The National Arbitration Forum maintains a Domain Name Dispute Proceedings and Decisions searchable database and of course I couldn’t help poking around.
Domains Suck
I searched for cases involving domain names with “suck” or “sucks” in them and turned up 38 cases. With 5 withdrawn and 3 split, that left a nice even 30 cases to look at. I exported the data into excel and sorted by decision and date and looked at the latest 5 or so decisions either denied or where the domain was ordered transferred.
To have a domain ordered transferred, then three criteria have to be met:
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be canceled or transferred:
(1) the domain name registered by the Respondent is 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.
My preconception was that no.3 would be most subjective and therefore the most controversial. Interesting enough, it was no.1 that created the greatest disparity of views. The key question is whether adding the word “sucks” to the end of a trademark would make it “confusingly similar” to the trademark.
Not confusingly similar
The argument that adding “sucks” is not confusingly similar includes comments such as:
“Similarity of marks or lack thereof are context-specific concepts. In the Internet context, consumers are aware that domain names for different Web sites are quite often similar, because of the need for language economy, and that very small differences matter.” “Similarity of marks or lack thereof are context-specific concepts. In the Internet context, consumers are aware that domain names for different Web sites are quite often similar, because of the need for language economy, and that very small differences matter.”
“While often the inclusion of a generic term will not serve to distinguish a domain name from a trademark, in the case of the term ‘sucks,’ the addition of the generic term does reduce the likelihood of confusion.”
Confusingly similar
The counter argument includes:
“concluding that the term “sucks” added to a mark does not defeat the complainant’s confusing similarity argument, even if it may defeat the complainant’s argument on the other issues in the case”
“by using Complainant’s marks in its domain names, Respondent makes it likely that Internet users entering ‘Cabela’s’ into a search engine will find [<cabelassucks.com>] in addition to Complainant’s site <cabelas.com>.”
“finding the domain name <vivendiuniversalsucks.com> was confusingly similar to the complainant’s VIVENDI UNIVERSAL mark, because non-English speakers would associate the domain name with the owner of the trademark”
Arbitration panels also commented on previous panel findings such as this:
“The logic of panels who feel non-English speakers will misunderstand the meaning of the word “sucks” escapes this Panel. “Sucks” is a pretty short word and it isn’t a compliment. Considering most beginning linguists learn curse words first, it is likely anyone with any command of the English language knows “sucks” doesn’t have a good connotation.”
Confusingly similar is confusing
So it appears that adding the word “suck” or “sucks” to a domain leads to differing opinions relating to trademark when in dispute. Better guidance or clearer guidelines would help clarify this gray area in domain name law. The right to free speech, to criticize a company by using websites such as these (that include the trademark in the domain name) is not a given. While these are blatant uses of trademarks in domain names, inadvertent use can also lead to difficulties. I wonder how many have checked their domain names against the trademark database to see if they are infringing?
If you want to check out the database, you can find it here: Domain Name Dispute Proceedings and Decisions
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