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Generic Top Level Domain Name (gTLD) Decisions |
Advanced Internet Technologies, Inc. v.
Mark Bianchi d/b/a Dayton Internet d/b/a Dayton Internet Design Inc.
Claim Number: FA0403000245965
PARTIES
Complainant
is Advanced Internet Technologies, Inc.
(“Complainant”), represented by James H.
Baker, Esq., 421 Maiden Lane,
Fayetteville, NC 28301.
Respondent is Mark Bianchi d/b/a Dayton Internet d/b/a Dayton Internet Design Inc.
(“Respondent”), 4110 Locus Bend Drive, Dayton, OH 45440.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <aitsucks.com>
and <aitsucks.net>, registered with Go Daddy Software, Inc.
PANEL
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in
serving as Panelist in this
proceeding.
Jeffrey N. Mausner as
Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on March 17, 2004; the Forum received
a hard copy of the
Complaint on March 18, 2004.
On
March 18, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that
the domain names <aitsucks.com> and <aitsucks.net> are registered with Go Daddy Software, Inc.
and that the Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that
Respondent is bound by the Go Daddy Software, Inc. registration agreement and
has thereby
agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy.
On
March 22, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of April 12,
2004 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent. A timely
Response was received and determined to be complete on April 12, 2004.
On April 28, 2004, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Jeffrey N.
Mausner as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant alleges the
following:
Complainant
is a North Carolina corporation engaged primarily in the business of designing
and hosting Internet websites for businesses.
Complainant’s subsidiary, The Name It Corporation d/b/a
“nameservices.net,” is an ICANN-accredited registrar of domain names. Complainant owns several U.S. trademark and
service mark registrations, two of which are at issue in this Complaint ---
AIT, INC.®
and AIT®. Complainant’s
first use of these two marks in commerce was March 1, 1996.
Complainant
has spent several million dollars in advertising and promoting AIT, INC.® and
AIT® services in a wide range of media,
including television, radio, print, and
online. Complainant uses and promotes
the AIT, INC.® and AIT® marks extensively on the Internet. Information regarding AIT, INC.® and AIT®
services may be accessed at the following domain name addresses: <AIT.com>, <AIT.us>, and
<AITcom.net>. The AIT, INC.® and
AIT® brands are further promoted through magazines for Internet and computer
enthusiasts. Due to gradually increasing
recognition of the AIT, INC.® and AIT®
services and marks, Complainant has recently expanded use of the marks to
domain name registration
services and computer/Internet instruction
classes. Complainant’s products and
services are advertised, promoted, and sold throughout the United States and
the world. By virtue of Complainant’s
longstanding use of the marks, Complainant’s strong reputation for quality
products and services, its name
recognition within its industry and elsewhere,
and brand awareness, the AIT, INC.® and AIT® marks have acquired a significant
degree
of public recognition and distinctiveness as symbols of the source of
quality services offered by Complainant.
Complainant
alleges that Respondent is an individual doing business as “Dayton Internet”
and also as “Dayton Internet Design, Inc.”
Respondent’s primary business website is <daytoninternet.net>. Respondent’s business homepage at
<daytoninternet.net> announces to the public that “DaytonInternet.net
builds and hosts websites
for small business.”
Complainant claims that Respondent is thus a business competitor of
Complainant in the web-design and web-hosting fields.
Respondent
is a former customer of Complainant.
More specifically, using a previous business name (“Productive Web
Design”), Respondent bought Complainant’s web-related services
and in turn
resold them to Respondent’s customers, as a “reseller.” In 2002, the business relationship between
Respondent and Complainant ended in a manner unsatisfactory to both parties.
The
<aitsucks.com> website is identical to the one appearing at <aitsucks.net>. The website takes the form of an online
“bulletin board.” The bulletin board
“Admin,” or administrator, is self-identified within the website as the
Respondent.
Complainant
contends that the domain names at issue are confusingly similar to
Complainant’s marks because the most salient portion
of each domain name
consists of the word AIT®. The fact
that Respondent has added the slang term “SUCKS” does not distinguish the
domain names from Complainant’s marks.
Respondent’s
domain name <aitsucks.net> was first registered on August 6, 2002.
