Legal News

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.

According to a report on Fox 17 in Nashville, the Kentucky Court of Appeals. has blocked the state’s attempt to seize gambling domains. The decision can be read online.

Essentially, the appeals court ruled that domain names are not “gambling devices,” and as a result, the initial ruling could not hold since the law pertains to “gambling devices.” The ruling did not address other issues involving the domain seizure, so the law could potentially be revised to include domain names, and perhaps they could be at risk again in the future in Kentucky.   I suppose it really depends on how much time and effort the Kentucky Legislative and Judicial branches wish to devote to this.

Mike Berkens, who has provided extensive commentary on the Kentucky domain seizure, has provides additional feedback on the ruling today.

Meg Whitman filed a UDRP for several domain names, including megwhitmanforgovernor.com, megwhitman2010.com, meg2010.com, whitmanforgovernor.com, and whitman2010.com. The respondent did not file a response in this case, yet the panel ruled in favor of the respondent and denied Whitman’s complaint.

Whitman and her attorneys argued that Whitman has established common law rights to her name due to her many professional activities and success. She built eBay into a huge company, currently sits on its board of directors, and she speaks internationally.   They also argued that the domain names were registered right around the time there was speculation about her running for governor.

In denying the complaint, the panelist stated several things that, in my opinion, seem a bit inconsistent with what I perceived as the rule regarding owning names related to a famous/well-known person.   Previously I thought that it wasn’t permissible to make money on a domain name that is or contains the name of a famous person, when the revenue being generated is due to that person’s fame or notoriety.   IMO, anyone who would navigate to those sites is looking for the Meg Whitman.   Anyway, it’s interesting to note.

Some of the interesting notes from the panelist include:

“Merely having a “famous” name is not sufficient to establish common law trademark or service mark rights in the name. “

“fame alone is not sufficient to establish common law trademark or service mark rights in a personal name. Rather, the Complainant’s personal name must be used such that a relevant segment of the public comes to recognize her name as a symbol that distinguishes her services from those of similarly situated service providers. “

“Unlike the complainants in Monty and Pat Roberts, Inc., and Steven Rattner, supra, the Complainant here has presented no evidence of the actual use of her name as a source indicator in connection with the services she is claiming.”

I suppose if they claimed that the PPC links that were on the sites were related to Meg Whitman or eBay, they might have been better off.   I guess we won’t know unless she files a federal lawsuit.