Third Lawsuit is a Charm in Ongoing Dispute Between Everest Poker and Harrah’s over World Series of Poker Sponsorship

The latest trademark infringement lawsuit filed in the District of Nevada is a continuation of an ongoing dispute between the online poker company Everest Poker and the owner of the World Series of Poker.

Back in April, Ultra Internet Media S.A. (“UIM”), a Nevis company that owns the online poker website Everest Poker, sued Harrah’s License Company, LLC (“Harrah’s”), the company which owns the World Series of Poker (“WSOP”), for breach of contract relating to a 3 year “on-felt” sponsorship deal that UIM had with Harrah’s to have the Everest Poker logo appear prominently on the felt of every table in the competition as well as the inner rung of the table used during the WSOP finals. See Ultra Internet Media, S.A. v. Harrah’s License Company, LLC, Case No. 10-cv-00455 (D. Nev. Filed April 1, 2010) (complaint here) (Las Vegas Sun article here).

The agreement called for UIM to pay Harrah’s $6.2 million for the 2008 WSOP tournament, $7.9 million for the 2009 WSOP tournament, and $8.4 million for the 2010 WSOP tournament.

UIM notified Harrah’s before the filing of the lawsuit that it was going to withdraw its sponsorship of the 2010 tournament (and not pay the $8.4 million due) based on what UIM calls a breach by Harrah’s of the sponsorship agreement. Specifically, UIM indicated that in the 2008 and 2009, ESPN broadcasts of the WSOP by a French television affiliate, RTL9, electronically projected the name and logo of competitor Full Tilt Poker on the table felt rather than UIM’s Everest Poker logo.

(courtesy of PokerJunkie.com)

According to that lawsuit, UIM had meetings with officials from Harrah’s and ESPN in February 2009 to discuss the RTL9 broadcasts and both agreed to take the necessary steps to stop RTL9 from projecting the Full Tilt Poker logo during its WSOP broadcasts. Yet, UIM claims that as recent as February 14, 2010, RTL9 was still showing the Full Tilt Poker logo during a WSOP event broadcast. UIM claims that its largest source of revenue comes from customers in France since U.S. law prevents UIM from generating gaming revenue in the United States through the Internet or telephone [ed. – wink wink].

The lawsuit seeks damages for breach of contract and unjust enrichment as well as a declaration that Harrah’s is in breach of the sponsorship agreement.

In Harrah’s Answer to UIM’s breach of contract complaint (Answer here), Harrah’s argues that the sponsorship agreement did not require events to be broadcast into any country and that no representations regarding WSOP broadcasts in France were made by ESPN or Harrah’s. (Las Vegas Sun article here).

Harrah’s argues that UIM’s everestpoker.net website received all of the coverage it could have hoped for and more through the broadcast of the WSOP tournaments in over 170 countries to over 250 million households for over 6000 hours. Harrah’s maintains that UIM also benefited from being able to use the WSOP trademark in advertising and promotions as well as being provided with “substantial hospitality consideration -- numerous hotel rooms and access to hospitality spaces and amenities and entry into the WSOP.”

Harrah’s further notes that UIM did not have an online gaming license recognized by French authorities at the time of its discussions with Harrah’s and ESPN at which Harrah’s and ESPN noted to UIM that poker programming was not distributed by French television stations unless tournaments were sponsored by a French licensee.

According to Harrah’s, when the concerns were raised by UIM regarding the French broadcasts in 2009, a “make-good” agreement was reached among the parties in which ESPN would broadcast the WSOP in Spain and Italy and not extra cost to UIM (on the idea that Spain and Italy combined have about the same number of potential viewers as France) and that Everest Poker would be described as the “presenting sponsor” of the WSOP during broadcasts in certain European countries – except for France where a “unique provision of French law” allowed RTL9 to use the digital advertising techniques that enabled it to put the Full Tilt Poker logo in place of UIM’s Everest Poker logo on the ESPN broadcasts.

