By Zak Muscovitch.

The General Court of the European Union issued a judgment dismissing the Principality Of Monaco’s application for EU protection of its “MONACO” trademark.

In 2010, the government of the Principality of Monaco was granted, by the World Intellectual
Property Organisation (WIPO), an international registration covering the territory of the EU. That
registration, which was based on the word mark, MONACO, was transferred to the Office for
Harmonisation in the Internal Market (OHIM) to be processed.

In 2013, OHIM refused protection of the trade mark in the EU in respect of some of the goods and
services applied for. OHIM based its refusal on the descriptive character of the mark, in so far as
the word ‘monaco’ designated the territory of the same name and could, therefore, be understood
in any of the EU’s official languages as designating the origin or geographical destination of the
goods and services concerned. OHIM further considered that the mark at issue was clearly devoid
of distinctive character. Les Marques de l’État de Monaco (MEM), a Monegasque public-limited
company which succeeded the government of the Principality of Monaco as the proprietor of the
trade mark, contested OHIM’s decision before the General Court and sought the annulment of that
decision.

The General Court observed that the word ‘monaco’ corresponds to the name of a
globally-known principality, not least due to the renown of its royal family, its organisation of a
Formula 1 Grand Prix and its organisation of a circus festival. Knowledge of the Principality of
Monaco is even more established amongst EU citizens, notably on account of its borders with a
Member State (France), its proximity to another Member State (Italy) and its use of the same
currency as 19 of the 28 Member States, the Euro. There is therefore, the Court ruled, no doubt that the word ‘monaco’ will evoke, regardless of the linguistic background of the relevant public, the
geographic territory of the same name.

According to the General Court, OHIM was also correct to find that the word ‘monaco’ could be
used, in trade, to designate origin, geographical destination or the place of supply of
services, so that the trade mark has, in respect of the goods and services concerned, a
descriptive character. Furthermore, as a descriptive mark is necessarily devoid of distinctive
character, the General Court holds that the trade mark MONACO is devoid of distinctive
character.

In case you are wondering, yes, the Principality of Monaco has brought UDRP proceedings previously, such as in this case where they successfully obtained the transfer of Principadodemonaco.com. Fortunatly however, they have not tried to obtain MONACO.COM which is owned and used by a fire and security systems company in Jacksonville, Florida. You may recall that in 2000, the city of Barcelona used the UDRP to successfully obtain the transfer of BARCELONA.COM, and the transfer was subsequently upheld by a US district court. But fortunately the  United States Court of Appeals for the Fourth Circuit ultimately restored the domain name’s ownership to the original registrant, Barcelona.com, Inc., which still owns and operates the domain name today.


By Zak Muscovitch.

Not all domain name disputes are covered by the UDRP. In fact, the UDRP is only intended to cover a certain kind of domain name dispute.

Back on October 24, 1999, ICANN’s Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, clearly stated what the intended scope of the UDRP was to be. 

The UDRP was to be for the:

administrative resolution for only a small, special class of disputes. Except in cases involving “abusive registrations” made with bad-faith intent to profit commercially from others’ trademarks (e.g., cybersquatting and cyberpiracy), the adopted policy leaves the resolution of disputes to the courts (or arbitrators where agreed by the parties) and calls for registrars not to disturb a registration until those courts decide.”

Accordingly, the UDRP is only supposed to be used for true “cybersquatting” cases. Other kinds of domain names disputes, such as genuine disputes involving allegations of trademark infringement, contractual disputes, and business disputes, for example, are supposed to be brought to courts instead of to an ICANN dispute resolution provider.

In the recent case of Estate of Malcolm McLaren v. Paul Norstrum August, over the domain name malcolmmclaren.com, the UDRP Panelist, Bruce E. Myerson, correctly decided that the dispute was not within the proper scope of the UDRP. The case involved the estate of the late English fashion and music impresario, against a former associate of Mr. McLaren. The Panelist stated as follows:

“Based upon the allegations of the parties, the Panel finds that this is a business and/or contractual dispute between the Complainant and Respondent that falls outside the scope of the UDRP.  
For the foregoing reasons, the Panel concludes that the instant dispute falls outside the scope of the UDRP.” 

