Asda loses in fight over 'sucks' domain name
In Asda Group Limited v Paul Kilgour, World Intellectual Property Organization panellist Tony Willoughby has refused to order the transfer of 'asdasucks.net' to UK supermarket chain Asda. Applying the Uniform Domain Name Dispute Resolution Policy (UDRP), Willoughby found that the domain name is not confusingly similar to the ASDA trademark.
While still working for Asda, Paul Kilgour set up under the domain name 'asdasucks.co.uk' a website to voice his disgruntlement with the company. Kilgour also registered the domain name 'asdasucks.net' after he had left Asda's employ, linking the domain name to his main 'asdasucks.co.uk' website in August 2002. Asda then brought proceedings to obtain the transfer of 'asdasucks.net'.
Even though Willoughby described Kilgour's behaviour as "grotesque", he reasoned that "by now the number of internet users who do not appreciate the significance of the 'sucks' suffix must be so small as [...] not [to be] worthy of consideration". Willoughby noted that internet users who are not fluent in English may not understand the meaning of the 'sucks' suffix, but as Asda is a UK supermarket with a nearly 100% UK customer base, this argument, had it been made, would have failed. Willoughby therefore found that the domain name is not confusingly similar to the ASDA mark and, accordingly, dismissed the complaint.
Companies will find it difficult, in the light of this decision, to shut down protest sites merely by asserting that the domain name causes confusion. If other WIPO panellists follow the views expressed in this decision, the 'foreign language' exception may well represent the only means of proving 'confusing similarity' under Paragraph 4(a)(i) of the UDRP.
For a discussion of the treatment of other protest sites, see The uncertain status of criticism and tribute sites.
Tim Gunn, Ashurst Morris Crisp, London
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