Domain Name Shame: March 2009

The Complainant, Viacom International, Inc., owns trademark registrations in the service mark and trademark "SOUTH PARK", which it has used in connection with various forms of entertainment and related apparel since as early as July 1997. The marks have been used in connection with an animated television show called "South Park" and Complainant maintains "the official South Park web site" at
www.southparkstudios.com. The television show has several cartoon characters, including "Stan" and "Mr. Marsh", who is identified as Stan's father.

On March 22, 2007, the Respondent registered the disputed domain name, "stansdad.com", which resolves to a web site in which a cartoon character's face corresponding to Mr. Marsh appears in the place of the "O" in ".COM". The website contains episodes of the television show South Park (including two copyrighted episodes) and the tagline "W-W-WATCH SOUTH PARK ONLINE FREE!". The website contains prominent disclaimers identifying the Complainant as the owner of the trademark and copyrighted material and expressly disassociates the disputed domain name with the Complainant.

Denying Viacom's complaint, the Panel pointed out that the UDRP was designed to deal with the problem of cybersquatting. The disputed domain is clearly not confusingly similar to any trademarks or service marks asserted by Viacom, as "stansdad.com" is not even remotely similar to "South Park". Instead, Viacom's concerns were not really directed towards the particular domain name itself but, rather, what was occurring on Respondent's website. While the Panel recognized that Viacom's concerns may be legitimate and perhaps entitled to legal redress, the UDRP is simply not the vehicle to provide that redress. Here, Viacom was really asserting possible claims of copyright infringement, which goes beyond the purview of the issues that the UDRP was designed to redress and should have been brought in a more traditional legal proceeding.

Complainants are affiliated companies that manufacture, distribute and sell various brands of smokeless tobacco, including the GRIZZLY brand. Complainants have filed various trademark registrations for the GRIZZLY mark in connection with smokeless tobacco products.

Respondent is in the business of registering and utilizing domain names and, on January 30, 2005 and June 3, 2005, Respondent registered respectively the disputed domain names "grizzlychew.com" and "grizzlysnuff.com". Respondent contracts with Hitfarm, an Internet advertising service provider, to place targeted advertising links on "grizzlychew.com". Complainants did not learn of Respondent's registration of the domain names until August 2007.

In arguing that the domain names were not confusingly similar to the GRIZZLY marks, Respondent relied upon the fact that the common term "Grizzly" has been registered as a trademark by numerous companies and it also took the disingenuous position that Complainants do not market GRIZZLY products as "chew" or "snuff" but, rather, as smokeless tobacco. These arguments, however, did not hold smoke with the Panel. As the Panel noted, even though true that the term "Grizzly" has been registered for various products by numerous trademark holders, the USPTO's decision to grant Complainants a trademark demonstrates that Complainants have enforceable rights in the mark. The Panel further noted that regardless of whether Complainants refer to their product as "smokeless tobacco", the evidence submitted made clear that the terms "chew" and "snuff" are commonly used to reference smokeless tobacco. It was logical to conclude that anyone familiar with the GRIZZLY mark would likely assume that the domain names were affiliated with Complainants, rendering them confusingly similar.

Respondent also argued that offering targeting advertising searches is a legitimate business and that, in any event, they had no control over which advertisers Hitfarm posts using the domain names. Can you say "pass the buck"?? While the Panel conceded that the business of offering targeting advertising searches may be a legitimate business in certain circumstances, those circumstances did not exist in this case. It may be legitimate as long as the domain names have been registered because of their attraction as dictionary words and not because of their value as trademarks. In this case, however, the domains did not merely refer to "smokeless tobacco", "chew" or "snuff". Rather, they merged two of those terms with a trademarked brand of smokeless tobacco and use the resulting domain names for a commercial purpose. Under the Policy, that is not a legitimate use capable of establishing rights or legitimate interests. Not surprisingly, for these same reasons, the Panel also found that Respondent had registered and used the domains in bad faith and ordered transfer of the domain names to Complainants. Conwood Company, LLC, Conwood Sales Company, LLC and Rossvil, LLC v. Texas International Property Associates, WIPO Case No. D2008-0376