It seems to me that the native American tribes are very entrepreneurial and more so compared with some other indigenous peoples. One such is the Sioux. One of the activities they get involved in is gaming and the holiday resorts that go with it. But with the economic benefits that this brings, comes a down side, the threat to the intellectual property they use in their businesses. The Sioux recently had a challenge in that regard when a cybersquatter registered two domain names that infringed on the Sioux trademarks that it uses for its Mystic Lake Casino and Resort in Minnesota. Fortunately, the Sioux were successful in winning the case and had the domain names transferred to them. Here’s how it happened.
The Shakopee Mdewakanton Sioux Community Gaming Enterprise[1] have a registered USPTO trademark for MYSTIC and MYSTIC LAKE. Then, along came Alex Green / Daniil Panichev / Pvi comp (or at least that is what they said their names were). They registered two domain names <mysticlake.com> and <mysticlakegaming.biz> and it became pretty clear what they were up to when they used the domain names to set up a website offering the same gaming services as the Sioux and for a mobile application that offered the same competing games as the Sioux.
The registrants (Respondents) clearly knew what they were doing and whom they were aiming at, because the MYSTIC and MYSTIC LAKE trademarks and the casino and resort are very well known. The resort itself has over 700 rooms! Simply having “mysticlake” by itself in one domain name and adding the word “gaming” in the second, made it all too obvious.
The Panel who decided the case[2] had no difficulty in finding that the registrants of the domain names were trading on the goodwill of the resort, setting up a rival business and misleading internet users into thinking that the services offered on the offending website and app were genuine services of the Sioux Complainant. This was clear from the fact that the offerings on the website and the mobile app were the same as those on the official Mystic Lake website.
Above all, the whole exercise was deceitful.
The point about the case was the detailed evidence the law firm acting for the Complainant[3] put before the Panel, a feature of trademark owners’ cases that is sometimes overlooked, but in this case made very clear and persuasive. Screenshots tendered in evidence showed frequent use of the MYSTIC and MYSTIC LAKE trademarks on the offending website and the copying of the Complainant’s services, together with all the accoutrements of a gaming site that you would expect to see, so much so that the use of the domain names was obviously an attempt to show that it was an official and genuine Mystic Lake gaming site and application; this was deceitful and an obvious fraud; it was even helpful enough to include a link to the Mystic Lake resort itself, no doubt to give the whole thing the appearance of legitimacy.
The lesson from this case is the importance of evidence. A Panel will be influenced by evidence more than anything else and it should never be overlooked. Cases are won (or lost) on the evidence (or lack of it) that is presented to the Panel. In this case the evidence was good and the Complainant won.
[1] Wikipedia tells us that The Shakopee Mdewakanton Sioux Community (SMSC; Dakota: Bdemayaṭo Oyate) is a federally recognized, sovereign Indian tribe of Mdewakanton Dakota people.
[2] The arbitrator in this case was The Hon Neil Brown KC.
[3] Faegre Drinker Biddle & Reath LLP
Kommentare