Respondent’s domain name <aitsucks.com> was first registered on
February 4, 2003. Both registrations
occurred shortly after the dissolution of the commercial relationship between
Respondent and Complainant. Respondent
sent Complainant an e-mail warning Complainant to “be prepared” on the same
date as the registration for the <aitsucks.net> domain name. As a former customer and reseller of
Complainant, Respondent was necessarily aware of Complainant’s marks and of
Complainant’s rights
in them, before Respondent registered the domain names at
issue. Respondent never used the terms
AIT® or AIT, INC.®, or the domain names that are the subject of this Complaint,
prior to August 6,
2002. Respondent has
never used the domain names in connection with a direct offering of goods or
services.
Complainant
contends that the textual material on the homepage of the Respondent’s websites
attempts to camouflage the websites as
a forum for free expression of
commercial critiques of Complainant’s services, without a profit motive.
Complainant contends, however,
that in practice, Respondent’s use of the
websites argues strongly that Respondent’s primary purpose in registering and
using the
domain names is to disrupt the business of a former business associate
and current business competitor.
Respondent’s use further appears to be part of a personal vendetta
against the Complainant, which is not free of profit motive. In support of these contentions, Complainant
states:
1. Respondent uses the domain names to provide
a forum in which business competitors or disgruntled former or current
employees of Complainant
can denigrate the services provided by
Complainant. Complainant provides
examples attached as Exhibit K to its Amended Complaint. Complainant further contends that Respondent
is thus using the domain names to tarnish the trademarks or service marks at
issue. In so doing, Respondent is
making unauthorized use of the AIT, INC.® and AIT® marks in a manner that
tarnishes the marks, and the
services whose source the marks identify.
2. Complainant’s services are unfavorably
contrasted with allegedly better services found elsewhere, generally with
VenturesOnline.com,
LLC, or <venturesonline.com>. Two examples are attached to the Amended
Complaint as Exhibit L. In both
examples, acting in the role of “Admin,” Respondent admits that
<venturesonline.com> is the hosting provider whose services
Respondent
currently resells. Complainant alleges
on information and belief that Respondent gains a “referral” fee for each customer
thus diverted from Complainant
and re-directed to Ventures Online. The web-hosting industry commonly uses such
“referral” business models, and a customer diverted from Complainant thus
represents a
commercial benefit, or profit, to Respondent if that customer can
be persuaded to move to <venturesonline.com>.
B. Respondent alleges the
following:
a. The domain names registered by the
Respondent, <aitsucks.com > and
<aitsucks.net>,
are not identical and/or confusingly similar to the Complainant’s
trademarks. It has been determined in previous decisions
of courts, panels, and this Forum that adding the term "sucks"
actually reduces
the likelihood of confusion. It is plainly evident to a viewer
that <aitsucks.com> and <aitsucks.net> are not
sponsored or
endorsed
by the trademark owner. Respondent
cites a number of decisions of Uniform Domain Name Dispute Resolution Panels
and Courts holding that no confusion resulted
from a domain name combining a
trademark with the word “sucks” or other language indicating that the domain
name is not affiliated
with the trademark owner. Respondent contends that if none of those domain names were
considered confusingly similar, then neither should <aitsucks.com>
or <aitsucks.net>.
Respondent
contends that if his domain names were confusingly similar to Complainant’s,
his domain names would be ranked near or above
Complainant’s trademarked domain
names on the most popular Internet search engines. However, when doing a search
for the term “AIT”,
the Respondent’s web site is ranked very far below
Complainant’s site. According to “Neilsen Netratings,” the three most popular
search engines are 1) Google; 2) Yahoo; and 3) MSN. On April 8, 2004, Complainant used these three search engines to determine the rankings of both
Complainant’s and Respondent’s web sites. The term “AIT” was entered
into each
search engine. On MSN, Complainant’s site ranked number 1; Respondent’s site
ranked number 77. On Yahoo,
Complainant’s
site ranked number 2; Respondent’s site ranked number 35. On Google (the most
commonly used search engine), Complainant’s
site ranked number 4; Respondent’s
site was not listed in over 650 listings. Respondent concludes that anyone
searching for Complainant’s
site with their trademark “AIT” would easily find Complainant’s
site before (if ever) finding Respondent’s site, thereby making the
claim that
Respondent’s domain names are confusingly similar erroneous.
b.