A related breach of contract complaint was filed on April 27, 2010, by Harrah’s Interactive Entertainment, Inc., the predecessor-in-interest to Harrah’s License Company, LLC, with respect to UIM’s WSOP sponsorship agreement, seeking damages for breach of contract, breach of good faith and fair dealing, and unjust enrichment. See Harrah’s Interactive Entertainment, Inc. v. Ultra Internet Media, S.A. et al, Case No. 10-cv-00607 (D. Nev. April 27, 2010) (complaint here).

Which leads to the latest lawsuit filed last Friday. This time Everest Gaming Limited (“Everest Gaming”) is suing Harrah’s License Company, LLC and Harrah’s Interactive Entertainment, Inc. for trademark infringement. See Everest Gaming Limited v. Harrah’s Interactive Entertainment, Inc. et al., Case No. 10-cv-00904 (D. Nev. Filed June 11, 2010) (complaint here)(Las Vegas Sun article here).

Everest Gaming, a company organized in Malta, is the currently named registered owner of the EVEREST POKER trademark (purportedly assigned over by UIM to Everest Gaming on April 8, 2010, after first going through a Canadian intermediary, but the assignment was not recorded until June 4, 2010 (record here)).

According to the complaint, Harrah’s continues to use the Everest Poker trademark on the table felts being used in the 2010 WSOP tournament as well as banners and wall posters, the inner rung of certain WSOP tables, and on TV monitors through the Rio casino showing the WSOP schedule of events.

Everest Gaming maintains that Harrah’s is refusing to remove its trademark “in an effort to try to force payment by Everest for defendant’s use of such marks, and in order to bolster the legitimacy of the World Series of Poker in the minds of tournament participants, fans and the viewing public” in violation of Everest’s rights to control the use of its “well-known and distinctive trademarks” and that Harrah’s refusal is causing irreparable harm to Everest’s trademark and associated goodwill. [Comment: The Everest Poker name received worldwide exposure and its website probably received millions of hits by appearing on TV broadcasts in connection with one of the most popular poker tournaments in the world . . .and that harmed Everest’s reputation and goodwill how exactly??]

How long before Harrah’s fires back with claims against Everest Gaming for unauthorized use of the WSOP marks? Two can play at that game.

Utah Cupcake Maker Sues Competitor for Trade Dress Infringement

I have a certain affinity for trademark infringement lawsuits relating to cookies and cupcakes (see here and here). So I couldn’t pass up posting about this cupcake dispute – albeit a little dated in the world of blogging.

On May 14, 2010, Mini’s Cupcakes, Inc. (“Mini’s”) filed suit against Defendants LuAnn’s Cupcakes, Inc. (“LuAnn’s”) and Associated Food Stores, Inc. (“AFS”) in the U.S. District Court for the District of Utah. See Mini's Cupcakes v. LuAnn's Cupcakes et al, Case No. 10-cv-00457 (D. Utah). A copy of the complaint is available here (via Courthouse News). Local press coverage of the dispute here and here.

Mini’s claims trade dress rights to the cupcake design pictured above – what the complaint describes as a “distinctive design that features vanilla cake, blue cream cheese frosting, and silver and white gems.” Mini’s refers to this particular cupcake as its "Breakfast at Tiffany's" cupcake.

Mini’s claims that LuAnn's and AFS has copied Mini’s cupcake design with its so-called "Tiffany Jewels" cupcakes (pictured below) and has even approached one of Mini’s retailers in an attempt to sell its cupcakes – specifically stating that it looks like the Breakfast at Tiffany’s cupcake.

The complaint also argues that consumers have been confused between the two cupcakes – citing a blog post on Utah Loves Cupcakes which happened to note “how freakishly alike they [LuAnn’s cupcakes] look to our beloved Mini’s Cupcakes flavor, Breakfast at Tiffany’s?” The same posts includes two comments – one from Leslie Fiet, the owner of Mini’s, stating “When cupcakes are copied it is the highest form of flattery. I only wish they did not look exactly like mine because I have an outlet in Park City, Sugarbuzz, that sells my cupcakes and many people have been confused that those are my cupcakes and they do not taste the same. But oh well…” The owner of LuAnn's then followed up with her own comment stating “I apologize. It was not my intent to make anyone think they were someone else’s cupcakes.”

