NatWest obtains transfer of 'sucks' site
In National Westminster Bank v Lopez, World Intellectual Property Organization panellist Luca Barbero has ordered the transfer of 'NatWestBankSucks.com' to the complainant. Barbero ruled that domain names other than the disputed domain name could have been registered to engage in criticism and that a disclaimer served little or no purpose.
Pedro Lopez had previously been involved in Uniform Domain Name Dispute Resolution Policy (UDRP) proceedings with the National Westminster Bank (known as NatWest), as a result of registering various domain names incorporating the words 'NatWest' and 'National Westminster', all of which were transferred to the bank. Subsequently, Lopez registered the 'sucks' domain name, which was the subject of this dispute. This domain name resolved to the same website as the other domain names previously registered by Lopez, featuring a forum for victims whose lives the bank had allegedly destroyed. The homepage also included a disclaimer that the site was not the official site of NatWest.
As Lopez did not substantiate the allegations that NatWest had ruined individuals' lives, Barbero concluded, pursuant to Paragraph 4(a) of the UDRP, that Lopez (i) had no legitimate right to use the domain name, and (ii) had registered and used it in bad faith.
With regard to the issue of confusing similarity, Barbero recognized that the majority of UDRP decisions have considered that the addition of the word 'sucks' to a domain name did not prevent the domain name from being confusingly similar to the complainant's trademark. The rationale given for this conclusion is that not all internet users are English speakers or familiar with the use of 'sucks' to indicate a site used for criticism (see The uncertain status of criticism and tribute sites).
This analysis is flawed. For an English language trademark, such as in the NatWest Case, it is inappropriate to test confusing similarity through the eyes of a non-English speaker. To the average English-speaking internet user, the message given by the appearance of the word 'sucks' in a domain name is clear. This does not mean that a complainant should never be able to succeed against a 'sucks' domain name. Where a mark is, for example, a French mark and the complainant can show that most French internet users do not appreciate the meaning of the word 'sucks', then a finding that the domain name is confusingly similar to the trademark would be appropriate.
That said, it seems likely that many panellists will continue to give a broad interpretation to 'confusingly similar' in circumstances such as those in issue in the NatWest Case so as to find in favour of the complainant.
Jane Mutimear, Bird & Bird, London
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