Legal News

According to an article published in this morning’s Boston Globe, Systemax will purchase Circuit City, its trademarks and domain names for $14 million, in a deal approved by the court overseeing the Circuit City bankruptcy. I presume this means that Systemax, a computer and electronics sales company, will begin to operate and re-open the Circuit City website.

Last year, this same company purchased the rights to CompUSA’s trademarks, some stores, and its domain names. Presently, CompUSA has a large web presence, including some consumer electronics not associated with computers (televisions, GPS…etc).

According to a news release today, prestigious law firm Winston & Strawn prevailed in a lawsuit on behalf of NBA basketball player Chris Bosh, who not only won the domain name ChrisBosh.com, but he also won a financial judgment of $120,000 (including legal fees and damages). The $120,000 judgment does not include the attorney’s fees that the domain owner needed to pay for his own representation, of course.

The court ruled that the plaintiff had used Bosh’s name to generate revenues for the domain owner, without the player’s consent or approval. The release also noted that the defendant also owns something like 800 other domain names of athletes and other famous professionals, some of whom may see this judgment and look to file suit to claim their domain name back as well as any potential damages.

This should serve as a warning to people who register the domain names of famous athletes, politicians, and celebrities. There certainly are legitimate uses for these types of domain names, but there are also ways that owners can put these domain names at risk, and also put their business at risk. When you buy or own a domain name like this, you should consider the risk vs. reward of ownership, and see this case as an example of a major risk.

I frequently see people discussing this issue in domain forums, and now you have an answer.

Late last year, Viacom, the parent company of MTV, filed a UDRP for the domain name Jackass.com, one of thousands of generic domain names owned by Future Media Architects. Since FMA doesn’t sell their domain assets, the UDRP would seem to be the only “cost effective” way to acquire the domain name. In a fairly lengthy decision dated January 30, 2009, the single panelist ruled in favor of Future Media Architects.

One of the most convincing factors that led to FMA’s prevailing in this decision was that they held a US trademark for “JACKASS” in relation to computer services.   The trademark was registered by the USPTO in September 2005 after a full standard review of the trademark application.   Although FMA planned to use Jackass.com for adult services, they changed their business model in favor of a search engine.

According to the sole panelist in this decision, the trademark tipped the scales in FMA’s favor:

“Thus, here the evidence suggests that the domain name was acquired by the Respondent because of its descriptive value, but has been used on a pay-per-click website in a way that is not clearly related to that descriptive value but also not clearly related to the Complainant’s trademark. In some circumstances, these facts may not be sufficient for the Respondent to show that use of the disputed domain name is bona fide. Here, the Respondent has an additional factor in its favour a United States trademark registration covering search engines. In these particular circumstances, the Respondent could be said to be providing, or at least to have taken some demonstrable steps towards providing, a search engine under the Jackass brand. That, in this Panel’s view, is enough to tip the finely balanced scales in the Respondent’s favour on the provided record in this particular case.”

It’s unfortunate that FMA needed to hold a trademark in order to keep their generic domain name, but a win is a win.   If Thunayan Khalid AL-Ghanim chooses to forego the search engine route and needs some material for his site, I know where he can find it.