A cease and desist letter was sent to LuAnn’s on April 20, 2010, to which LuAnn's apparently did not respond. The complaint alleges that LuAnn’s has continued to sell the infringing cupcakes – although I could not find evidence of such cupcakes currently being promoted on the link of LuAnn's website noted in the complaint.

With no federal registration to back up any claim of distinctiveness for her cupcake design, the key issue is whether consumers would recognize Mini’s particular design as distinctive trade dress or whether they would simply see it as ornamental (requiring Mini’s to show that the design has acquired a distinctiveness such that consumers would associate the particular cupcake design with Mini’s). Of course, given the proximity in which these two small cupcake owners compete, it may be easier for Mini’s to show that, in the small world of Park City, Utah, Mini’s cupcake design has acquired a bit of consumer awareness such that consumers do associate that particular design specifically with Mini’s and thus, Mini’s should be allowed to exclude competitors from taking advantage of the goodwill it has been able to acquire with respect to the cupcake design. What do you think?

District Court Dismisses Rosetta Stone’s Adwords Lawsuit Against Google

I previously blogged (link here) about the Google Adwords trademark infringement lawsuit brought by language software company Rosetta Stone against Google. See Rosetta Stone LTD v. Google Inc., Case No. 09-cv-00736 (E.D. Va.).

On April 28, 2010, the U.S. District Court for the Eastern District of Virginia granted Google’s Motion to Dismiss. A sampling of the new coverage on the decision from Reuters, Marketwatch, Cnet, and Washington Post.

The order granting Google's Motion to Dismiss (link here) indicates that a memorandum explaining the basis for the decision will be forthcoming. We can’t wait. To be continued. . . .

[Update: Eric Goldman's Technology & Marketing Law Blog provides an excellent summary of the court's decision filed on August 3, 2010.]

UFC files In Rem Cybersquatting Action Against theultimatefighter.com

Las Vegas-based Zuffa LLC (“Zuffa”), the company which owns the marks THE ULTIMATE FIGHTING CHAMPIONSHIP and UFC in connection with mixed-martial arts competitions, filed an in rem lawsuit in the U.S. District Court for District of Nevada against the domain name theultimatefighter.com. See Zuffa, LLC v. theultimatefighter.com, Case No. 10-cv-00582 (D. Nev. File April 21, 2010). A copy of the complaint can be downloaded here (HT: Steve Green).

In addition to its more widely known UFC and ULTIMATE FIGHTING CHAMPIONSHIP marks, Zuffa has also registered the mark THE ULTIMATE FIGHTER in connection with the following goods/services (the applications of which were all filed June 2004 on the basis of intent to use):

• laser video discs, digital video discs, digital versatile discs and CD-ROM discs, all featuring sports events and mixed martial arts (link here) – claimed date of first use November 2005;
• tee-shirts; team uniform reproductions, namely jerseys featuring reproductions of professional athletic team logos; hats; caps; and for entertainment in the nature of an on-going television program in the field of sports and mixed martial arts (link here) – claimed date of first use January 2005; and
• tank tops; shorts, headwear; workout and sports apparel, namely shorts and shirts (link here) – claimed date of first use January 2005.

According to the complaint, Zuffa (and its predecessors-in-interest) began using THE ULTIMATE FIGHTER in 2003 in connection with a reality show named “The Ultimate Fighter” - although the complaint later acknowledges that the show has been broadcast on the Spike television network since as early as 2005. There is also a vague mention of some common law rights resulting from use of the name in connection with a Las Vegas gym where the reality show was filmed.

Of course, the date when the mark became distinctive is relevant because it is only cybersquatting if the domain name was confusingly similar to a mark that was distinctive on the date of registration. The domain name in dispute was purportedly registered by Anton Resnick with the registrar eNom on January 22, 2004 (long before Zuffa’s aforementioned trademark applications). The domain name http://www.theultimatefighter.com/ currently is redirected to a Yahoo page dedicated to mixed martial arts.

