Viacom fails to obtain transfer of 'jackass.com'

International
In Viacom International Inc v Future Media Architects Inc (Case D2008-1833, January 30 2009), a World Intellectual Property Organization panel has refused to order the transfer of the domain name 'jackass.com' to Viacom International Inc.
 
The name Jackass is often related to a US television series featuring people performing crude, ridiculous and self-injuring stunts and pranks. Two films have been produced by Paramount Pictures, continuing the franchise after its run on television. Viacom was the producer of the series and the owner of various trademarks in the term 'jackass' for entertainment services, among other things. Viacom registered the domain name 'jackassworld.com', but 'jackass.com' was already registered to a third party. Viacom filed a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP).
 
The domain name 'jackass.com' was registered in 1999 and transferred to Future Media Architects Inc thereafter. Future Media had a portfolio of more than 100,000 domain names. In 2003 Future Media (or a related entity) registered a US trademark in the term 'jackass' for adult entertainment. This registration was subsequently abandoned. In January 2004 Future Media filed an application for the registration of the trademark JACKASS for computer services, including search engines. 
 
At the time of the dispute, the domain name resolved to a website featuring sponsored links related to finance, travel, loans and insurance. There were also a number of deep links to Viacom's official website. 
 
To obtain the transfer of a domain name under the UDRP, a complainant must prove that:
  • the domain name at issue is identical or confusingly similar to a trademark or service mark in which the complainant had rights;
  • the respondent had no rights or legitimate interests in the domain name; and
  • the domain name was registered and is being used in bad faith. 
As far as the first element was concerned, Viacom relied on its JACKASS trademarks. The respondent submitted that the word 'jackass' was a synonym for a male donkey or a colloquial expression meaning 'idiot'. Future Media argued that Viacom could not claim a monopoly in a generic term such as 'jackass'. Furthermore, Future Media submitted that the parking website to which the domain name resolved could not cause any confusion with Viacom or its business. 
 
The panel concurred with Future Media that no one could monopolize the word 'jackass'. However, this did not mean that Viacom did not have legitimate trademark rights in the word 'jackass' for the purposes of the first element of the UDRP. The panel pointed out that the content of a website was irrelevant for purposes of assessing confusing similarity under the first element of the UDRP. The panel was satisfied that Viacom had trademark rights in the word 'jackass' and that the domain name was identical to that trademark.
 
In respect of the second element, Future Media stated that it first intended to use the disputed domain name for an adult entertainment website. Due to a change in business plans, that idea was abandoned. Future Media indicated that it intended to use the disputed domain name for a website about donkeys. In support of this allegation, it submitted a number of draft web pages for a future website. According to Future Media, the current advertising website at the disputed domain name was only temporary.
 
The panel noted that Future Media owned a trademark in the term 'jackass'. However, this fact was not conclusive evidence to establish rights or legitimate interests in the domain name on the part of Future Media for the purpose of the second element of the UDRP. The panel did not find Future Media's statement that it intended to develop a website on donkeys convincing. Firstly, Future Media offered no explanation as to why it had taken four years to launch the donkey website. Secondly, Future Media had not explained its motives for operating such a website and the benefits that it expected to receive as a result thereof.
 
Furthermore, the panel noted that there were some gaps in the file before it, notably as to the date on which Future Media had acquired the domain name. While Viacom had asserted that this was "on or about November 18 2002", Future Media had made no effort to fill in the blanks. Based on the substantial evidence provided demonstrating the success of the Jackass series, the panel inferred that Future Media was likely to have been aware of Viacom's television show when it acquired the domain name.  
 
However, the panel was of the opinion that the domain name was acquired by Future Media because of its descriptive value. The panel observed that the current use of the domain name for an advertising website was not clearly related to its descriptive value, but also not clearly related to Viacom's trademark. In line with precedents under the UDRP, these facts alone did not sufficiently demonstrate a good-faith use of the domain name by Future Media. However, in this case there was an additional factor - namely, Future Media's JACKASS trademark for search engines. In the view of the panel, Future Media could be said to be providing, or at least to have taken some demonstrable steps towards providing, a search engine under its JACKASS mark. This fact was enough to tip the scales in Future Media's favour on the record provided in this particular case. The panel thus found that Future Media had rights or legitimate interests in the domain name. Therefore, Viacom had not established the second element of the UDRP.
 
In view of this, the panel did not address the third element of the UDRP. Nevertheless, there was some interaction between bad faith (Paragraph 4(a)(iii) of the UDRP) and good-faith use (Paragraph 4(c)(i)), and the panel briefly discussed the arguments advanced by the parties under the third element. In summary, the panel found that there was insufficient evidence on the record to conclude that Future Media was a "serial cybersquatter". In the view of the panel, Viacom had not shown "a pattern of such conduct" within the meaning of Paragraph 4(b)(ii). Finally, there was no evidence that Future Media had attempted to sell, rent or transfer the disputed domain name to any person. Although the panel indicated that it was not necessarily satisfied by all facets of Future Media's case, the onus of proof was on Viacom.
 
The complaint was thus denied.
 
David Taylor, Lovells LLP, Paris
 

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