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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Viacom International Inc. v. Future Media Architects, Inc.
Case No. D2008-1833
1. The Parties
The Complainant is Viacom International Inc., of New York, United States of America (вЂњUnited StatesвЂќ), represented by White OвЂ™Connor Fink & Brenner LLP, United States.
The Respondent is Future Media Architects, Inc., of British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, United Kingdom (вЂњUnited KingdomвЂќ), represented by Kenyon & Kenyon, United States.
2. The Domain Name and Registrar
The disputed domain name <jackass.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the вЂњCenterвЂќ) on November 26, 2008. On November 27, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On December 2, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the вЂњPolicyвЂќ or вЂњUDRPвЂќ), the Rules for Uniform Domain Name Dispute Resolution Policy (the вЂњRulesвЂќ), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the вЂњSupplemental RulesвЂќ).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 5, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 25, 2008. The Response was filed with the Center on December 24, 2008.
The Center appointed John Swinson as the sole panelist in this matter on January 15, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The disputed domain name was first registered in 1999 and transferred to the Respondent in or prior to November 2002.
Both the Complainant and the Respondent are the owners of trademarks registered with the United States Patent and Trademark Office (вЂњUSPTOвЂќ) that include the word вЂњJackassвЂќ.
The ComplainantвЂ™s JACKASS service marks and trademarks include JACKASS (registration number 2,580,364) in class 41 (entertainment services in the nature of a live action television series) with a date of first of October 2000, and MTV JACKASS (registration number 2,926,447) in classes 22 and 39 (clothing) with a date of first use of November 2000.
The Complainant has used its JACKASS trademarks since October 2000 in connection with its television show вЂњJackassвЂќ, and later in connection with two movies вЂњJackass: the MovieвЂќ and вЂњJackass: Number TwoвЂќ.
The Complainant also owns the domain name <jackassworld.com>. The ComplainantвЂ™s website at вЂњwww.jackassworld.comвЂќ contains photos and clips of the JACKASS television series and movies, a blog page, a JACKASS community page and sells official JACKASS merchandise.
The Respondent owns more than 100,000 domain names.
The Respondent owns a registration for JACKASS (trademark registration number 2,991,817) in class 42 (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), with a date of first use of December 2003. This trademark was filed on January 6, 2004 and registered in September 2005.
The website at the disputed domain name at the present time contains third party pay-per-click advertisements and not much else.
5. PartiesвЂ™ Contentions
The Complainant contends that:
The disputed domain name is identical or confusingly similar to the ComplainantвЂ™s JACKASS service mark and trademarks.
The disputed domain name is identical to the ComplainantвЂ™s JACKASS service marks and trademarks because it includes the ComplainantвЂ™s service mark JACKASS in its entirety and a significant part of the ComplainantвЂ™s MTV JACKASS trademarks. The inclusion of the domain suffix вЂњ.comвЂќ does not impact on the analysis of whether the disputed domain name is identical or confusingly similar to the ComplainantвЂ™s JACKASS service mark and trademarks.
Internet users are likely to assume that there is an affiliation between the ComplainantвЂ™s JACKASS television series and JACKASS movies and the disputed domain name because, while the disputed domain name poses as a search engine, it purports to offer goods and services actually provided on the ComplainantвЂ™s website вЂњwww.jackassworld.comвЂќ.
The Respondent has no rights or legitimate interests in respect of the disputed domain name
The Respondent does not have any legitimate rights or interests in the disputed domain name but is using the ComplainantвЂ™s well known JACKASS service mark and trademarks to take advantage of the ComplainantвЂ™s fame and reputation.
There is no evidence that the Respondent is commonly known by the word вЂњJackassвЂќ.
The disputed domain name was registered and is being used in bad faith
The disputed domain name was transferred to the Respondent on or about 18 November 2002. By November 2002, the ComplainantвЂ™s JACKASS television series was in its third series on MTV and the first JACKASS movie had been released. MTV is seen in over 160 countries in 33 languages. This, and the fact that many of the ComplainantвЂ™s JACKASS trademarks were registered before the Respondent acquired the disputed domain name, indicate that the Respondent should have been aware of the ComplainantвЂ™s JACKASS service mark and trademarks before it acquired the disputed domain name in November 2002.