Zuffa argues that Resnick’s registration of the domain name http://www.theultimatefighter.com/ was a bad faith intent to profit from Zuffa’s trademark rights in THE ULTIMATE FIGHTER (i.e., cybersquatting). It is puzzling, however, why Zuffa waited over six years to go after Resnick for this so-called bad faith cybersquatting for a domain name registered six months before Zuffa had even filed the aforementioned intent-to-use trademark applications. Also interesting is that Zuffa owns the domain name http://www.ultimatefighter.com/, but WHOIS records suggest it was created only recently in January 2010. [DotWeekly ran an article in late March about the domain name acquisition by Zuffa from Marchex -- a company known for buying and selling domain names].

As for why Zuffa chose to bring this in rem action in a jurisdiction where neither the domain name registrant, the domain name registrar, or the domain name registry is located, the following is the jurisdictional statement:

This Court has in rem jurisdiction over pursuant to 15 U.S.C. § 1125(d) and 28 U.S.C. § 1655 and interpretive case law. Upon information and belief, this Court cannot exercise personal jurisdiction over the registrant of, as the registrant is located outside of the State of Nevada and/or website is not interactive. As a separate and independent basis for in rem jurisdiction, upon service of this Complaint upon the registrar of , the registrar will deposit domain name into the registry of the Court. In addition, the situs of domain name is, or will be, in this judicial district where the owner of the trademark contained in domain name is located.

Of course, see my previous blog post here regarding another in rem cybersquatting lawsuit filed in the District of Nevada (by the same law firm) citing the same jurisdictional argument as a basis for in rem jurisdiction. In that particular case, the plaintiff brought a Motion for Temporary Restraining Order, which was not only denied by the court, but which prompted the court sua sponte to dismiss the entire in rem action outright the very next day due to lack of jurisdiction under 15 U.S.C. § 1125(d)(2)(A). A copy of the court’s order in that case, which details the relevant "interpretive case law" quite nicely, can be found here.

Nonetheless, by searching the domain names at issue in that case, it appears that just filing the complaint was enough to get the domains at issue transferred. And more than likely, that is the strategy being pursued here by Zuffa.

"South Butt" Parody Lawsuit Comes To A Quiet End

Pittsburgh Trademark Lawyer provides closure on the North Face v. South Butt trademark “parody” dispute (previously blogged here and here). And it looks like “Little Jimmy Winkelman” got the last laugh – with North Face apparently allowing him to continue selling his “South Butt” merchandise (which was made all the more valuable in large part due to the lawsuit filed by North Face).

Court Decision Upholds Jus Tertii Defense in BASMA Trademark Lawsuit

United Food Imports, Inc. (“United Food”), a wholesale distributor of packaged food products imported from Egypt, sued several food distributors alleging trademark infringement for the unauthorized use of the mark BASMA in connection with products being sold to members of the Middle Eastern community residing in the United States. See United Food Imports, Inc. v. Baroody Imports, Inc. et al, Case No. 09-cv-02835 (D. N.J.).

As part of the Defendants’ counterclaims against United Food, Defendants claimed that a company named Orouba Agrifoods Processing Co. (“Orouba”), which produced the allegedly infringing goods distributed by the Defendants, is the rightful owner of the BASMA mark which United Food is claiming as its trademark. United Food filed a motion to dismiss Defendants’ counterclaims arguing that Defendants’ counterclaims improperly asserted a jus tertii defense (i.e., a claim asserting that a third party has rights in a trademark superior to the party claiming trademark rights).

