Why Trademark Owners Need Not Fret Over Every Domain Name That ‘Sucks’

Why Trademark Owners Need Not Fret Over Every Domain Name That ‘Sucks’
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Amid ongoing concern about the impending launch of the <.sucks> new top-level domain, trademark owners may find some consolation in a new UDRP decision, in which a panel ruled against the registrant of a domain name containing the word “sucks”.

The decision, Mobile Mini, Inc. v. Derek Carmichael, makes clear that not all registrants of such domain names will be able to defend their rights with a claim that their practices are protected as so-called “gripe sites.” As the panel wrote in that case, “There is no indication in the record of the Respondent’s use or even demonstrable preparations to use the disputed domain name for purposes of legitimate criticism since registering the domain name in 2013.” Instead, the registrant/Respondent apparently had used the disputed domain name only in connection with a website offering it for sale.

The Mobile Mini decision is consistent with the WIPO “Overview” of domain name decisions. That respected and often-cited document tells us that there are two consensus views regarding domain names that contain the word “sucks”:

1. The right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant’s trademark. That is especially the case if the respondent is using the trademark alone as the domain name (i.e., <trademark.tld>) as that may be understood by Internet users as impersonating the trademark owner. Where the domain name comprises the protected trademark plus an additional, typically derogatory term (e.g., <trademarksucks.tld>), some panels have applied View 2 below.

2. Irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is fair and noncommercial.

Both of these views make clear that , despite what many may think, “sucks” domain names often present complicated legal issues.

Indeed, in a recent analysis that I conducted, I found that 62% of domain names containing the word “sucks” resulted in a decision in favor of the trademark owner in UDRP cases at WIPO and NAF. While this transfer rate is much lower than for UDRP decisions overall (about 85% at WIPO), it may be surprising to those who blindly assumed that a UDRP complaint for a “sucks” domain name would be unlikely to succeed.

This should be welcome news for those concerned about the new <.sucks> top-level domain, especially trademark owners who have been contemplating whether to participate in a launch program that has been called “predatory, exploitative and coercive” and has prompted ICANN to ask the Federal Trade Commission for an investigation.

While it is unclear what impact, if any, a <.sucks> top-level domain will have in a UDRP proceeding, the Mobile Mini case surely will be cited as precedent when those disputes arise in the near future.

 

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