Respondent claims that he has rights and legitimate interests to the domain
names
<aitsucks.com>
and <aitsucks.net>. He
claims that he is making legitimate, noncommercial, and fair use of the domain
names to express criticism and commentary pursuant
to his First Amendment
Rights, primarily the Right of Free Speech. It is not
uncommon
for citizens to make use of protest sites to express their displeasure with a
particular entity. There are literally thousands
of protest sites on the
Internet. Respondent cites a number of
UDRP Panel Decisions in which criticism and commentary were found to be
legitimate interests.
c. Respondent claims that <aitsucks.com>
and <aitsucks.net> were not registered in bad faith and are not
being used in bad faith. Respondent claims that he did not register the domain
names
with the intent to profit from selling, renting, or
otherwise
transferring the domain names to Complainant or any competitor of Complainant.
He claims that no evidence has been brought
to light by Complainant to
demonstrate otherwise. The domain names
were not registered to prevent Complainant from using its trademark in domain
names. As a matter of fact, Complainant
owns the following domain names that
include the term “AIT”: <ait.com>, <aitcom.net>,
<aitcom.com>, <aitdomains.com>,
and <aitdomains.net>. He
points out that he is not even preventing Complainant from creating a protest
site of its own since
Complainant has also registered <aitsucks.org>.
Respondent claims that he did not register his domains to disrupt the business
of the Complainant.
Respondent
claims that although Complainant suggests that Respondent is a competitor, this
simply is not true. Respondent operates
a home business whose primary function
is designing web sites for a dozen and a half clients. Respondent offers, as a
convenience
to customers, limited web site hosting via a reseller account at
Ventures Online. Respondent does not require that customers host
web sites on
the Ventures Online servers. Respondent offers design, development, and
consulting services with, or without, web site
hosting. Complainant’s primary
business is hosting of web sites via a referral program designed for thousands
of home businesses
such as Respondent’s. Respondent does not offer such a
referral program. Respondent does not own the infrastructure required to
compete
with Complainant. Complainant offers a multitude of services that
Respondent, as a home business, cannot provide, including dedicated
servers,
collocation services, a reseller program, Internet access, IT consulting, and
more. Complainant added web design to its
list of services on January 19th,
2004, more than a year after Respondent registered the domain names in
question.
Respondent
claims that its domain names are not used for commercial gain. The domain names
<aitsucks.com> and <aitsucks.net> are not redirected
to any other sites, commercial or otherwise, including Respondent’s business
<DaytonInternet.net>. There are
no links from those sites to Respondent’s websites, <DaytonInternet.net>
or <DaytonDesign.com>. Therefore, Respondent
is not using the protest
site to divert business from Complainant’s business to Respondent’s. Respondent
contends that the domain
names were registered solely for Respondent and any
other member of the general public to discuss their opinions of Complainant’s
products and services through the web site forum.
Respondent
claims that his protest site in no way tries to confuse users into thinking
that they are at Complainant’s site. The header
title of the web site home page
says “AIT – Advanced Internet Technologies – Protest Site Critical of the AIT
Web Hosting.” The home
page plainly states: “Do not be confused, this is NOT
the official AIT website!” There is
also a disclaimer that states: “This website is in no way associated with
Advanced Internet Technologies, AIT, AITCOM.net,
AIT Domains, The Name It Corporation,
any of its employees, or affiliates. Advanced Internet Technologies, AIT,
AITCOM.net, AIT Domains,
and The Name It Corporation are trademarks of their
respective companies, as are any and all other marks that are used on these
pages.
Any use of these trademarks on this web site including, but not limited
to, the domain name are used for criticism and not for profit.”
Respondent
disputes the allegation that he is profiting from a referral program offered by
Ventures Online. While Respondent concedes
that he would suggest Ventures
Online to visitors to the online forum, he claims that he did so solely based
on his own satisfaction
with the hosting company. He states that he only
offered his advice when requested to do so by a visitor to the site. Respondent
states that he did not gain knowledge of the Ventures Online referral program
until it was brought to his attention by the Complaint
in this proceeding. To
date, Respondent has not received credit for even one referral to Ventures
Online. In an e-mail to a representative
of Ventures Online, Respondent
requests that no credit should ever be given to him in exchange for a referral.
The Ventures Online
representative affirmed in an e-mail attached to the
Response as Exhibit I that the Respondent would never in the future receive
any
such credit for a referral.