Not only did the Panelist correctly uphold the proper scope of the UDRP in terms of it not being intended to resolve genuine business disputes, but the Panelist also made important references to another aspect of domain name disputes that may cause a particular dispute to fall outside of the Policy, even where subject-matter wise, it ought to be within the scope of the Policy:


“Moreover, this case , is like the situation in [Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007)] in that:
When the parties differ markedly with respect to the basic facts, and there is no clear and conclusive written evidence, it is difficult for a Panel operating under the Rules to determine which presentation of the facts is more credible.  National courts are better equipped to take evidence and to evaluate its credibility.”

Accordingly, as the Panel pointed out, even where a particular domain name dispute may be a true “cybersquatting” case that should normally be adjudicated under the UDRP, because there are no cross-examinations, discoveries, and live trials in a UDRP proceeding, a Panelist ought to dismiss a complaint where it is not appropriate to make important factual determinations without such a full hearing that can only be provided by a court.

One of the most serious mistakes that I see intellectual property counsel make, is trying to fit a legitimate dispute into a UDRP rather than take the proper course of action and proceed with a regular court case.


The Montreal, Quebec Court released an interim and partial injunction regarding the domain name SPCA.COM according to CTV News, but the domain name registrant is allowed to keep it, at least for now, pending the outcome of a trial involving other issues such as wrongful dismissal and defamation. The domain name registrant was reportedly permitted to keep the domain name but must direct donations received throught the web site to a trust fund, pending the outcome of the action. Although not a domain name lawyer, renowned Canadian constitutional lawyer Julius Grey is representing the registrant, and I imagine is providing top-not counsel to the registrant.


Remember “Convergence”? It was the concept where all modes of communications were to become unified…., or alternatively, “media convergence is a concept in which old and new media intersect”.

Well, nobody announced it, but we are already there and have been for some time….

I realized this when I heard that the police are being trained by consultants about how to use social networking utilities and sites to obtain evidence and investigate people, and related it to how anonymous bloggers and web site posters are being exposed by court orders.

So, there is no difference any longer between the “bricks and mortar” and “cyberspace”; they are both now part of the “real world”. The same rules apply, the same laws apply, the same degree of anonymity or lack thereof applies – cyberspace has converged into the “real world”. There was a time where many thought that the Internet was a safe haven. That time has long since passed.

A blogger has the same degree of free speech and anonymity (or lack thereof) as someone who posts an index card on a grocery store bullietin board….Welcome to the new Internet world, same as the old world.


In an entertaining domain name decision from the Nunavut Court of Justice dated September 10, 2009, the Honourable Mr. Justice E. Johnson, described a domain name dispute as similar to “Cool Hand Luke”:

“Stout described the litigation by using a movie analogy. He called it a Runaway Train. I believe a better movie to describe it is Cool Hand Luke. In one scene, the strong-willed prisoner, played by Paul Newman, is lying in a ditch covered with dust and bruises after being recaptured from a prison escape. The warden, played by Strother Martin, looks down at him and says, “What we got here is a failure to communicate.”

The domain name dispute had actually already been resolved between the parties, as the registrant had already agreed to transfer the domain names, but the issue of legal fees remained.

According to the decision, in March 2000, the registrant paid for an online registration of the domain names “NunavutTourism.com”, “NunavutTourism.net”, and “NunavutTourism.org” in her name because the site would not accept her work email and the applicant did not have a credit card, even though she was registering the domain names on behalf of her employer, Nunavut Tourism. After the registrant ended her employment, she offered to transfer the domain names in exchange for her registration costs, but her former employer insisted upon her legal costs.

Various offers were exchanged, however the matter ended up in court after a “failure to communicate” as the Judge said, and the parties then argued about costs. The registrant ended up getting nearly $8,000 in costs because the Plaintiff apparently kept suing when all it needed to do was agree to accept back the domain name and pay nominal costs to the registrant. This is a lesson for overly aggressive and/or unreasonable claimaints.