The UDRP Blog™

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...

In Red Bull GmbH v. Carl Gamel , WIPO Case No. D2008-0253 ( Debrett G. Lyons, April 14, 2008), the Panel required the transfer of redbullsucks .com 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. Fi...