You can earn a UDRP for a .SUCKS domain … Sometimes | Dorsey & Whitney LLP


A recent Uniform Domain Name Dispute Resolution (“UDRP”) ruling has provided much-anticipated guidance for challenging .SUCKS domain names. Sanofi v. Privacy Hero Inc./Honey Salt, ltd, which was decided by a panel of three arbitrators from the World Intellectual Property Office (“WIPO”), was the first in a series of decisions to maintain this use of the generic top-level domain (“gTLD”) .SUCKS in combination with another party’s trademark may be similar to the point of confusing and, therefore, may infringe the rights of the trademark owner. Given the unique circumstances of these cases, however, brand owners should not rely on future panels applying the results of these decisions broadly.

Why it sucks to be honey salt. While the respondent, Honey Salt, Inc. claimed that its site was an open forum for the public to discuss complaints protected by the First Amendment, the panel instead agreed with the complainant that because the complaints were anonymous and not dated and did not mention the complainant by name, they were more likely to be a pretext for the respondent’s true purpose for the site than to be a protected speech. Based on the existence of multiple links to third party sites from the website and the Respondent’s admission that the domain name was for sale, the Panel instead concluded that the Respondent’s true objective for the site was to drive traffic to the site and increase buying. price of the underlying domain name. In view of these circumstances, the Panel ordered the transfer of to the Complainant.

To pass a UDRP, the complainant must pass this three-part test:

  1. How the domain name is identical or similar to the point of confusing a trademark or service mark to which the complainant has rights;
  2. Why the defendant should be considered to have no right or legitimate interest in the domain name that is the subject of the complaint; and
  3. Why the domain name should be considered to have been registered and used in bad faith.

For the first part, the respondent argued that the domain name was not identical or similar to the point of confusing the SANOFI brand because “.sucks” is pejorative, specifying that the website was not affiliated with the complainant, but instead contained criticism protected by free speech. The panel rejected this argument, concluding that the domain name incorporated the SANOFI trademark in its entirety and simply added the generic “.sucks” gTLD to it. The panel did not find this addition to preclude a finding of a puzzling similarity.

For the second branch, the respondent asserted that he had legitimate rights or interests in the domain name because it was used to host a review website allowing users to exercise their right to freedom of expression. expression. After noting that the Respondent was a third party with no direct relationship to a person likely to have a real blame, the Committee accepted the Complainant’s assertion that the alleged complaints were unverified and were general and likely constituted a pretext to give the impression that the registration and use of the domain name was legitimate. The Panel also agreed with the Complainant’s argument that actual intent is more likely to increase the price it could receive from the sale of the disputed domain name.

For the third and final branch, the respondent denied having used the domain name in bad faith because of the legitimate aim of providing an open forum for the free exchange of criticism. The respondent added that allowing brand owners to claim bad faith simply because a domain name is not associated with the underlying brand would undermine the purpose of the .sucks gTLD for reviews and comments. . Again, the Panel agreed with the Complainant and ruled that the domain name had been registered in bad faith because it was part of the Respondent’s intention to take unfair advantage of the Complainant’s trademark. by increasing Internet traffic to the associated website and to other websites owned by the Respondent using the .SUCKS domain name. The Respondent admitted to having marketed numerous domain names with .SUCKS domain names. The panel also noted that the tendency of the Respondent’s abusive tapes supported a finding of bad faith. The panel ordered that the domain name be transferred to the complainant.

Rub salt into the proverbial wound. Since the ruling was issued, WIPO has followed suit and ordered domain name transfers or cancellations in thirteen other cases. See, for example, Digicel Caribbean v. Domains By Proxy, LLC / Jamie Mcullan; Alsace Croisières SA c. John Livingstone / Write Place Publications Inc.; and FirstMerit Corporation v. Private registration, / Jon Murrell. All domain names were owned by Honey Salt on behalf of Everything.Sucks for similar websites. For this reason, brand owners may wish to determine whether Honey Salt or other platforms with a similar business model have acquired their brands under .SUCKS domain names. With the number of transfers and ongoing business for .SUCKS domain names, maybe now is the time to put more salt in Honey Salt’s .SUCKS plague.

Limits on how this .sucks decision. The Sanofi The panel was careful to distinguish this case from previous decisions in which the websites in question contained genuine reviews aimed at specific brand owners and did not sell anything, including the domain name itself, or did not attempt to sell it. ‘get commercial gain. In such cases, panels usually dismissed complaints on the grounds that they had not established the second prong (no legitimate interest in the domain name) or the third prong (that the domain name was incorrectly registered). faith) necessary to prevail in a UDRP. The Sanofi decision does not call into question these precedents. So although it .SUCKE to be Honey Salt, trademark owners should not rely on future panels that decide it .SUCKE to operate a real blame site.

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