Respondent
also disputes the allegation that “…Respondent permits and encourages the
posting of material which has no purpose but
to besmirch Complainant’s good
name and defame Complaint’s principle officers…” Visitors to the site can
plainly read disclaimers
on the web site regarding posts left in the online
forum: 1) “The views in the AITSUCKS.COM/AITSUCKS.NET Forum are those of the
individuals
that post in the forum and not necessarily those of
AITSUCKS.COM/AITSUCKS.NET.” 2) “Leave
your AIT Horror Stories here. Do NOT leave anything pertaining to the personal
lives of AIT management, employees, or their
families. Any such posts WILL be
deleted!” Respondent cannot be held liable for posts left by the visitors to
the site, but – in
fairness to the management, employees, and families of AIT -
does indeed delete posts
from
the forum that could be considered defamatory.
FINDINGS AND DISCUSSION
For Complainant
to prevail and have the disputed domain names <aitsucks.com> and
<aitsucks.net> transferred to it, Complainant must prove all of
the following elements, pursuant to the Uniform Domain Name Dispute Resolution
Policy (UDRP) paragraph 4(a)(i-iii):
(i) Respondent’s
domain name is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights;
(ii) Respondent
has no rights or legitimate interests in respect of the domain name; and
(iii)
Respondent’s domain name has been registered and is being used in bad faith.
(i)
Are Respondent’s domain names confusingly similar to Complainant’s
service marks?
Respondent’s
domain names in issue are <aitsucks.com> and <aitsucks.net>. Complainant’s service marks are AIT® and
AIT, INC.®. Complainant filed a registration application for the AIT service mark
with the United States Patent and Trademark Office (“USTPO”)
on December 16,
1998 for use in connection with “[h]osting and implementing web sites for
others.” Registration of the AIT mark
was granted on January 18, 2000.
Complainant claims the AIT mark has been used in commerce since March 1,
1996. Complainant also filed a
registration application with the USPTO for the AIT, INC. service and trademark
on June 20, 1997 for use
in connection with “design and maintenance of websites
for others on a global computer network” and “computer software for the
creation
and maintence of websites on a global computer network.” Registration of the AIT, INC. mark was
granted on December 8, 1998.
Complainant claims the AIT, INC. mark has been used in commerce since
March 1, 1996. Complainant has
established rights in the AIT and AIT, INC. marks under the Uniform Domain Name
Dispute Resolution Policy (UDRP).
See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002)
(registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption).
Respondent does not contest that Complainant has rights in the AIT and
AIT, INC. marks. Rather, Respondent
argues that the disputed domain names <aitsucks.com> and <aitsucks.net>
are not confusingly similar to Complainant’s marks.
Respondent takes
the position that the addition of the term “sucks” in the domain names
eliminates the possibility of confusion.
There is support, in both UDRP decisions and court cases, for the
proposition that the addition of the word “sucks” to a mark eliminates,
or at
least reduces, the likelihood of confusion between the domain name and the
mark. See Wal-Mart Stores, Inc. v. wallmartcanadasucks.com, 2000-1104 (WIPO
Nov. 23, 2000) (“walmartcanadasucks.com itself makes it clear that the Web site
is not sponsored by the complainant.”);
Lucent Technologies, Inc. v.
Lucentsucks.com, 95 F. Supp 2d 528, 535 (E.D.Va. 2000) (“[T]he average
consumer would not confuse lucentsucks.com with a web site sponsored by
plaintiff.”); McLane Co. Inc. v. Craig, D2000-1455 (WIPO Jan. 11, 2001)
(“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. It is unlikely
that a
viewer would confuse the domain name ‘mclanenortheastsucks.com’ with the
trademark mclane northeast. Instead, it should be
evident to a viewer that any
site reached using ‘mclanenortheastsucks.com’ is not sponsored or endorsed by
the trademark owner.”);
Lockheed Martin Corp. v. Parisi, D2000-1015
(WIPO Jan. 26, 2001) (“Both common sense and a reading of the plain language of
the Policy support the view that a domain
name combining a trademark with the
word ‘sucks’ or other language clearly indicating that the domain name is not
affiliated with
the trademark owner cannot be considered confusingly similar to
the trademark.”); Asda Group Limited
v. Kilgour, D2002-0857 (WIPO Nov. 11, 2002) (“The Panel believes that by
now the number of Internet users who do not appreciate the significance
of the
‘-sucks’ suffix must be so small as to be de minimis and not worthy of
consideration.”); Talk Radio
Network, Inc. v. Todd Fotuar, FA 0304000155181 (Nat. Arb. Forum June 24,
2003).
