A recent cyber-squatting dispute sheds light on the fact that although avenues for resolutions exist, cybersquatting is still a major problem plaguing internet commerce today. It all started when US media giant Viacom, decided to move material about its TV show 'Jackass' to the domain name 'jackass.com',  but realized that a serial cybersquatter based in the Virgin Islands (owned by Future Media Architects) had beat them to it instead. In fact, it was discovered that the company had registered more than 100,000 domain names on words such as ‘jackass’, most of which sites show at least a few pay-per-click ads.

Strange you say? Well, according to the domain owner, jackass.com was not always destined for this future. At first, the site was to offer adult entertainment but then apparently the company’s business model changed and that plan was later abandoned. Although the company has been using it for pay-per-click ads for six years now, the company attests that this is only temporary. In fact, this group still has big dreams, wishing to convert its site into a website for donkeys, and their contributions to society. Seemingly, plans are underway and Future Media included a few pages of donkey website mockups in its response to the WIPO appointed panelist.

According to the UDRP (Uniform Domain Name Dispute Resolution Policy), the complainant in such a case must satisfy a 3-part test to get the domain. First, they must show that the domain was identical or confusingly similar to a trademark in which the complainant has rights. For Viacom, this was easy enough as jackass.com is blatantly similar and confusing with 'Jackass' the name of Viacom's television show. The WIPO appointed panelist agreed with Viacom on this portion of the test. Secondly, the complainant has to demonstrate that the respondent did not have any legitimate interests with respect to the disputed name. This is where the panelist felt that Viacom fell short. Finally, (although not necessary here because they failed on the second step), the complainant must also show that the disputed name was registered and used in bad faith. Here again, Viacom was at a loss as Future Media made no attempt to sell the domain.  

So the question remains, should Viacom have the rights to jackass.com, even though jackass is a generic term for a donkey?  Specifically, should a trade-mark holder be able to take away any domain name that happens to use their trade-mark? In another cybersquatting dispute, Madonna won rights to the domain name madonna.com despite the fact that the contested domain name was actively being used and that she named herself after a term that has long been part of the public realm. So why was Viacom not successful in this case when it was so blatant that cybersquatting was what was going on?

The answer seems to be because of the test itself. It does not seem prepared for changes in internet practice. Firstly, it places a heavy burden on the complainant even in situations where it is obvious that cybersquatting is what has occurred. In the case above, Viacom was placed in a position to need to prove that Future Media Architects (the respondents) had no legitimate interests with respect to the disputed name even when it is so very obvious that they didn’t. Even the WIPO panelist was not satisfied by all aspects of the respondent’s case and criticized the respondent for offering no explanation as to why it had taken so long to launch a donkey-themed website.  The respondent also made absolutely no effort to explain why it suddenly wished to operate a website promoting donkeys and what benefit (if any) it would receive from pursuing this.

Secondly, it seems this test is geared to catch the traditional cybersquatter, and not the more legal minded or modern one. It seems that this is what occurred in the case above for the ruling doesn't take into account the many benefits for a cybersquatter that does not attempt to sell the domain. First off, they are able to benefit from the application of the test, for not attempting to sell the domain weighs in their favour. They are less easily labelled as registering and using the domain name in bad faith under step 3. In addition to this, they are able to reap benefits and income from users who get confused by the very similar trademark and website. If they have gone so far as to use the site for pay-per-click ads, they are able to generate income from this alone.

Although it seems that the result in Viacom is an anomaly, as many others have been successful in stopping their respective cybersquatters, I can't help but wonder if this bad result is one too many. At the very least, this case provides us with a nice example of the need for law to keep up with changes in internet practice, and to possibly shed some of its inherent retroactive character.