Mastercard is devaluing its “Priceless” mark.
Last Friday I wrote about how Mastercard lost UDRP cases for pricelessistanbul.com and pricelessamsterdam.com.
It just lost another case (pdf), this one involving pricelesslondon.com, pricelessparis.com, pricelessnewyork.com, pricelesslosangeles.com and pricelessmexico.com.
Why is Mastercard suddenly going after PricelessCity domain names? It appears to be related to its move to associate its “Priceless” trademark with more than just financial services; namely travel services. It also has a campaign around the slogan and city names.
But in this case the registrant of the domains registered them before Mastercard made any move into travel services using the mark. The domains are owned by PlayRage, which was founded by former Oversee.net employee Robert McClinton. McClinton provided a good rationale to the panel about why he registered the domains.
Another interesting tidbit from the case: in trying to prove its rights in the “Priceless” term, Mastercard notes that it owns the domain name Priceless.com, which was registered on November 3, 1997.
It appears (from the panel’s write up) that it omitted the fact that it didn’t acquire the domain name until much later.
Mastercard was represented by Partridge IP Law P.C., whose principal is also a UDRP panelist.
McClinton was represented by domain attorney John Berryhill.
domain guy says
cities cannot be trademark and generic terms can’t be trademark unless you can show a secondary meaning…and you are open to challenges.mc ip attorneys know all this and
are bringing negative attention to mc brand…not a very smart move.
Dave Zan says
Unfortunately, completely wrong. It depends on using them in a distinctive rather than descriptive context.
Suwanee is a city in Georgia, yet also a trademark at USPTO.