BEAVERTON, Ore., Jan. 4, 2012 — Early in December 2011, MGM Resorts filed suit in Las Vegas federal court against four individuals and two companies for having domain names for their online gaming that sound like they are part of the MGM Grand and Excalibur Vegas hotels group. These include mgmpoker.com and excaliburpoker.com. Should the defendants hold ‘em — betting they will win in a battle with deep-pockets MGM — or fold ‘em — betting they will lose and waste good money trying?
“I’ll bet they lose,” says attorney Phil Marcus, an expert in trademark and copyright law. Trademarks and the related federal anti-cyber-squatting law are intended to prevent customer confusion, and protect their value to the trademark owner. In cyber-squatting cases the major question is whether the name being “squatted on” is “distinctive.” One of the defendants claimed “Excalibur” is not distinctive, because thousands of businesses use the name Excalibur. This fellow is likely to lose, for several reasons.
Generally the word “Excalibur” in no way describes hotels or casinos. It is a fanciful name drawn from another world (of King Arthur) to capture the imagination of whoever comes in contact with it. Fanciful trademarks are almost always ruled distinctive — and therefore valid — while descriptives are not.
In this case the name is unique for a casino or a hotel — only the MGM “Excalibur” in Las Vegas has this name. No wonder. MGM’s subsidiary obtained a trademark registration in August 2007, largely preventing anyone else from naming a hotel or casino Excalibur. If someone else tried, MGM would claim, probably successfully, that although the hotel is in Vegas, it draws from all over the US. So an Excalibur in, say, Florida, would still be confusing to potential customers.
“When you seek trademark registration others can object. It’s like the question at a wedding about anyone objecting to the wedding. If there is no objection (or the objection fails) then the law says it is presumed a valid registration. In fact five years after registration one must prove fraud to invalidate it, and almost five years have passed since MGM registered for the Excalibur,” says Marcus.
A judge has made a temporary ruling (until a full trial). He ordered the questioned domain names be disabled. (The technical details of how to do that are for computer geeks, but it is do-able.) He had first to decide that the defendants are likely to lose at trial, and that without the order the plaintiffs might suffer harm that cannot be remedied with money damages.
Marcus concludes: “These six defendants should fold ‘em — find new names for their websites and move on. Pick a domain name not just made from some other guy’s registered trade name. And do not tweak someone with much deeper pockets than you have.”
Mr. Marcus is founder of The Copyright and Trademark Law Center. Having practiced law since the early 1970s, he specializes in intellectual property law such as trademarks. The Center is on the web at http://www.YourIPAttorney.com.
The Copyright and Trademark Law Center
http://www.YourIPAttorney.com
The Bower
Beaverton, OR 97006-3337
Further info: Phil Marcus, 410-292-6989,
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