WIPO panellist refuses to entertain rum mark dispute

International

In Ron Matusalem & Matusa of Florida Inc v Cuba Ron SA, World Intellectual Property Organization panellist Anna Carabelli has refused to settle a politically sensitive dispute over 11 domain names incorporating the famous MATUSALEM mark for rum. As a result, the domain names remain in the respondent's control, at least for the time being.

According to the complaint, the MATUSALEM mark was first used for rum in 1872 by a family company, Ron Alvarez Camp SA. The family left Cuba for Florida in 1961 after the Cuban Revolution. In 1965 the Cuban government nationalized the company and claimed the MATUSALEM mark for itself. In 1993 Cuba Ron SA was founded and obtained the Cuban trademark rights to the mark. Through its subsidiary, Havana Rum and Liquors SA, Cuba Ron registered the MATUSALEM mark in a number of countries, including Germany, Hungary and Poland. In 1995 the heirs of the Alvarez Camp family assumed control of Florida-based Ron Matusalem and Matusa of Florida Inc, along with four US trademark registrations for the MATUSALEM mark. In 2002 this company brought proceedings under the Uniform Domain Name Dispute Resolution Policy (UDRP) for transfer of the 11 domain names registered by Cuba Ron.

Carabelli denied the case, stating:

"This administrative proceeding is not the place to discuss the principles [of] US and Cuban trademark laws [...] particularly in connection with the scope and legitimacy of nationalization by the Cuban government of company Ron Alvarez Camp SA."

The decision demonstrates that the UDRP is reserved for cases of clear cybersquatting and that complex battles involving trademark ownership should be left to the courts to decide. It remains to be seen whether the battle over the MATUSALEM mark will be brought before the World Trade Organization. For the time being, therefore, the 11 domain names remain in Cuba Ron's control.

James L Bikoff and Patrick L Jones, Silverberg Goldman & Bikoff, Washington DC

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