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.