'Sucks' sites are confusing, rules panellist

In Bayer Aktiengesellschaft v Dangos & Partners, World Intellectual Property Organization (WIPO) panellist Angelica Lodigiani has ordered the transfer of 13 domain names, including three with the suffix 'sucks', to Bayer. She noted that the outcomes of domain name disputes involving the term 'sucks' have not been consistent and sided with those panellists who have found that such domain names create a likelihood of confusion.

Bayer, a multinational based in Germany, owns over 1,000 trademark registrations, many of which include the name 'Bayer'. It brought an uncontested claim under the Uniform Domain Name Dispute Resolution Policy (UDRP) against Dangos, a Russian entity, in relation to Dangos's registration of 13 domain names in various generic top-level domains (eg, '.com' and '.biz'). Among the domain names that Dangos was making available for sale were a number of registrations featuring the term 'bayersucks'.

Lodigiani had little difficulty in finding that the domain names that did not include the 'sucks' element were confusingly similar to Bayer's famous marks. Likewise, she concluded that Dangos had no legitimate rights or interest in any of the domain names and had registered and used them all in bad faith. However, her analysis of whether the 'sucks' domain names were confusingly similar to Bayer's marks was more complex. She noted that a number of prior UDRP decisions have ruled against a finding of a likelihood of confusion in relation to 'sucks' domain names. Lodigiani did not follow this line of authority, and concluded that the 'bayersucks' registrations were confusingly similar to Bayer's trademarks. She set out the following reasons to back up her conclusion:

• Non-English speakers viewing such domain names may not realize that 'sucks' is commonly used on the Internet to denote criticism sites.
  
  
• Search engines may retrieve the 'bayersucks' websites, thereby diverting potential consumers away from Bayer's sites.
  
  
• Some internet users may be misled into thinking that Bayer had established the 'bayersucks' sites to provide consumers with an opportunity to make complaints or to provide feedback on Bayer products.
  

Based on this analysis, Lodigiani ordered the transfer to Bayer of all the disputed domain names.

For discussion of an opposite ruling in a case involving a 'sucks' domain name, see Asda loses in fight over 'sucks' domain name.

David Wotherspoon, Fasken Martineau DuMoulin LLP, Vancouver