The RespondentвЂ™s use of the disputed domain name in bad faith is demonstrated by the fact that the website located at the disputed domain name offers links to products that are in competition with the products offered by the Complainant at вЂњwww.jackassworld.comвЂќ.
The RespondentвЂ™s bad faith is also demonstrated by the fact that the Respondent is a serial cyber squatter, as it has been found to have registered domain names in bad faith in five previous WIPO UDRP decisions.
The Respondent contends that:
The disputed domain name is not identical or confusingly similar to the ComplainantвЂ™s JACKASS service mark and trademarks.
The Complainant cannot have the exclusive right to use the word вЂњJackassвЂќ because it is a common or generic word meaning male donkey or вЂњidiotвЂќ. Numerous other trademark registrations exist that include the word вЂњJackassвЂќ.
The website operated at the disputed domain name is quite different from the ComplainantвЂ™s JACKASS websites therefore consumers would not think that the disputed domain name was somehow linked to the ComplainantвЂ™s JACKASS television series or JACKASS movies.
The Respondent has rights or legitimate interests in respect of the disputed domain name.
The Respondent originally intended to use the disputed domain name for the purposes of offering adult online entertainment. In January 2003, the Respondent (or a related entity of the Respondent) filed a United States trademark application for the word вЂњJackassвЂќ in relation to adult entertainment. The Respondent later changed its business model and that trademark application was abandoned.
The applicant then filed a United States trademark application for JACKASS in relation to computer services. The RespondentвЂ™s JACKASS trademark was registered in September 2005.
The USPTO conducts a rigorous examination of all trademark applications and it concluded, in relation to the RespondentвЂ™s trademark application that the RespondentвЂ™s trademark is not confusingly similar to another trademark that is already registered. This confers a presumption of validity.
The RespondentвЂ™s current use of the disputed domain name, as a website that displays advertising, is a legitimate use.
The Respondent has plans to operate a website from the disputed domain name that deals with donkeys, their uses and their contributions to society. The Response includes a number of pages showing a new website design, ready for launch.
The disputed domain name was registered and is being used in bad faith
The Respondent is not using, or did not register, the disputed domain name in bad faith because it does not plan to sell the disputed domain name to the Complainant. Also, the Respondent is not a cyber squatter, it has a registered trademark in the word вЂњJackassвЂќ and the disputed domain name is being used consistently with that trademark.
The Respondent did not develop the disputed domain name with the intent of trading off the ComplainantвЂ™s fame. The CEO of the Respondent did not know of the ComplainantвЂ™s JACKASS service mark and trademarks because he lives in Kuwait and the JACKASS television series or JACKASS movies have never been screened in Kuwait.
The fact that the Complainant waited nearly 6 years to lodge a complaint indicates that the disputed domain name was not registered in bad faith and had not previously posed a problem to the Complainant.
A finding of reverse domain name hijacking be made.
Both the Complainant and the Respondent have legitimate interests and rights in the JACKASS mark and the Complainant therefore initiated the proceedings knowing that they were unlikely to be successful. This in itself demonstrates bad faith on behalf of the Complainant.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant.
A. Identical or Confusingly Similar
To prove this element, the Complainant must have rights in a trademark or service mark, and the disputed domain name must be identical or confusingly similar to the ComplainantвЂ™s trademark or service mark.
The Complainant is the owner of several United States trademark registrations and pending applications that include the word вЂњJackassвЂќ, examples of which are provided in paragraph 4 above. The Complainant has used its JACKASS trademarks in connection with its JACKASS television series and two JACKASS movies.
The Respondent argued that the word вЂњJackassвЂќ is a generic word for male donkey or a colloquial expression meaning вЂњidiotвЂќ. The Respondent argued that the Complainant cannot have a monopoly over a generic word.
The issue to be decided under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. As discussed in many previous UDRP decisions, this involves two questions, namely:
(A) does the Complainant have a trademark registration or common law trademark rights, and
(B) is the disputed domain name identical or confusingly similar to that trademark in which the Complainant has rights?
Here, the answer to these questions is simple. The Complainant has a United States registered trademark for JACKASS, and the disputed domain name uses the ComplainantвЂ™s JACKASS trademark in its entirety.