Defendants allegations incorporated the factual allegations that Orouba set forth in its own petition to cancel United Food’s U.S. trademark registration of the BASMA mark. See Orouba Agrifoods Processing Company v. United Food, Cancellation No. 92050739 (T.T.A.B. Filed March 23, 2009). In short, Orouba claimed that it began using the BASMA mark in the United States in late 1999 (although its own application for the BASMA mark currently reflects date of first use anywhere as December 31, 1999 and use in commerce as February 17, 2003) and owns several foreign registrations of such mark (in Egypt, Turkey, United Arab Emirates, and Germany). In 1998, Orouba entered into an agreement to supply United Food with goods for resale in the United States. In 2004, United Food filed a trademark registration application with the United States Patent and Trademark Office (“PTO”) to register the BASMA mark in connection with various frozen fruits and vegetables (claiming use since January 1, 1998). Orouba terminated its agreement with United Food in September 2005. Orouba attempted to oppose United Food’s application (see Orouba Agrifoods Processing Company v. United Food, Opposition No. 91172895 (T.T.A.B. Filed September 15, 2006), but the opposition was dismissed with prejudice by the Board on February 12, 2008, after Orouba failed to file a brief on the merits in the case. The mark was then registered by the PTO on March 18, 2008. On March 23, 2009, Orouba filed the aforementioned cancellation petition, which was suspended in July 2009 pending the outcome of a separate lawsuit by United Food alleging trademark infringement against Orouba. See United Food Imports, Inc. v. Orouba Agrifoods Processing Co., Case No. 09-cv-04484 (S.D.N.Y.).

Defendants’ counterclaims in the instant case sought a judgment declaring that Orouba is the rightful owner of the BASMA trademark, cancellation of United Food’s registration, and damages arising from United Food’s fraudulent registration (pursuant to 15 U.S.C. § 1120).

While the court granted United Food’s motion to dismiss the counterclaims on the grounds that Defendants do not have standing to bring claims that affirmatively assert Orouba’s rights, the court chose not to prevent Defendants from asserting its arguments as an affirmative defense since the Defendants were in privity with Orouba. See United Food Imports, Inc. v. Baroody Imports, Inc. et al, 2010 U.S. Dist. LEXIS 33585 (D. N.J. April 6, 2010) (unpublished).

The court noted that Defendants’ counterclaims were essentially claims against United Food on behalf of Orouba. As such, the court dismissed such counterclaims outright for lack of third party standing on the part of the Defendants to bring these claims on behalf of Orouba. Moreover, the rare exceptions where third party standing is acceptable (i.e., where the third party is unable to assert their rights and there is an identity of interests between the third party and the party bringing claims) did not apply in light of the ongoing litigation between United Food and Orouba in which Orouba could assert such claims against United Food.

Defendants then argued in the alternative that their arguments should be allowed as an affirmative defense instead of a counterclaim. United Food argued that Defendants should not be allowed to assert any arguments regarding Orouba’s rights on the basis that it would constitute an improper jus tertii defense:

“Jus tertii in the trademark context arises when defendant alleges that plaintiff has no ‘title’ because plaintiff itself is an infringer of a third party with rights allegedly superior to plaintiff.” McCarthy, § 31:157. Thus, “[d]efendant in effect argues that, ‘Somebody has a right to sue me, but it’s not you.” McCarthy, § 31:158.

The court decided in favor of allowing Defendants to assert Orouba’s rights as a jus tertii defense given the contractual relationship that allegedly existed between Defendants and Orouba in that Orouba supplied the Defendants with the allegedly infringing goods. This contractual relationship placed the Defendants in privity with Orouba such that Defendants could claim some entitlement to the priority rights of Orouba with respect to the BASMA mark.

Accordingly, while the court dismissed Defendants’ counterclaims, because the court could infer from the allegations that Orouba and Defendants were in privity with one another, the court decided not to preclude the Defendants at this pleading stage of the case from presenting their arguments as an affirmative defense to the suit.

District Court finds that Casino De Monte Carlo owner has no enforceable trademark rights to CASINO DE MONACO

The Casino de Monte Carlo in Monaco

A New York District Court has determined that the owner of the Casino De Monte Carlo does not have enforceable trademark rights in the mark CASINO DE MONACO and has granted summary judgment in favor of a UK company that had been sued for trademark infringement and cybersquatting over its use of the name GRAND MONACO CASINO in connection with an online casino. See In re. Casino de Monaco Trademark Litigation, 2010 U.S. Dist. LEXIS 33950 (S.D.N.Y. March 31, 2010).

Societe des Bains de Mer et du Cercle des Etrangers a Monaco’s (“SBM”) is the operator of all casino properties in the Principality of Monaco, most notably the Casino De Monte Carlo. Playshare PLC (“Playshare”) is a UK company that acquired an online casino that has used or is using various online designations including GRAND MONACO, GRAND MONACO CASINO, GRAND MONDIAL and GRAND MONDIAL CASINO and related domain names.