However, there
are other decisions finding that domain names combining the trademark with the
word “sucks” can result in confusing
similarity. These decisions are generally based upon two considerations: 1)
initial interest confusion between the respondent’s website and the
complainant’s marks resulting from use of search engines, (or if not confusion,
at least diversion to the respondent’s website out
of curiosity) and 2) the
fact that not all users of the Internet will understand the English term
“sucks” to distinguish the domain
name from the trademark owner.[1] See,
e.g., Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, D2000-0477,
page 11 (WIPO July 20, 2000) (“Internet users with search engine results
listing Respondent’s domains are likely to be
puzzled or surprised by the
coupling of Complainant’s mark with the pejorative verb ‘sucks.’ Such users, including potential customers of
Complainant, are not likely to conclude that Complainant is the sponsor of the
identified
websites. However, it is
likely (given the relative ease by which websites can be entered) that such
users will choose to visit the sites, if
only to satisfy their curiosity. Respondent will have accomplished his
objective of diverting potential customers of Complainant to his websites by
the use of domain
names that are similar to Complainant’s mark.”); Vivendi
Universal v. Sallen, D2001-1121 (WIPO Nov. 7, 2001) (domain name
<vivendiuniversalsucks.com> was confusingly similar to Complainant's
VIVENDI UNIVERSAL
mark, because non-English speakers would associate the domain
name with the owner of the trademark)[2];
Bloomberg
L.P. v. Secaucus Group, FA 97077 (Nat. Arb. Forum June 7, 2001), page 5
(“By using the Complainant’s marks in its domain names, the Respondent makes it
likely that Internet users entering ‘Bloomberg’ into a search engine will find
<michaelbloombergsucks.com> in addition to the
Complainant’s sites. The requirement of likelihood of confusion
is satisfied by the fact that the public searching for the Complainant’s
products and services
will be faced with the domain name found by search
engines, and will divert potential users of the Complainant’s products and
services
by using the Complainant’s mark.”); ADT
Services AG v. ADT Sucks.com, D2001-0213 (WIPO Apr. 23, 2001) (exploring the
difference of opinion among Panels on "sucks" domain name disputes
and
concluding that use of the "sucks" suffix does not defeat
Complainant's confusing similarity argument); Cabela’s Inc. v. Cupcake
Patrol, FA 95080 (Nat.
Arb. Forum Aug. 29, 2000) (finding that complainant, owner of the federally
registered trademark ‘Cabela’s,’ and
user of the domain name
<cabelas.com>, was entitled to relief under the UDRP for the bad faith
registration and use of the
domain name <cabelassucks.com> because “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>”);
Direct Line Group Ltd v. Purge I.T., D2000-0583
(WIPO Aug. 13, 2000) (finding that domain name
<directlinesucks.com> was confusingly similar to complainant’s
DIRECT LINE mark and stating, “[s]ome will treat the additional
‘sucks’ as a
pejorative exclamation and therefore dissociate it after all from the
Complainants; but equally others may be unable
to give it any very definite
meaning and will be confused about the potential association with the
Complainants.”); InfoSpace, Inc. v. Sunwave Communications c/o Donna McCole,
FA 0309000198015 (Nat. Arb. Forum Nov. 10, 2003).[3] See
also the dissenting opinion in Lockheed Martin Corp. v. Parisi (“I
respectfully dissent from the conclusion that a domain name combining a
trademark with the word ‘sucks’ cannot be considered
as ‘confusingly similar’
to the trademark under the Policy, paragraph 4(a)(i).”)[4]
Some of these
cases take the view that even if use of the “sucks” domain name would not
result in any instances of actual confusion,
there should still be a finding of
confusing similarity simply because the marks are so similar. These cases seem to require a showing of
likelihood of diversion, rather than likelihood of confusion. For example, Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, D2000-0477,
page 11 (WIPO July 20, 2000) held that although Internet users are not likely
to conclude that the complainant is the
sponsor of the “sucks” website, it is
enough to establish confusing similarity that such users will choose to visit
the site, if
only to satisfy their curiosity.