The Panel agrees that the Complainant cannot have a monopoly over a generic word such as вЂњJackassвЂќ, however this does not prevent the Complainant from having legitimate trademark rights in the word вЂњJackassвЂќ for the purposes of the first element of the Policy. Numerous prior decisions have held that trademark rights can exist in a generic word for the purposes of the Policy (see, for example, Amazon.com Inc v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman,
WIPO Case No. D2006-0517; Melaleuca, Inc. v. Wang Xiao Ping,
WIPO Case No. D2008-1587; and James Good o/a Pornreports.com v. Mark Anderson,
WIPO Case No. D2004-0391). вЂњAppleвЂќ, вЂњAmazonвЂќ, вЂњTimeвЂќ, вЂњCokeвЂќ and вЂњDeltaвЂќ are all generic words which are famous trademarks.
The Complainant has further provided the Panel with evidence of the popularity of their JACKASS television series, JACKASS movies and associated JACKASS merchandise. This kind of evidence is not typically necessary for the first element of the Policy where the Complainant has a registered trademark. In short, where there is a registered trademark, there is rarely a need to go to the additional length prove secondary meaning to succeed under the first element of the Policy.
The fact that in this case the Respondent also has a registered trademark over the word вЂњJackassвЂќ is irrelevant in relation to the first element of the Policy.
For completeness, it is noted that the Respondent argues that the disputed domain name is not identical or confusingly similar to the ComplainantвЂ™s JACKASS trademark because the content of the website located at the disputed domain name is substantially different from the content of the ComplainantвЂ™s JACKASS websites. However, it is by now well established that the content of the website located at the disputed domain name is not taken into account when deciding if the disputed domain name itself is identical or confusingly similar to the ComplainantвЂ™s trademark.
More generally, the Respondent argues that the RespondentвЂ™s use of the disputed domain name is not likely to cause confusion. That, however, is not relevant in this case because the Complainant owns a registered trademark and the disputed domain name is identical to the registered trademark.
The Panel therefore finds that, in the circumstances of this case, the disputed domain name is identical to the ComplainantвЂ™s JACKASS trademark. Consequently, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The Respondent argues that because it owns a вЂњlong standingвЂќ United States trademark registration for JACKASS, this proves that the Respondent has a legitimate use for the dispute domain name. The Respondent relies on Paragraph 4(c)(i) of the Policy.
On this point, the Respondent referred to Clubrunner, Inc. v. One Stop Computer Shop, Inc.,
WIPO Case No. D2000-0538 and Jacques Lafitte Sa v. 21st Century Communications SCP,
WIPO Case No. D2000-0443. The Complainant referred to Madonna Ciccone, p/k/a Madonna v. Dan Parisi and вЂњMadonna.comвЂќ,
WIPO Case No. D2000-0847.
There is no per se rule that a trademark registration owned by a Respondent which is identical to the disputed domain name is conclusive evidence to establish rights or legitimate interests for the purpose of the second element of the Policy. For example, a trademark registration resulting from a trademark application filed by the Respondent after notice of the ComplainantвЂ™s claim to the disputed domain name would not, of itself, be sufficient to prove rights or legitimate interests as required by the Policy. As stated in Westec Interactive Security, Inc. v. Express Post Ltd (Westec Division),
WIPO Case No. D2005-0811:
вЂњThere being nothing before the Panel to suggest that the RespondentвЂ™s Russian Federation trademark registration of the mark WESTEC is anything other than genuine, manifestly the Respondent has rights in respect of the Domain Name. The Panel might well have come to a different conclusion if there were any suggestion that the Respondent had registered the trade mark after having acquired knowledge of the ComplainantвЂ™s interest in the name, but that was not the case. Indeed, the RespondentвЂ™s trade mark registration pre-dates the ComplainantвЂ™s rights by some years.вЂќ
A trademark registration owned by the Respondent is a relevant consideration, but further analysis is necessary to determine whether the Respondent, before any notice of the dispute, used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, as set out in Paragraph 4(c)(i) of the Policy.
The Response states that the Respondent currently intends to use the disputed domain name for a website about donkeys. A number of draft web pages for a proposed, soon-to-be-released website about donkeys were exhibited in the Response. The Panel does 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.
The Respondent contends that the current website at the disputed domain name is only temporary, while the donkey website can be finished. The current website displays advertising, and the Respondent asserts that this shows that the use of the disputed domain name is legitimate.
