Monday, April 21, 2008

You suck! No, you suck! - The fight over

In Red Bull GmbH v. Carl Gamel, WIPO Case No. D2008-0253 (Debrett G. Lyons, April 14, 2008), the Panel required the transfer of to the Complainant. In many "sucks" cases (where a party registers a domain name identical to another's trademark with the mere addition of "sucks" and a top-level domain (e.g. ".com")) the Panel refuses to transfer the "sucks" domain. In such cases, it is held that the Respondent is making a "fair use" of the domain name in that it uses the domain's corresponding website solely as a non-commercial gripe site about the trademark owner. In this case, however, the Respondent used its website to complain about the trademark owner and sell competing goods. Therefore, judgment in favor of the Complainant was predictable based on prior decisions. The Panel did go out of its way, however, to specifically disagree with two assertions made by the Complainant, which are discussed below.
First, in determining whether the disputed domain is confusingly similar to the Complainant's trademark, the Complainant argued that the addition of "sucks" to another's trademark is equivalent to adding a descriptive or generic term to that trademark (e.g. In cases of mere addition of a descriptive or generic term, Panels routinely find the domain name confusingly similar to the Complainant's trademark.

The Panel rejected the Complainant's argument, holding that "[t]his Panel’s view is that it is not helpful to characterize 'sucks' as a generic term in the same way earlier cases have held 'buy-', 'cheap-', '-online' and numerous similar terms to be non-distinctive." The Panel's view makes sense. Generic and descriptive terms arguably enhance confusing similarity, as an Internet user may believe that the disputed domain is affiliated with the Complainant (e.g., it is logical to believe that is associated with Apple Computers, Inc.). In the case of the addition of sucks (e.g., it is illogical to believe that Apple would maintain a website at that address.

Second, as a back-up argument to deal with the fact that the use of "sucks" suggests a gripe site not associated with the Complainant, the Complainant argued that a large proportion of international consumers are unfamiliar with the pejorative nature of the term “sucks,” and that, therefore, a large proportion of Internet users are likely to be confused by “-sucks” domain names.

The Panel squarely rejected this argument as well. Contrary to the decisions of some prior Panels, "[t]his Panel’s opinion is that, at this time, those people who have no appreciation of the pejorative nuance of the word 'sucks' form such an inappreciable part of the modern Internet audience that concern for their sensibilities should not be a factor in the assessment of confusing similarity under paragraph 4(a)(i) of the Policy."

But I think the Panel''s next statement takes the matter a bit too far. According to the Panel: "[T]he Panel concludes that a domain name is 'identical or confusingly similar' to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name. In other words, the issue under the first factor is not whether the domain name causes confusion as to source (a factor more appropriately considered in connection with the legitimacy of interest and bad faith factors), but instead whether the mark and domain name, when directly compared, have confusing similarity." (Emphasis added.)

Based on this language, any domain name that incorporates another's trademark is automatically confusingly similar under the UDRP. That conclusion seems a bit harsh. What if someone registered is that really confusingly similar to Apple's trademark just because it has the term Apple in it? I don't think so.

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