Panel divided on Vivendi Universal Case

A decision by the Arbitration and Mediation Centre of the World Intellectual Property Organization has struck a blow for trademark owners in the ongoing debate regarding protest sites. Typically domain names including the word 'sucks' may be used to criticize trademark owners' businesses, or to extract money from trademark owners under the threat that they may be used in this way.

There have been conflicting lines of cases under the Uniform Domain Name Dispute Resolution Policy (UDRP). Some decisions have found that domain names of this form are confusingly similar to the trademarks to which they refer and that their use is contrary to the UDRP. In other cases, panels have decided that the addition of the word 'sucks' to a trademark indicates that the domain name is not affiliated with the trademark owner and therefore cannot be considered confusingly similar to the trademark.

In the Vivendi Case, involving the domain name 'vivendiuniversalsucks.com', the panel considered the conflicting lines of decisions and, by a majority of two to one, decided in favour of the claimant trademark owner, the well-known media group Vivendi Universal.

In order to succeed in a complaint under the UDRP, a complainant is required to prove three issues:

• that the disputed domain name is identical or confusingly similar to the complainant's trademark;
  
  
• that the respondent has no legitimate interest in respect of a domain name; and
  
  
• that the disputed domain name has been registered and is being used in bad faith.

In the Vivendi Case, the majority of the panel decided that, even with the addition of the word 'sucks', the domain name might be taken to be affiliated with the trademark owner. The panel gave the example of non-English speakers who might not understand the meaning of the word 'sucks', and also gave two examples of cases where such a site might be taken as affiliated with the owner: (i) 'electroluxsucks.com', which might be taken as a reference to an advertising slogan 'Nothing sucks like Electrolux'; and (ii) 'primassucks.com', the website of a band called Primas which refers to the band's album 'Suck on this'.

However, the dissenting panellist argued that while there may be cases where such domain names could be confusingly similar to trademarks, in this case the complainant had not put forward any reason why confusion would be likely. The dissenting panellist said: "The claimant does not claim to be known as a manufacturer of vacuum cleaners or suction pumps, or as a self deprecating alternative rock band [...] or any other sort of entity that people are likely to associate with sucking." He went on to state that the mere fact that people may not fully comprehend the colloquial meaning of 'sucks' is immaterial in the absence of evidence that the combination is confusingly similar to the trademark.

The panel's decision seems unlikely to be the final word on the subject, particularly since UDRP panellists are not bound by the decisions of previous panels.

The respondent in this case was also, perhaps, unfortunate in the conclusions reached by the majority with regard to the issues of legitimacy of use and bad faith. The panel inferred from the fact that the respondent had created a critical website urgently following the receipt of a cease and desist letter from the complainant that the use of the website for this purpose was contrived and not genuine. The panel also concluded that a comment by the respondent that "one of us is not making any money on this process and therefore must attend the business of making a living" gave the impression that the domain name might be available for sale.

It remains the case that when looking at issues of legitimacy and bad faith, each case will need to be considered on its own facts.

Jonathan Nugent, Rowe & Maw, London