A respondent may have a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant. See National Trust for Historic Preservation v. Barry Preston,
WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc.,
WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich,
WIPO Case No. D2001-1044. Where a respondent registers a domain name consisting of вЂњdictionaryвЂќ terms because the respondent has a good faith belief that the domain nameвЂ™s value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith belief may establish a legitimate interest. See Mobile Communication Service Inc. v. WebReg, RN,
WIPO Case No. D2005-1304. But the domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive term, and not because of any value corresponding to a trademark. Media General Communications, Inc. v. Rarenames, WebReg,
WIPO Case No. D2006-0964; HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager,
WIPO Case No. D2007-0062; Balglow Finance S.A., Fortuna ComГ©rcio e Franquias Ltda. v. Name Administration Inc. (BVI),
WIPO Case No. D2008-1216. Many domain names have both dictionary word meanings and trademark (or secondary) meanings, and when the links on the pay-per-click landing page are based on the trademark value of the domain names, the trend in UDRP decisions is to recognize that such practices generally do constitute abusive cybersquatting. Asian World of Martial Arts Inc. v. Texas International Property Associates,
WIPO Case No. D2007-1415; Alpine Entertainment Group, Inc. v. Walter Alvarez,
WIPO Case No. D2007-1082. Web pages that are automatically generated by software on the basis of searches made by visitors or on the basis of the domain name itself are inherently likely to result in the display of sponsored links that relate to trademarks that are similar to the domain name. The respondent is ultimately responsible for the content of the website, regardless of how such content is generated. Grisoft, s.r.o. v. Original Web Ventures Inc.,
WIPO Case No. D2006-1381.
Here, the website at the disputed domain name has links related to finance, travel, loans and insurance. The website also has links to вЂњjackassвЂќ, вЂњjackass stuntsвЂќ and вЂњvideosвЂќ. Deeper in the site are links to the ComplainantвЂ™s official Jackass website, plus links to a bunch of unrelated websites. Possibly, some of the links may end up at websites that have products that compete with the ComplainantвЂ™s products.
The question to be decided here is whether the RespondentвЂ™s use of the disputed domain name is bona fide, or, on the other hand, whether the Respondent is using the disputed domain name to trade off the fame and reputation of the ComplainantвЂ™s Jackass trademark.
Mere registration of a domain name does not of itself establish a right or legitimate interest in it for the purposes of the Policy. Educational Testing Service v. TOEFL,
WIPO Case No. D2000-0044 and Pharmacia & Upjohn Company v. Peoples Revolutionary Suicide Jazz Band,
WIPO Case No. D2000-0816.
The Respondent states that it first intended to use the disputed domain name as an adult entertainment website. In 2003, the Respondent (or a related entity) applied for a United States trademark for the word вЂњJackassвЂќ in relation to adult entertainment. However, (according to the Respondent due to a change in business plans) the trademark application was abandoned and the disputed domain name has been used as a pay-per-click advertising site. The Respondent now has a registered United States trademark for JACKASS in relation to computer services. The trademark application was filed on January 6, 2004 and registered on September 6, 2005.
The relevant timeline is as follows:
1. The disputed domain name is registered by an unrelated person in 1999.
2. The Complainant files its first JACKASS trademark on in August 2000.
3. The ComplainantвЂ™s TV series launches in October 2000.
4. The Respondent acquires the disputed domain name on or prior to November 18, 2002.
5. The Respondent intends to use the dispute domain name for an adult website.
6. The RespondentвЂ™s related entity files its first JACKASS trademark on January 2003 for an adult website, later abandoned.
7. The Respondent files for its JACKASS trademark in January 2004.
The Complainant argues that when the Respondent acquired the disputed domain name, the Respondent was aware or should have been aware of the ComplainantвЂ™s JACKASS television series and movie. Substantial evidence was put forward regarding the success of this Jackass entertainment franchise.