See also David W. Quinto, Law of the Internet, Aspen
Publishers, New York, Section 4.05(D).
I am of the view
that this latter approach is the better one, for several reasons. First, it is very difficult, if not
impossible in some cases, to determine in a UDRP proceeding whether there would
actually be confusion. There is no
discovery provided for in these proceedings.
Furthermore, these proceedings are designed to be an efficient,
streamlined method of deciding domain name disputes. The parties should not be put through the trouble and expense of
obtaining surveys regarding confusion.
Moreover, domain
names are not trademarks.[5] The test that is used to determine
likelihood of confusion for trademarks (such as the Sleekcraft factors
in the United States Court of Appeals for the 9th Circuit and the Polaroid
factors in the 2nd Circuit, and similar tests in other countries)
is not necessarily applicable to domain names.
In this case,
the following factors could lead to confusion:
1. The initial and dominant portions of both
the domain names and the marks are the same: “AIT.”
2. AIT sells its services both within and outside
the United States. The term “sucks” may
not be understood by all, particularly non-English speakers, to designate a
website critical of the service mark
owner.
See The Stop & Shop
Supermarket Company v. Anderson, FA 133637, page 4 (Nat. Arb. Forum Jan. 8,
2003) (“The Internet is a forum that reaches a worldwide audience, many of
which do not
speak the English language; for those Internet users, the word
‘sucks’ would not sufficiently eliminate any confusion between Complainant’s
mark and the disputed domain name.”). See also ADT Services AG v. ADT Sucks.com,
D2001-0213 (WIPO Apr. 23, 2001.)
3. The parties are competitors in the
web-design business, at least on a small scale.
However, in the
present case, there are several factors which tend to negate confusion:
1. There are a large number of company
names, trademarks, and domain names which incorporate the letters AIT.
2. Respondent has extensive and clearly
visible disclaimers on his website, which make it clear to a consumer once he
or she enters the
site that it is not affiliated with the Complainant. The header states that it is a “Protest Site
Critical of the AIT Web Hosting.” The home page states: “Do not be confused,
this is
NOT the official AIT website!”
There is also a disclaimer which states: “This website is in no way
associated with Advanced Internet Technologies, AIT, AITCOM.net,
AIT Domains,
The Name It Corporation, any of its employees, or affiliates.”
3. Initial interest confusion is minimized
by the fact that search engine results for the term “AIT” rank AIT’s website in
the top 4
websites returned, while ranking the Respondent’s websites at number
35 or lower. (This is due, in part, to
the large number of companies using the letters AIT in their names.) A consumer searching for AIT’s website by
entering the term “AIT” into a search engine would therefore most likely find
AIT’s website
and stop his or her search before seeing the listing for
Respondent’s websites. Compare Cabela’s Inc. v. Cupcake Patrol,
FA 95080 (Nat. Arb. Forum Aug. 29, 2000), where it was found that it was likely
that Internet users entering “Cabelas” into a search
engine would find
<cabelassucks.com> in addition to the complainant’s site
<cabelas.com>. Furthermore, the
listing for Respondent’s website in the search engine results specifically
states that the site is a Protest Site
Critical of AIT, which will prevent true
confusion (as opposed to merely diversion) even if a consumer continues to read
the search
result listings after finding AIT’s website.
4. Complainant has not produced any evidence
of actual confusion. However, this does
not lead to an inference that there has been no actual confusion, since
Complainant has not obtained discovery
from Respondent on this issue.
Many of these
factors could easily change. Respondent
could eliminate the disclaimers.
Respondent’s website could move up in the search rankings, if Respondent
adds text, meta tags, or links to or from his website, or
makes arrangements
with some search engines to list his website at a higher ranking. The ranking of Respondent’s website may even
change for reasons beyond his control.
A determination of whether there is or could be confusion by Internet
users is therefore very difficult to make, and could easily
change if any of
the factors set forth above change.
I therefore
believe that there should be an objective, bright line test for confusing
similarity. A domain name should be
found to be confusingly similar to a complainant’s mark when the domain name
incorporates the mark, regardless
of the presence of additional words or
letters such as “sucks.” See Wal-Mart
Stores, Inc. v. MacLeod, WIPO Case No. D2000-0662, Sept. 19, 2000.