SBM holds a U.S. trademark registration for the mark CASINO DE MONACO for “providing casino services within a hotel resort environment” which issued on December 20, 2005, under Section 44(e) of the Lanham Act based on SBM’s registration of the mark in Monaco but also with a claim of acquired distinctiveness based on Section 2(f) of the Lanham Act. SBM also has a second application pending for CASINO DE MONACO for “casino services” but that application (filed in the midst of the dispute at issue) has been opposed by Playshare. See Societe Anonyme Des Bains De Mer Et Du Cercle Des Etrangers v. PlayShare PLC, Opposition No. 91188636 (T.T.A.B. Filed Jan. 30, 2009).

On March 21, 2007, SBM filed a Uniform Domain Name Dispute Resolution Policy (“UDRP”) complaint with the World Intellectual Property Organization (“WIPO”) against the approximately 65 domain names that Playshare acquired as part of the online casino it acquired which included the words “grand” and/or “monaco” with “casino” as part of a URL that led to Playshare’s online casino. In response to SBM’s UDRP complaint, Playshare made a decision to change the name of its online casino to GRAND MONDIAL and even registered the name as a trademark (although the opinion is not clear where the mark was registered and no records appear with the PTO). Despite the name change, SBM continued forward with its claims regarding the “monaco casino” domain names. On May 25, 2007, the WIPO arbitration panel decided in favor of SBM finding Playshare’s domain names confusingly similar to SBM’s trademark and ordered Playshare’s domain names transferred to SBM. See Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Lucan Toh and Max Wright, Case No. D2007-0249 (WIPO May 25, 2007).

On June 6, 2007, SBM sued Playshare alleging that Playshare’s use of the aforementioned names and domain names infringed its trademark rights to the mark CASINO DE MONACO, including even Playshare’s new name GRAND MONDIAL. On June 19, 2007, Playshare filed its own declaratory judgment action against SBM in Arizona district court seeking a declaratory judgment that its use of the domain names did not violate the Anticybersquatting Consumer Protection Act (“ACPA”) and that SBM’s registered mark for CASINO DE MONACO is invalid and unenforceable. The Arizona action was consolidated with the New York action and Playshare’s declaratory judgment causes of actions were treated as counterclaims.

Both sides filed cross motions for summary judgment. The Court denied SBM’s motion and granted Playshare’s motion with respect to SBM’s claims and Playshare’s counterclaims related to CASINO DE MONACO.

The court first addressed the validity of SBM’s CASINO DE MONACO mark. Playshare argued that despite SBM’s registration of CASINO DE MONACO, SBM has no protectable rights under the Lanham Act in its mark since it does not provide any goods or services using the mark in the U.S. SBM does not operate an on-line gaming business, does not operate any casinos in the U.S and has no casino by the name of Casino de Monaco

Nonetheless, SBM argued that it did use the mark as a service mark in the U.S. in connection with an established business or trade.SBM focused on its New York subsidiary that engages in “sales offerings” to U.S. residents of casino services at SBM’s casinos in Monaco. SBM also contended that the name CASINO DE MONACO is an umbrella term for all its Monaco-based casinos, that the mark is used on SBM’s website and verbally when promoting its casino and casino-related services, and that CASINO DE MONACO is a nickname for the Casino de Monte-Carlo, and many people, including Americans, use the name CASINO DE MONACO to refer to the Casino de Monte-Carlo “which embodies tremendous goodwill, glamour, elegance and style in the gaming industry.”

