Better to suck than to stink under the UDRP
In a recent decision concerning the domain name 'airfrancestinks.com', a World Intellectual Property Organization panellist has ordered the domain name to be transferred to the complainant, the well-known French air carrier Air France, whereas, in another decision, the respondent ultimately prevailed following a complaint against the registration of 'zipzoomflysucks.com'.
The panels did not disagree when it came to appreciating the first requirement set out in Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy, that is, assessing the identity or confusing similarity of the domain name at issue with a trademark in which the complainant had rights.
The panellist indicated in the 'airfrancestinks.com' Case that he was adopting the reasoning of the majority of panels in the so-called 'sucks' cases:
"The mere addition of a pejorative word before and/or after a complainant's trademark will not be sufficient to distinguish the disputed domain name if the dominant impression given by the disputed domain name remains the complainant's trademark ... This is even more so where 'slang' - which often has a particular cultural or linguistic meaning not evident to speakers of other languages - is the added component. This would be illustrated to English speakers if they were to see the domain names 'airfrancepue.com'
('airfrancestinks.com') or 'airfrancepete.com' ('airfrancefarts.com')."
It was on the second limb of Paragraph 4(a) that the panels disagreed, that is whether the respondent had any rights or legitimate interests in the disputed domain name. In both cases, the respondent did not reply to the contentions of the complainant, and so it was therefore up to the panellists to decide on the nature of the websites at issue.
In the 'airfrancestinks.com' Case, the panellist concluded that the respondent made no effort to use the disputed domain name for any purpose which might explain its choice. The use of the domain name was not for the purpose of informing the public, or any other form of commentary which might have served to explain the interests of the respondent. The panellist therefore concluded that the respondent registered the domain name to divert traffic from the complainant and thus had no rights or legitimate interests in the domain name. It flowed from that that the domain name had also been registered and was being used in bad faith. The panellist therefore ordered the transfer of the domain name to the complainant.
On the contrary, in the 'zipzoomflysucks.com' Case, the panellist found that:
"UDRP panels have in applicable cases repeatedly stated that a US-based website engaged in non-commercial criticism of a US-based trademark owner's activities enjoys First Amendment protection, even if the domain name incorporates the complainant's trademark."
According to the panel, it was clear that the respondent's website qualified as a classic complaint site. It originally provided a catalogue of negative comments made by consumers from consumer feedback websites and was subsequently replaced by a link to a consumer feedback website. That, however, did not end the inquiry. If the site was nevertheless a pretext for cybersquatting, so that the actions of the respondent evidenced an "intent for commercial gain to misleadingly divert consumers" or an "intent for commercial gain ... to tarnish the trademark or service mark at issue", then the complainant may well have succeeded in showing that it was not a bona fide criticism site, and thus that the respondent lacked a legitimate interest. However the complainant failed to do so, prompting the panellist to rule in favour of the respondent and deny the complaint.
These two decisions are a reminder of the complex nature of 'sucks' cases.
David Taylor and Charles Simon, Lovells, Paris
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