Prior to considering the issues in more detail, the Panel repeats the following helpful comments from a previous panel opinion that are relevant to the present dispute:
вЂњ[t]he fact that CREW is a generic term permeates any analysis for trademark purposes. The majorityвЂ™s contention that any trademark registration by Complainant means that Respondent should automatically be imbued with constructive knowledge of the existence of the registration for purposes of the ICANN Policy, while incorrect in and of itself, is particularly inappropriate for a generic term. Additionally, as numerous courts have stated, a trademark owner is not by definition entitled to all domain names incorporating their trademark or even those identical to their trademark. See, Judge PregersonвЂ™s excellent discussion of this issue in Lockheed Martin Corp. v. Network Solutions, Inc., 985 F.Supp. 949 (C.D. Cal. 1997), affвЂ™d, 194 F.3d 980 (9th Cir. 1999). This is especially so where the mark is generic and a common term. See, Cello Holdings, LLC v. Lawrence-Dahl Companies, 2000 U.S. Dist. LEXIS 3936 (S.D. N.Y. 2000), denying cross motions for summary judgment because the Court felt the Plaintiff could not prove bad faith registration under the ACPA because of the generic nature of the word Cello, as a musical instrument. In Cello the defendant even acknowledged that it had sought to sell the domain name to others, as part of his business of selling domain names for generic use. This is exactly the situation here, and the same logic should apply.
Furthermore, the majority seems to assume that a trademark owner has some sort of God given right to use the trademark to the exclusion of others. As Justice Holmes observed, вЂњA trademark does not confer a right to prohibit the use of the word or words. A trademark only gives the right to prohibit the use of it so far as to protect the ownerвЂ™s goodwill against the sale of anotherвЂ™s product as his.вЂќ Prestonettes, Inc. v. Coty, 264 U.S. 359 (1924). In short, the Complainant does not own all rights to the generic word CREW by virtue of its trademark registration.вЂќ
J. Crew International, Inc. v. crew.com,
WIPO Case No. D2000-0054 (dissenting opinion).
It is uncertain on the evidence in this proceeding as to the exact date that the Respondent actually acquired the disputed domain name. The Complainant asserts that the relevant date was вЂњon or about November 18, 2002вЂќ and вЂњon or before November 18, 2002вЂќ.
Evidence submitted by the Complainant appears to show that the Respondent owned the disputed domain name on November 17, 2002. This is shown in a print out of a discussion board conversation where Thunayan Khalid Al-Ghanim, the founder and Chief Executive Officer of the Respondent, asks вЂњI am not marketing this name but I keep getting offers daily. How much would you sell <JackAss.com> if it was your. Hits about 300k-600k month min.вЂќ
This posting suggests that the Respondent owned the disputed domain name for a period of time prior to November 17, 2002. The board conversation (by others) goes on to discuss the ComplainantвЂ™s television program and first movie, as well as possible use of the disputed domain name by Democrats or Republicans in the United States. One cannot conclude from this that the Respondent was aware of the ComplainantвЂ™s television series before he acquired the disputed domain name; but it is clear that the Respondent was aware of the ComplainantвЂ™s television series from at least November 17, 2002.
The Respondent provides no information as to when it acquired the disputed domain name, and does not contradict the assertions made by the Complainant that the disputed domain name was acquired вЂњon or about November 18, 2002вЂќ and вЂњon or before November 18, 2002вЂќ.
Thunayan Khalid Al-Ghanim lives in Kuwait (and his posting discussed above suggests he also lived in London.) He appears to be a very sophisticated Internet user, and has filed trademark applications in the United States and controls a legal entity in the British Virgin Islands. Both parties make submissions and try to draw inferences on the issue as to whether Thunayan Khalid Al-Ghanim knew or was likely to have known about the ComplainantвЂ™s television series and movie when the disputed domain name was acquired by the Respondent. However, much of the evidence presented is inconclusive in this regard.
Thunayan Khalid Al-GhanimвЂ™s declaration does not directly deal with the issue. He says: вЂњWhen FMA acquired the <jackass.com> domain name, FMA did not have MTVвЂ™s television show in mind.вЂќ Earlier, he states: вЂњI do not remember ever watching the вЂњJackassвЂќ television show.вЂќ He does not say that he was unaware of the television show when he acquired the disputed domain name.
Based on a detailed review of the submissions and evidence filed, as well as review of the website at the disputed domain name, the Panel makes the following inferences and conclusions:
1. The Respondent was aware of the ComplainantвЂ™s television show when the Respondent acquired the disputed domain name.
2. The Respondent has the business of buying large numbers of domain names, particularly generic domain names.
3. The Respondent believes that generic domain names have вЂњintrinsic valueвЂќ.
4. There is little evidence to suggest that the Respondent acquired the disputed domain name to trade off the reputation of the Complainant.
