Monday, December 22, 2008

Viacom Files UDRP Action to Obtain has a blog post today entitled “The Battle of” (link here) about Viacom’s attempts to obtain (or some would say “hijack”) the domain name from a well-known domainer company. Domainnamewire had a similar story earlier in the month.

The show “Jackass” – showcasing the “don’t-try-this-at-home” stunts of Johnny Knoxville and Steve-O, was broadcast on MTV from 2000 to 2002, and was followed by two theatrical films released in 2002 and 2006. MTV has been using the domain name to advertise and promote the shows and films; however, Viacom – MTV’s parent company – decided that it would much rather have the easier to remember URL, and so decided to file a UDRP arbitration action on December 5th with the World Intellectual Property Organization in an attempt to get the domain name transferred to Viacom.

The only thing standing in Viacom’s way; however, is a significant foe in the domain name world – one with a great deal of resources and willingness to fight a case that will surely be characterized as “reverse domain name hijacking” by Viacom.

The owner of the domain name is Future Media Architects, Inc. (“FMA”), a British Island company owned by a man named Thunayan Khalid Al-Ghanim. FMA reportedly owns thousands of domain names – none of which are apparently for sale (because after all, offering a domain name for sale can be used as evidence of bad faith registration).

FMA has had its share of domain name disputes. One particular case that has captured the interest of the domain name world involves Lufthansa Airlines. On April 17, 2008, FMA lost a UDRP action brought by Lufthansa over the two-letter domain name See Deutsche Lufthansa AG v. Future Media Architects, Inc., Claim Number: FA0802001153492 (decision here).

But the loss did not phase FMA which had already filed its own civil action in federal court seeking declaratory relief to stop any transfer of the domain name to Lufthansa pursuant to 15 U.S.C. § 1114(2)(D)(v) (the “reverse domain name hijacking” provisions of the ACPA) which provide a party with a right to relief against an "overreaching trademark owner" when party’s registration or use of a domain name is not unlawful under the Lanham Act. See Future Media Architects, Inc. v. Deutsche Lufthansa AG, Case No. 08-cv-02801 (S.D.N.Y. Filed March 17, 2008). A copy of the First Amended Complaint can be found here.

As for, the case at first would appear to be clear cut – after all, the domain name registration was first created back in October 1997 – several years before MTV’s “Jackass” was even used as a mark, much less became distinctive. How could FMA have registered the domain name in “bad faith” when Viacom itself did not even have even rights in the name at the time?

However, what’s not clear is if FMA was indeed the party that first created the domain name in 1997 or did it acquire the domain at some later date after 2000 – and thus, the date of registration by FMA could be deemed to be subsequent to the date when Viacom’s Jackass mark did become distinctive.

One interesting nuance to this case is that FMA filed for and received its own federal trademark registration for the mark JACKASS on September 6, 2005 for “Computer services, namely providing search engines for obtaining data on a global computer network.”

Such registration, while doing very little to help FMA argue that it did not have any “bad faith intent” at the time it registered a domain name in 1997, could help fight Viacom's argument that FMA has “no rights or legitimate interests in respect of the disputed domain name” (one of the three factors Viacom must prove in order to obtain an order that the domain name should be transferred).

And should the case end up in federal court like the Lufthansa case, then to the extent that FMA may have acquired the domain name sometime in perhaps 2003 (after all, the trademark registration claims a date of first use of December 15, 2003), the registration could help FMA win in a close battle of the nine ACPA “bad faith” factors because although the registration may have occurred at a time when the mark JACKASS was distinctive, all that FMA needs to show is lack of “bad faith intent” in order to overcome Viacom’s cybersquatting claim.

Then again, if the case goes to federal court, one would expect Viacom to file a counterclaim to cancel the registration on the basis of fraud by challenging whether FMA really ever used the mark JACKASS as a source identifier for such services.

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