. § 1125(d)(2)(A), the owner of a registered trademark or mark that is protected under 15 U.S.C. § 1125(a) or 1125(c) may file an in rem civil action against a domain name in the judicial district in which the domain name registrar, domain name registry, or other domain name authority that registered or assigned the domain name is located if the court finds that the owner is not able to obtain personal jurisdiction over the domain name registrant or the owner was not able to find the domain name registrant after sending a notice to the registrant’s postal and e-mail address that the registrant provided to the domain name registrar. For purposes of this type of in rem action, the situs of the domain name is considered to be the judicial district in which the domain name registrar, registry, or other domain name authority that registered or assigned the domain name is located or alternatively the court in which the registrar of the domain name deposits a registrar certificate giving the court control and authority regarding the disposition of the registration and use of the domain name. See 15 U.S.C. § 1125(d)(2)(C).

In the Agassi case, AEI would certainly not be able to obtain personal jurisdiction over a company in Antigua, so it makes sense to file an in rem action against andreagassi.com. However, there is no indication that AEI could not obtain personal jurisdiction over the registrants in Florida and Arizona by filing lawsuits in those states. And yet those domain names were included in this Nevada action. AEI even recognizes that the domain names are not interactive, and therefore, there is no personal jurisdiction over these domain names in Nevada.

Based on the complaint’s jurisdictional statement, AEI is apparently hoping that once it serves the complaint on the domain name registrars, that the registrars will willingly sign Registrar Certificates, which AEI can then deposit with Nevada district court, giving the court control over the domain names (thereby placing the situs of those domains in Nevada). In other words, if AEI can get the situs of the domain names moved to Nevada, then the court will have personal jurisdiction over them.

Of course, not all domain name registrars are so willing to sign over a registrar certificate unless the case is filed in rem in the judicial district in which the domain name registrar or domain name registry is located (none of the registrars of the Agassi domain names are located in Nevada and the .COM registry and .NET registry, both with Verisign, are in Virginia and the .INFO registry, Affilias, is in Ireland).

Moreover, at least one court of appeals has held that §1125(d)(2)(C) does not confer an independent basis of jurisdiction. See Mattel, Inc. v. Barbie-Club.com, 310 F.3d 293 (2nd Cir. 2002):

No scenario consistent with this statutory scheme, however, would permit an ACPA plaintiff to establish in rem jurisdiction by filing a complaint in a judicial district not contemplated by subsection (d)(2)(A) and then unilaterally seeking to effect a transfer of legal situs to that district. . . . [T]he ACPA's basic in rem jurisdictional grant, contained in subsection (d)(2)(A), contemplates exclusively a judicial district within which the registrar or other domain-name authority is located. A plaintiff must initiate an in rem action by filing a complaint in that judicial district and no other. Upon receiving proper written notification that the complaint has been filed, the domain-name authority must deposit with the court documentation "sufficient to establish the court's control and authority regarding the disposition of . . . the domain name," as required by subsection (d)(2)(D). This combination of filing and depositing rules encompasses the basic, mandatory procedure for bringing and maintaining an in rem action under the ACPA. Subsection (d)(2)(C) contributes to this scheme by descriptively summarizing the domain name's legal situs as established and defined in the procedures set forth in subsections (d)(2)(A) and (d)(2)(D).

Id. at 305-306 (emphasis added).

In other words, just because a registrar certificate gets filed in a court does not mean that the court has jurisdiction to hear the case.

So while I think it's a very valid question to ask why the jurisdiction of Nevada was chosen for this "in rem" cybersquatting action based on the above, the real question in my mind is what took them so long to go after the .COM cybersquatters in the first place?