5. The Respondent uses the disputed domain name for an automatically generated pay-per-click website with a search engine that has very little tailoring. The website has little relation to the generic meaning of вЂњjackassвЂќ. It appears that the Respondent has been careless or reckless or uncaring in how it (or a third party link provider) has generated links on the website at the disputed domain name.
6. It does not appear that the Respondent has intentionally created a website at the disputed domain name to trade off the ComplainantвЂ™s trademark. But it also appears that the Respondent has not done anything to ensure that the website at the disputed domain name does not unintentionally link to websites that may compete with the ComplainantвЂ™s JACKASS properties.
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 ComplainantвЂ™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 PanelвЂ™s view, is enough to tip the finely balanced scales in the RespondentвЂ™s favour on the provided record in this particular case.
Just as the Overture search engine used вЂњOvertureвЂќ as its branding and the WebWombat search engine is using вЂњWebWombatвЂќ, the Respondent could be said to be (or to have taken demonstrable steps towards) using its registered вЂњJackassвЂќ trademark for its search engine branding.
The Panel therefore finds that, in the circumstances and on the record of this particular case, the Complainant has on balance failed to show that the Respondent lacks rights or legitimate interests in the disputed domain name. Consequently, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is not satisfied.
C. Registered and Used in Bad Faith
In view of the conclusion above, the Panel does not need to consider the element of bad faith. For completeness, and because there is some interaction between bad faith (Paragraph 4(a)(iii)) and bona fide use (Paragraph 4(c)(i)), the Panel briefly addresses the following arguments made by the parties.
The Complainant argues that the Respondent is a вЂњserial cybersquatterвЂќ, and refers to a number of UDRP decisions involving the Respondent. In response, the Respondent refers to a significant number of UDRP decisions where the Respondent was successful and the disputed domain name was not transferred or cancelled. In addition, the Respondent cited two U.S. court cases, where it sought relief in relation to UDRP cases where the Respondent was unsuccessful.
In short, one cannot readily conclude from the evidence before the Panel that the Respondent is a вЂњserial cybersquatterвЂќ. The Panel finds that the Complainant has not shown вЂњa pattern of such conductвЂќ within the meaning of Paragraph 4(b)(ii) of the Policy.
There is also no evidence on the present record that the Respondent attempted to sell, rent or transfer the disputed domain name to any person.
That is not to say that the Panel has been satisfied by all aspects of the RespondentвЂ™s case, or that the Panel believes it has necessarily been told the whole of the story, or indeed that if the current apparent steps taken towards providing search-related services were to be replaced with a clearly abusive use, the matter would be precluded from future examination. But at the end of the day, the onus of proof in these proceedings is on the Complainant.
The Respondent argued that because the Complainant waited over 6 years to bring the complaint, their complaint should be defeated. The Respondent referred to The Knot, Inc. v. Ali Aziz,
WIPO Case No. D2007-1006 for support of the principle that an unexplained lengthy delay is usually fatal to a complainantвЂ™s case.
The Respondent has misinterpreted the above case. In The Knot, Inc. v. Ali Aziz,
WIPO Case No. D2007-1006, the disputed domain name was registered in 2001 and the complainant did not bring their complaint until 2007. The panelist expressly held that the doctrine of laches does not apply in domain name disputes. Rather, what the complainant in that case failed to prove was that in 2001 when the disputed domain name was registered, the respondent should have known of the complainantвЂ™s trademarks. The panel held that the complainant did not have such an established reputation in 2001 that the respondent should have known of their trademarks when the domain name was initially registered.
The issue for determination is whether the grounds set out in the Policy for transfer or cancellation has been established. There is no limitation period in the Policy.
On this basis, the ComplainantвЂ™s delay in bringing this complaint is not necessarily fatal to their case, although it does not assist them either. See e.g., paragraphs 6.12 and 6.13 of Francine Drescher v. Stephen Gregory,
WIPO Case No. D2008-1825.
E. Reverse Domain Name Hijacking
For the reasons stated above, the merits of this case have been finely balanced. The Panel in any event finds no compelling reason to conclude that the case was brought by the Complainant, who clearly has rights to the JACKASS mark, in bad faith. Accordingly, the RespondentвЂ™s request for a finding a reverse domain name hijacking is declined.
For all the foregoing reasons, the Complaint is denied.
Dated: January 30, 2009