Wachovia wins 'sucks' domain name dispute

International

In Wachovia Corp v Flanders, World Intellectual Property Organization (WIPO) panellist Sandra Franklin has ordered the transfer of three domain names incorporating the mark WACHOVIA and the suffix 'sucks' to the complainant, holding that a 'sucks' domain name is not protected by free speech if it is not used in connection with a legitimate protest site.

Alton Flanders registered the domain names 'wachoviasucks.com', 'wachovia-sucks.com' and 'wachoviabanksucks.com' to host a website providing a search engine for financial products and services. Wachovia, a US bank, filed a Uniform Domain Name Dispute Resolution Policy (UDRP) complaint with WIPO, asserting that the 'sucks' domain names were confusingly similar to its WACHOVIA trademark. Flanders claimed to be a disgruntled Wachovia customer, and asserted that the 'sucks' domain names constituted fair use and were protected free speech under the US Constitution.

While the majority of panels applying the UDRP have found that a domain name is confusingly similar to a complainant's trademark if it consists of the mark followed by 'sucks', a minority, however, has found that the addition of 'sucks' "leaves no doubt in the mind of reasonable consumers that the site is not sponsored by" the trademark owner (see Wal-Mart Stores v Harvey).

Following the majority, Franklin found that the addition of 'sucks' was not sufficient to prevent the three domain names at issue from being confusingly similar to the WACHOVIA mark. She reasoned that adding 'sucks' to a well-known trademark does nothing to "deflect the impact of the mark on the internet user" and added that non-English speaking internet users would likely be confused by the connotation of 'sucks' domain names.

Franklin further held that Flanders had no legitimate interest in the domain names and that he had registered them in bad faith. She found that Flanders must have been aware of Wachovia's prominent and distinctive WACHOVIA mark and that he had registered the domain names in an effort to disrupt Wachovia's business, and not to use them to criticize or protest against Wachovia as claimed.

Accordingly, she ordered the transfer of the disputed domain names to Wachovia.

For a general discussion of protest sites, see The uncertain status of criticism and tribute sites.

Ron N Dreben and Kristin Altoff, Morgan Lewis & Bockius LLP, Washington DC

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