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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, Senior Director and Policy Counsel at Verisign

He also serves as Of Counsel to the IP-centric law firm of Greenberg & Lieberman. Views expressed in this article are solely his own.

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I find it frustrating that the courts put up with this Edward Falk  –  Apr 11, 2009 4:27 PM

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 R. Meyer  –  Apr 11, 2009 11:45 PM

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).

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