Any domain name consisting of a protectable trademark plus the word
“sucks” is therefore confusingly similar, under Uniform Domain
Name Dispute
Resolution Policy paragraph 4(a)(i).
This approach
allows the panelist to reach the proper balance between preventing commercial
or bad faith use of a domain name, and
allowing true criticism which should be
protected by free speech guarantees. See
David W. Quinto, Law of the Internet, Aspen Publishers, New York,
Section 4.05(D)(6), page 4-26.19. As
noted above, in order to prevail in a UDRP domain name dispute, a complainant
must prove not only that there is confusing similarity,
but also that the
respondent has no rights or legitimate interests in the domain name and that
the respondent’s domain name has been
registered and is being used in bad
faith. A finding that a <company
name sucks> domain name is confusingly similar allows the panel to move on
to the proper inquiry in
this type of case – whether the respondent has a right
to use the domain name and whether he is using the domain name in bad faith,
for example for commercial purposes rather than pure criticism. As stated in Koninklijke Philips
Electronics N.V. v. Kim, D2001-1195, page 3 (WIPO): “If such a domain name
is genuinely registered and used for the purposes of criticism of the brand,
the
second and third requirements which the Complainant has to establish will
not be met. The Policy is directed
against abusive registration of domain names; not free speech.”
The opposite
view – that a “sucks” domain name is not confusingly similar -- would result in
the respondent being able to keep the
domain name even if there is clearly bad
faith and no legitimate use. M. Scott
Donahey gives the following example in Divergence in the UDRP and the need
for Appellate Review, J. Internet Law, May 2002:
“[I]f
‘[mark] sucks’ domain names were never found confusingly similar, complainants
would always fail to establish the first element. This would create a haven for cybersquatters. For example, Pepsi could register cokesucks.com
and have it resolve to Pepsi’s website.
Since cokesucks.com would never be found confusingly similar,
Pepsi would be able to profit commercially from the use of its competitor’s
mark.”
See Asda
Group Limited v. Kilgour, D
2002-0857 (WIPO Nov. 11, 2002), where the panelist felt constrained to decide
in favor of respondent on the issue of confusing similarity,
even though there
was bad faith.
I
therefore conclude that Complainant has established the first element of
paragraph 4(a), confusing similarity between the marks
and the domain names.
(II) DOES RESPONDENT HAVE RIGHTS OR LEGITIMATE
INTERESTS IN THE DOMAIN NAMES?
The UDRP lists
some of the factors that a Panel may consider in determining if a respondent
has rights or legitimate interests in
a domain name. Paragraph 4(c) of the UDRP provides:
Any of the
following circumstances, in particular but without limitation, if found by the
Panel to be proved based on its evaluation
of all evidence presented, shall
demonstrate respondent’s rights or legitimate interests to the domain name for
purposes of Paragraph
4(a)(ii):
(i) before any
notice to respondent of the dispute, respondent’s use of, or demonstrable
preparations to use, the domain name or a
name corresponding to the domain name
in connection with a bona fide offering of goods or services; or
(ii) respondent
(as an individual, business, or other organization) has been commonly known by
the domain name, even if respondent
has acquired no trademark or service mark
rights; or
(iii) respondent
is making a legitimate noncommercial or fair use of the domain name, without
intent for commercial gain to misleadingly
divert consumers or to tarnish the
trademark or service mark at issue.
Respondent does
not have rights or legitimate interests in the domain names in the common
manner (as set forth in paragraphs (i) and
(ii) above) of having used a similar
mark in connection with the sale of goods or services, thus creating trademark
rights of its
own. Such a situation
would exist, for example, if the manufacturer of Delta Faucets registered the
domain name <delta.com>, and
was challenged by Delta Airlines.
Rather,
Respondent claims that he is making legitimate, noncommercial, and fair use of
the domain names to express criticism and commentary
pursuant to his First
Amendment Rights, primarily the Right of Free Speech. Court and UDRP panel
decisions affirm that authentic
criticism websites are indeed legitimate
interests supporting the use of domain names.
