Sometimes the Law Really Is a Ass

ArsTechnica tells us: The World Intellectual Property Organization has the thankless job of overseeing Internet domain name disputes, but few can have been as surreal as the just-concluded case brought by U.S. media giant Viacom.

The company sought control of jackass.com from a "serial cyber-squatter" based in the Virgin Islands who was (and is) using the domain to show pay-per-click ads. When hauled before WIPO to explain himself, the owner insisted that it had taken six years to ready the "website about donkeys" that was actually planned for the domain.

WIPO panelist John Swinson recognized a load of donkey manure when he saw it, but still refused to hand the domain over to Viacom, which will have to settle for jackassworld.com instead.

Future Media Architects currently controls jackass.com--and plenty more besides. The company owns more than 100,000 domain names on words like "jackass," most of which apparently show a few pay-per-click ads. The operation is based in the Virgin Islands but run by a Kuwait-based CEO.

Future Media picked up the jackass.com domain back in 2002 and even went to the trouble of registering it as a US trademark (which was granted in September 2005). In 2008, Viacom decided it would really rather move the material about its TV show Jackass from jackassworld.com to jackass.com.

Viacom filed a complaint with the WIPO Arbitration and Mediation Center, which handles such things, charging that Future Media was using the name in bad faith.

In its defense, Future Media explained that the site was originally intended to offer "adult entertainment," though the company's business model then changed and the plan was abandoned. Instead, the domain has offered pay-per-click ads for six years.

Future Media did insist to WIPO that it plans to "operate a website from the disputed domain name that deals with donkeys, their uses and their contributions to society."

According to the WIPO report, "The Respondent contends that the current website at the disputed domain name is only temporary, while the donkey website can be finished." Future Media even went so far as to include a few pages of donkey website mockups in its response to WIPO.

WIPO's John Swinson, the only member of the "panel" that considered this dispute, notes that "the panel did not find this convincing. The Respondent offered no explanation as to why it has taken approximately 4 years to launch the donkey website. The Respondent also made no effort to explain why it suddenly wishes to operate a website promoting donkeys, and what benefit it will receive from pursuing this course of action.

"The Response includes a signed declaration of Thunayan Khalid Al-Ghanim, the founder and Chief Executive Officer of the Respondent. Tellingly, the declaration says nothing about donkeys or the proposed donkey website."

Remember, kids, this is a Serious Piece of International Business.

Despite the obvious problems with the Future Media story, Viacom had to satisfy three conditions to get the domain. Is the disputed domain identical or confusingly similar to a trademark of service in which Viacom has rights? Swinson found that it was. One point for Viacom.

Second, did Future Media have any legitimate interests with respect to the disputed name? Yes--or, more accurately, the answer is that Viacom failed to show that Future Media did not have legitimate interests in the domain name. So, game over. Viacom had to win on all three points, and it failed on point number two.

Finally, was the disputed domain name registered and used in bad faith? Future Media made no attempt to sell the domain to Viacom, so the company was not a traditional cyber squatter. In any event, given the answer to point number two, the answer to this item doesn't matter, and despite the fact that Swinson was not "satisfied by all aspects of the Respondent's case" and doesn't believe that he was "told the whole of the story," he refused to hand the domain over to Viacom.

And, with that, WIPO dismissed one more case of utter jackassery.

Hat tip to Intellectual Property Watch for flagging the ruling.