MTV wants Jackass.com. It better prepare for an uphill battle.
MTV’s parent company Viacom (NYSE: VIA.b) filed for arbitration to get the domain name Jackass.com, a case that commenced at WIPO on December 5. There are two problems for Viacom: it’s a generic term and it’s owned by Future Media Architects.
Jackass started as a TV show on MTV featuring people doing stunts and pranks. After running on MTV from 2000-2002 two Jackass movies were released.
It’s no wonder MTV would like to get the domain name. The official site for Jackass is JackassWorld.com, which is a far cry from Jackass.com. But if Viacom hopes it can just pay $1,500 to filed a UDRP and get the domain, it should have researched the owner first.
Future Media Architects (FMA) is famous for saying it never sells domains. As far as I can tell, that’s the truth. It owns some of the best domains in the world, including a number of two and three letter domain names. FMA recently beat Equifax (NYSE: EFX), which tried to grab the domain efx.com through arbitration.
But that doesn’t mean arbitrators always get it right, which is what Viacom is hoping for. FMA recently lost a case for LH.com to airline Lufthansa. But you’ll notice Lufthansa doesn’t own LH.com yet. That’s because FMA filed a lawsuit to block the transfer.
You can bet that if the arbitrator decides for some reason that Viacom should get Jackass.com, FMA will file a lawsuit. But I’d place higher odds on the arbitrator finding reverse domain name hijacking. A look back at the parked page on Jackass.com doesn’t show links related to the TV show or movie. Unless I’m missing something, this case should be easy for WIPO.
jblack says
Lets just hope FMA uses FAR more competent legal assistance than they used for lh.com.
M. Menius says
The only legitimate outcome is for FMA to prevail against Viacom. And when FMA win, I hope the decision receives lots of media attention. And a signal will be sent.
Tim Davids says
jackass show started in 2000 and they just now go after it almost 9 years later…should be an easy case to win.
Rob Sequin says
MTV probably realizes that just about all of their demographic is now online and that they could easily monetize the brand AND upsell their visitors.
Maybe MTV tried to buy the domain, FMA said no so MTV figures this is worth a shot and using the WIPO as leverage?
But, what happens when MTV looses? Yikes.
Andrew says
@ Rob – Exactly. FMA says no, so it figured it had nothing to lose by filing the complaint. If it loses it’s out the small filing fee and a few hours of legal expenses.
What Viacom didn’t consider is the cost of defending a lawsuit if it loses. It assumed the issue would be laid to rest…which it won’t be.
jorge says
A question about reverse name hijacking:
When an arbitrator rules that it is a case of Reverse Name Hijacking, can that information be used in future UDRP cases? In other words, is MTV risking its reputation on an unwinnable case, and making future cases harder to win?
John Bomhardt says
@Jorge – I was just going to ask that question too 🙂
John
http://unplain.com
Andrew says
@ Jorge, John – technically a lawyer could mention it in a UDRP response. It’s up to the arbitrators to decide if it should use it.
Spike says
I know there have been Reverse Name Hijacking findings before by panels. But has anyone successfully sued and been awarded damages based on such a finding? A good topic for an upcoming blog entry perhaps?
jblack says
I do not think the UDRP allows for such relief.
Stephen Douglas says
From personal experience, a TV production I was producing 15 years ago had built a three year TM usage, and a competitor stole it, and used it to do exactly the same thing my company was doing (modeling events, similar to Victoria Secret shows). We found out about it, but we waited six months to file against them because we mistakenly thought it would be a better strategy to have the TM stealer get their show set up, so they would be at a disadvantage in the arbitration.
Unfortunately, the judge saw it differently, and allowed our competitor to completely STEAL our name and continue on with their show. Her “legal” reason? We waited too long to protect our show’s name in a TM dispute.
I can’t tell you how weird it was to see another company promoting a show with the exact name as the shows we were producing. They even enticed a past winner of ourshow who had given up her position, to “pose” as their previous year’s winner…. lol… although she had won 2 years prior.
Man, I really found out how FCKED UP the legal system was, even with $100K spent on legal fees to top notch Hollywood attorneys.
Good luck, MTV.
RegFeeNames.com says
I think FMA rejected bids for the domain which they are entitled to do!
They own thousands of excellent domains have plans for all of them!
So Im glad they have stuck to there guns and havent sold this names.
Shame Viacom are be stupid and trying to take something which they have NO RIGHT too!
Lets hope FMA fight this all the way!
Regards,
Robbie
idn says
Interested how end a story about FMA’s lh.com
Erik Zilinek says
Even more interesting? In 2005, FMA registered its own JACKASS trademark at the USPTO: http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=78348436
Andrew says
Erik, nice find! It’s class of services is basically for parked pages:
Computer services, namely providing search engines for obtaining data on a global computer network; Creating indexes of information, sites and other resources available on computer networks
woot says
Sorry, bad link.
There:
http://www.wipo.int/amc/en/domains/decisions/html/2008/d2008-1833.html
Andrew Allemann says
@ Woot – thanks, just published a follow up article.