Saturday, July 8, 2017

If something sucks, better to say so than remain quiet

In Philip Morris USA Inc. v. Computer Services, Inc., WIPO Case No. D2017-0847 (Peter L. Michaelson, June 15, 2017), the Panel required the transfer of marlborosucks.com to Complainant owner of the MARLBORO trademark for cigarettes. Philip Morris is one of the, if not the, most active complainants in UDRP matters handled by WIPO, and it secures the transfer of challenged domains nearly every time. In this instance, given that the domain name used the term "sucks," Respondent registered and owned the disputed domain for nearly 18 years (!!!), and Respondent filed a Response to the Complaint, at first glance I thought Respondent had a fighting chance here. Needless to say, its defenses blew up in smoke.

In examining whether the disputed domain is identical or confusingly similar to a trademark in which Complainant has rights, the Panel noted the well-recognized rule that adding the term "sucks" to another's trademark, with the mere addition of a gTLD like ".com," results in a disputed domain that is identical or confusingly similar to a trademark in which a complainant has rights. In an attempt to set a World Record for longest string cite, the Panel cited a whopping 35 UDRP cases in support of this well-recognized point.

Moving to the second factor to be proved in a UDRP dispute, namely, that Respondent has no rights or legitimate interests in the disputed domain, this factor is where it became more clear Respondent was going to lose this case. Of most significance, the Panel emphasized that "Respondent never did and does not now use nor has ever made any demonstrable preparations to use the disputed domain name to resolve to an operational website through which it does or will make bona fide offerings of any goods or services," and then held that "[p]assively holding a domain name, which infringes the trademark rights of another, for nearly an 8 year period does not qualify, on any basis, as a bona fide offering of goods and services." Interestingly, the Panel noted the 8 year period right after stating that Respondent has registered and owned the disputed domain since 1999, which would be an 18 year period. As such, it is not clear if passive holding for 8 years results in no legitimate rights, or if the Panel meant to say 18 throughout the decision.

Turning to the final factor to be proved in a UDRP dispute, namely, bad faith registration and use of the disputed domain by Respondent, the Panel found bad faith as to both. But first, the Panel acknowledged that owning a "sucks" domain is often permitted under the UDRP and not actionable: "The disputed domain name, being a 'sucks'-based name, could, under a proper set of circumstances, legitimately serve as an address of a noncommercial, operational website, e.g., a so-called gripe site, through which the Respondent posts content critical of the Complainant and/or its cigarette products offered under its mark MARLBORO." In this instance, "[h]owever, none of those circumstances has apparently ever existed here and certainly do not now exist."

To its credit, Respondent fought as best it could with the bad fact that it had never used the disputed domain, and cited a bunch of federal court cases arguing that owning a "sucks" domain is permissible. The Panel, however, was not impressed given the facts before it: "Each of the federal cases which the Respondent cites for the proposition that free speech rights attach to a sucks-based domain name is not only clearly distinguishable from the present facts but is irrelevant to those facts simply because in each such case the name at issue was actually used by a defendant as an address of an operational noncommercial website providing critical comment, an aspect totally missing here." Respondent also claimed it had "plans" to use the disputed domain. but failed to identify "with any degree of specificity whatsoever, what those plans are, and when and how they will be implemented."

And so, the Panel ordered the transfer of the domain name, despite it being owned, paid for, and passively held by Respondent for nearly 18 years. Sucks for the Respondent, but the lesson remains for all others-- if you own or plan to register a "sucks" domain, better use it within a reasonable period of time to complain about the trademark owner or you very well may lose it if challenged.