Company uses UDRP to go after copyright infringer. Panel doesn’t bite.
Viacom has lost another domain dispute. But this time it wasn’t trying to steal a generic domain name; it was trying to shut down a web site containing copyrighted material.
Viacom filed for arbitration under UDRP for the domain name StansDad.com. Stan and his dad are popular characters in the company’s animated South Park television show.
But there’s no trademark here. Viacom tried to use UDRP to go after a copyright infringer. Here’s what the panel said:
The UDRP was designed to deal with the problem of cybersquatting. This problem arises when a party registers a domain name which consists of or contains the trademark of another, or some form confusingly similar thereto, which would lead a user to believe that if the user were to enter the domain name in a browser, the user would be taken to a web site which was sponsored by or affiliated with the trademark owner. The UDRP was designed to prevent such a registrant from profiting from the Internet users confusion. While Complainant may well have legitimate concerns regarding the conduct of Respondent and the content displayed on Respondent’s web site, the UDRP is not the vehicle to address such concerns. Nothing could be clearer than an examination of the first prong of the three part burden of proof which must be met by a complainant.
The “first prong” is that the domain name is confusingly similar to the complainant’s trademark. But the trademark Viacom asserted was South Park, not Stan’s Dad.
The domain name at issue is clearly not confusingly similar to any trademarks or service marks asserted by Complainant. stansdad.com is not remotely similar to SOUTH PARK. An Internet user who enters “www.stansdad.comâ€ in his / her browser may have a myriad of destinations in his or her mind that are totally unrelated to Complainant’s television show. The domain name at issue does not incorporate Complainant’s mark or a semblance of Complainant’s SOUTH PARK mark. The Panel does not exclude the possibility of Complainant perhaps being able to succeed in some future proceeding if it was for example able to show rights in a mark such as STAN’S DAD. It has not done so here.
Complainant’s principle concerns are not it seems with the particular domain name, but are with what is occurring on Respondent’s web site. While the Panel acknowledges that Complainant’s concerns may be legitimate and perhaps entitled to legal redress, the UDRP is not the vehicle to provide such redress. The issues of possible copyright infringement and other possible concerns are far beyond that which the simple procedure established in the UDRP was designed to redress.
How can they say this:
“The domain name at issue does not incorporate Complainant’s mark or a semblance of Complainant’s SOUTH PARK mark.”
when the title of the home page is:
“Watch South Park Episodes Free”
and the only thing they are offering is Viacom trademarked content including pictures and videos of episodes. Seems like a bad decision to me.
Andrew Allemann says
Rick – the difference is the domain name, not the web site. The domain name is stansdad.com. The content on the web page is about South Park.
I would imagine they started with a DMCA take down notice and the owner argued the content wasn’t actually on his site, it’s streamed from another site.
Rick…..what’s YOUR agenda? Who do you work for?
I just saw you over at Elliot’s blog trashing the owner of Jackass,com…..which was was another Viacom UDRP case.
Your suspect….pal. You stick out like a sore thumb.
They lost another decision same nonsense
Andrew Allemann says
@ D – that’s weird. It’s like they figured they’d try another WIPO panel for the same situation to see if it worked. I don’t agree with what the owner of StansDad.com is doing, but Viacom is going to get a black mark if it continues to use UDRP for reasons other than what was intended.