With the growth of the Internet as a medium for big business’ proponents and detractors alike, a number of individuals and companies have taken ownership of domain names with a “sucks.com” suffix. Recent decisions by ICANN panels and courts have turned up inconsistencies in arbitration outcomes for trademark holders and domain name owners. Per the Uniform Domain Name Dispute Resolution Policy (UDRP) adopted by ICANN in 1999, disputes over domain names may be adjudicated in administrative proceedings. Complainants may receive a transfer if a domain name meets all of the following criteria “1) Identical or confusingly similar to a trademark or service mark in which the complainant has rights; 2) the respondent has no rights or legitimate interests in respect of the domain name; and 3) the domain name has been registered and is being used in bad faith."
The following recent decisions shed some light on decision-making trends of the administrative panels reviewing UDRP domain name disputes. The panels have struggled to apply the elements while protecting free speech, recognizing trademarks and respecting how judicial bodies have dealt with similar issues. Much of the discrepancy in the opinions comes from the application of the first element: identical or confusingly similar names. Different standards have been applied to that question, and many of them appear intertwined with the panels’ assessment of the value of the site.
In the 2000 ruling on Diageo plc v. John Zuccarini, Individually and t/a Cupcake Patrol, the administrative panel looked at Zuccarini’s ownership and use of a number of domain names including “guinness-really-sucks.com,” “guinness-beer-really-sucks.com,” and “guinnessbeersucks.com.” In this case, the panel addressed the issue of whether or not a site with the sucks.com suffix could be confused with the complainant’s actual site. The opinion compared the appearance, sound, connotation, and commercial impression of the sites. The sites were found to be confusingly similar in part, because “guinness” was the first word in each site, and also because the other words in the site names, such as beer, were products the complainant sold. Also, in considering the issue of the results of a search engine query, the sucks.com sites would be returned by an Internet user entering the term “Guinness.” The panel recognized that not all English speakers would be aware that a domain name containing the word “sucks” would not likely be sponsored by the trademark holder.
Likewise, in Vivendi Universal v. Mr. Jay David Sallen and Go247.com, Inc., global communications company Vivendi was able to obtain a transfer of “vivendiuniversalsucks.com.” This November 2001 decision was based in part on the panel’s belief that it is not clear that, “addition of the word ‘sucks’ to a well-known trademark is not always likely to be taken as ‘language clearly indicating that the domain name is not affiliated with the trademark owner.’”
In a May 10, 2001 decision in The Salvation Army v. Info-Bahn, Inc., the panel ruled that the respondent’s use of “salvationarmysucks.com,” while not identical, was confusingly similar. The panel devoted little time to that aspect of the debate and focused on Info-Bahn’s conduct in making an offer to sell the domain name and threatening to raise the price on an hourly basis, finding it constituted a bad faith attempt to extract money from the Salvation Army. Here, the panel did not discuss search engine results or disparities in Internet users’ familiarity with the slang meaning of the world “sucks.” However, it is important to note that the respondent made no challenge to the contention that the name was confusingly similar.
Lockheed Martin Corporation brought suit against Dan Parisi for a transfer of “lockheedsucks.com” and “lockheedmartinsucks.com.” In January, 2001, the administrative panel departed from earlier panel decisions by holding that the use of “sucks” in the domain name is necessarily distinguishable from a site related to the company and its trademark. The panel cited the U.S. District Court decision in Bally Total Fitness Holding Corporation v. Andrew S. Faber, where it was also held that the “sucks.com” site in question was used for free speech, to criticize the trademark holder’s business practices and not to sell related goods. 29 F.Supp.2d 1161 (C.D. Cal. 1998). Similarly in McLane Company, Inc. v. Fred Craig, the Panel determined that the use of term “sucks” in the site “mclanenortheastsucks.com” actually reduces the likelihood that a viewer would be confused as to the purpose of the site. In this case, the use of the name as a means of drawing attention to a forum for protesting against the complainant also constitutes a legitimate, fair interest in the domain name.
As this sample of cases suggests, the arbitration panels have not spoken with one voice on the “sucks.com” domain names. One issue that looms is that of recognition of a global Internet community in assessing what may or may not be confusingly similar. At the same time, the bad faith and legitimate interest factors come into play as courts and arbitration panels have demonstrated efforts to simultaneously protect speech and impede extortion, with confusing results for trademark holders and domain name holders alike.
RELATED LINKS:
guinness-really-sucks.com dispute
vivendiuniversalsucks.com dispute
salvationarmysucks.com dispute
mclanenortheastsucks.com dispute