In the end, however, the court rejected SBM’s arguments and concluded that SBM’s activities in the United States relating to SBM’s mark CASINO DE MONACO did not constitute “services” within the meaning of the Lanham Act (services that are not “solely for the benefit of the performer” but rather services “rendered to others”). The court also rejected SBM’s attempt to conflate its CASINO DE MONACO mark with its more established CASINO DE MONTE-CARLO service mark. CASINO DE MONACO is not an actual casino unlike Casino de Monte-Carlo. The court also noted that “any secondary meaning that the mark CASINO DE MONACO can acquire vis-a-vis the use of the mark CASINO DE MONTE-CARLO is limited by the fact that SBM is in an on-going dispute with U.S.-based Victoria Partners over the Monte-Carlo designation when used with the casino business. Without some resolution, the mark CASINO DE MONTE-CARLO can be reasonably construed as not “identifying a single source of origin.” (italics in original). [For prior blog posts on this ongoing dispute, click here and here].

The court noted that SBM’s Section 44(e) based registration only required it to affirm that it had a bona fide intent to use its foreign registered mark. The court went on the state:

However, regardless of SBM’s intent, which is disputed, SBM has not used the mark in any meaningful way anywhere. And SBM has not shown that it has used the mark in the United States at all. SBM argues that its “U.S. based direct sales activities represent ‘material aspects’ of SBM’s casino business...and thus are properly considered ‘services...rendered in commerce.” for SBM’s mark CASINO DE MONACO. However, the record is devoid of evidence that would create a genuine issue of material fact that SBM uses the mark CASINO DE MONACO to identify its services, anywhere, but particularly in the United States. First, there does not exist in Monaco, or anywhere else, a casino identified by the name Casino de Monaco. Nevertheless, SBM asserts that the mark CASINO DE MONACO is: (1) used as a nickname or moniker for Casino de Monte-Carlo; (2) employed on casino website(s); and (3) an umbrella term/brand to refer to SBM’s five casinos in Monaco. However, all that SBM can show to support these representations are self-serving affidavits. Even if this claimed use of the mark CASINO DE MONACO was not insignificant on this record, which it is, all of its use of the mark occurs outside of the United States. There is no real evidence that the claimed nickname/moniker/umbrella term that signifies CASINO DE MONACO has ever existed in the United States.

(internal citations omitted) (emphasis in original).

Furthermore, regarding the one example that SBM could show of use in the United States of the mark CASINO DE MONACO on SBM’s own website, it turns out that such webpages were created on or after April 14, 2008 (almost a year after the lawsuit was filed) and SBM did not show any evidence that anyone in the U.S. ever viewed the pages. The court added that “[i]t does not bolster SMB’s [sic] position that all activity SBM engages in the United States amounts to nothing more than advertising and promotion of SBM’s operations outside the U.S., i.e., in Monaco. What is clear is that there is no evidence on the record that this limited activity ever implicated the mark CASINO DE MONACO.” (emphasis in original).

The court decided that SBM’s “utter lack of use of the mark CASINO DE MONACO anywhere, let alone in the United States,” required it to refuse to enforce any purported trademarks rights by SBM in the mark. Accordingly, the court did not have to engage in any likelihood of confusion analysis. The court did find enough limited activity to protect SBM’s purported right to the unregistered mark CASINO DE MONTE-CARLO because SBM actually utilizes that mark in the United States – but since SBM’s complaint did not allege any infringement of this mark, such rights were irrelevant for purposes of deciding the motions.

Based on its determination that SBM held no enforceable trademark rights to the mark CASINO DE MONACO, the court granted summary judgment on Playshare’s declaratory judgment causes of actions direct to SBM’s CASINO DE MONACO mark. The court found SBM’s trademark registration for CASINO DE MONACO invalid and unenforceable and ordered it to be canceled. The court further granted Playshare’s Motion for Summary Judgment on all of SBM’s federal claims based on the CASINO DE MONACO mark (and choosing to dismiss all state claims by declining to exercise supplemental jurisdiction). Moreover, the court declared that Playshare’s use of the designations GRAND MONACO, GRAND MONACO CASINO, GRAND MONDIAL CASINO and GRAND MONDIAL does not infringe on SBM’s (now cancelled) mark CASINO DE MONACO. Finally, because SBM’s entire basis for its cybersquatting claim was based on rights to the mark CASINO DE MONACO and since the mark was found invalid and unenforceable, then, as a matter of law, Playshare cannot be in violation of the ACPA with respect to its domain names. The court vacated the WIPO decision and ordered the domain names to remain with Playshare.