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ICANN and the Hyper-Aggressive Trademark Owners: The "Monster Test"

We read and hear a lot of complaints from trademark interests about allegedly rampant cybersquatting and other forms of trademark infringement, but it's rare to see a story about reverse domain name hijacking and other abuses committed by them. That's what made it so refreshing to see an article in the Saturday, April 4th Wall Street Journal titled "The Scariest Monster of All Sues for Trademark Infringement — Fancy Audio-Cable Outfit Defends Its Brands; A Mini Golf Course Fights Back" (available here; subscription required).

It turns out that Monster Cable Products Inc., best known for its expensive audio and video cables, has registered more than 70 trademarks on the generic word "monster" and has filed more than 190 actions at the U.S. Patent and Trademark Office while also bringing about 30 lawsuits in federal court. While the actions have been largely taken against small businesses involving auto transmissions, slot machines, glue, carpet cleaning machines, and an energy drink, Monster has also fought such major trademark owners as Walt Disney Co. over the film "Monsters Inc.", and the Boston Red Sox over its application for Green Monster hot dogs, named for the legendary left field wall in Fenway Park. The article reports that Monster generally seeks to have the targets of its trademark actions surrender their own trademarks and agree to license them back for a hefty fee, as well as post a clickable link on their own websites to that of Monster Cable's.

The article focused primarily on Monster's lawsuit against California's Monster Mini Golf franchise. It's hard to imagine that a consumer seeking an HDMI cable would be confusedly diverted into putting toward a glow-in-the dark ghoul, but Monster Cable wanted the franchise owners to surrender their company name and then pay them an $80,000 licensing fee to use it. Refusing to buckle under, they accumulated $100,000 in legal bills and then decided to launch an Internet campaign against Monster's bullying tactics. In this case the Net came to the rescue — after receiving more than 200 consumer complaints, Monster dropped the lawsuit and its trademark opposition, and agreed to pay the franchise's legal expenses.

The Monster Cable saga serves as a cautionary tale during a time when an ICANN-created Implementation Recommendation Team (IRT), controlled by its Intellectual Property Constituency, is meeting behind closed doors to come up with all sorts of new ideas for protecting trademark rights on new gTLDs. Word has it that these will include an expedited procedure that will partially displace the UDRP and lead to the immediate takedown of domains alleged to be "cybersquatting", with the onus being on the registrant to get reinstated; and the establishment of a global list of protected marks that are off-limits to registrants (and won't Monster Cable be eager to get "Monster" onto that list?).

We won't pass judgment on the IRT's recommendations until they emerge for public review. But when they do become available we shall apply the "Monster Test" to them. That is, we'll ask whether they could be abused by a hyper-aggressive trademark owner. And, in that event, what remedies would be available to the registrants under attacks? And will there be sanctions available to deter and penalize abusive trademark owner conduct? As domainers have no representation on the IRT, it is critical that these questions be asked, and satisfactory answers provided, before any new measures for use by trademark interests against domain registrants are considered by ICANN.

By Philip S. Corwin, Founding Principal of Virtualaw LLC – He also serves as Of Counsel to the IP-centric law firm of Greenberg & Lieberman. Views expressed in this article are solely his own. Visit Page

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Comments

I find it frustrating that the courts put up with this By Edward Falk  –  Apr 11, 2009 9:27 am PDT

I keep hearing about the overcrowding in our court system and then I see stories like this.  Unless the Monster cable company can somehow show that they're also in the miniature golf business, this should have been an open-and-shut case.  Why did the courts let Monster Cable run up a $100,000 legal bill?

Phil,Thank you for bringing this particular offender By R. Meyer  –  Apr 11, 2009 4:45 pm PDT

Phil,

Thank you for bringing this particular offender to light.

Sounds like the same tactic the guy from Chicago did with the term "stealth".
He brought cases against anyone that used the term "stealth" including KMart, toy manufacturers, lawn and garden companies, etc.

I believe, U.S. Federal court eventually started going against him - consistantly.

As I understand it, ICA's budget is peanuts compared to the war chest of the IP assns. 
If anything, you probably should be asking for support for ICA.

Too bad we don't have a voice in IRT (ICANN-created Implementation Recommendation Team).

By Philip S Corwin  –  Apr 10, 2009 1:19 pm PDT

I'm not sure what the motivation for your comment is, since my article is neither an attempt to alarm nor an appeal for funds. In fact, it doesn't even mention the ICA, other than noting my affiliation.
The ICA has taken a consistent position that if the UDRP is to be changed or supplemented (and there are reforms we might put on the table) it should be done through a singularly focused and transparent process that is open to all concerned parties to assure balance, and not as a subsidiary matter in the new gTLD debate with trademark-oriented groups like WIPO and the IPC driving the discussion. Saying that we will review the IRT's recommendations to see if they can be readily abused by trademark interests to the detriment of domain investors is hardly a scare tactic, it's just doing our job of watching and speaking out for our members within the ICANN process.
As for the Snowe bill, the ICA did play a role in derailing that dubious proposal for a parallel DNS trademark regime. Likewise, we shall engage in the current Congress if legislation is introduced proposing to amend the AntiCybersquatting Consumner Protection Act or otherwise affect the legal rights of domain registrants under U.S. law. Again, no attempt to alarm or exagerate, just a commitment to doing the same as any other industry trade association.

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