See L.L. Bean, Inc. v. Drake
Publishers, Inc., [1987] USCA1 49; 811 F.2d 26 (1st Cir.), cert. denied, 483 U.S. 1013 (1987); Savin Corp. v. savinsucks.com, FA 103982, at page 9 (Nat. Arb.
Forum Mar. 5, 2002); Mclane Co. Inc. v.
Craig, D2000-1455 (WIPO Jan. 11,
2001) (“[P]rotest and commentary is the quintessential noncommercial fair use
envisioned by the Policy.”);
Bloomberg
L.P. v. Secaucus Group, FA 97077
(Nat. Arb. Forum June 7, 2001) (“The exercise of free speech for criticism and
commentary also demonstrates a right or
legitimate interest in the domain
name.”); Compusa Mgmt. Co. v.
Customized Computer Training, FA
95082 (Nat. Arb. Forum Aug. 17, 2000) (“Respondent’s First Amendment right to
offer criticism of the goods and services provided
by Complainant via the
domain names <stopcompusa.com> and <bancompusa.com> are as
legitimate as any commercial activity.”).
Such websites
should, in fact, be deemed legitimate under the First Amendment and similar
free speech guaranties in other countries.
While such a website containing harsh criticism of a company’s goods and
services may in fact tarnish the reputation of the company
involved, that is
not the type of tarnishment that paragraph 4(c)(iii) is referring to. The
tarnishment referred to must result from
likelihood of confusion between the
complainant’s mark and the respondent’s domain name, not legitimate criticism. Savin Corp. v. savinsucks.com, FA
103982, page 10 (Nat. Arb. Forum Mar. 5, 2002).
While it may be
argued that Respondent could run a legitimate criticism website without using a
domain name incorporating Complainant’s
mark and the term sucks, it appears
that such a domain name is becoming standard for criticism websites. In fact, many companies have attempted to
preempt such websites by registering the <company name sucks> website
themselves (as
Complainant did for the <aitsucks.org> website). While the places that free speech may be
exercised are not unlimited (see, e.g., Lloyd Corp. v. Tanner, [1972] USSC 148; 407 U.S.
551 (1972) (“this Court has never held that a trespasser or an uninvited guest
may exercise general rights of free speech on property
privately owned and used
nondiscriminatorily for private purposes only.”); Cox v. New Hampshire, [1941] USSC 78; 312
U.S. 569 (1941)), the <company name
sucks> domain should be open for such free speech, so long as the website is
not used for any other
purpose, such as for commercial gain, and so long as the
website does not misleadingly divert
consumers. It may, in fact, become
standard for consumers looking for company evaluations to first try <company
name sucks> or similar
domain names.[6]
I have
thoroughly reviewed the Respondent’s <aitsucks.com> and <aitsucks.net>
website. At this time, it appears to be
a legitimate criticism site. There is
text critical of Complainant written both by Respondent and by third parties
who have written into a forum on the website.
There does not appear to be any overt commercial references on the
website which could remove or decrease First Amendment protections,
or make the
website for commercial gain under UDRP paragraph 4(c)(iii). Therefore, at this time, Complainant has not
met its burden of establishing that Respondent has no rights or legitimate
interests
in respect of the domain name.
However, in light of the fact that Complainant and Respondent are
competitors at least in some fields, Complainant should not be precluded
from
reinstituting proceedings if any of these factors materially change.
(iii) Was Respondent’s domain name registered
or is it being used in bad faith?
The UDRP lists
some of the factors that a Panel may consider in determining if there is bad
faith on the part of the Respondent.
Paragraph 4(b) of the UDRP provides:
Evidence of
Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the
following circumstances, in particular
but without limitation, if found by the
Panel to be present, shall be evidence of the registration and use of a domain
name in bad
faith:
(i)
circumstances indicating that respondent registered or acquired the domain name
primarily for the purpose of selling, renting,
or otherwise transferring the
domain name registration to the complainant who is the owner of the trademark
or service mark or to
a competitor of that complainant, for valuable
consideration in excess of respondent’s documented out-of-pocket costs directly
related
to the domain name; or
(ii) respondent
registered the domain name in order to prevent the owner of the trademark or
service mark from reflecting the mark
in a corresponding domain name, provided
that respondent has engaged in a pattern of such conduct; or
(iii) respondent
has registered the domain name primarily for the purpose of disrupting the business
of a competitor; or
(iv) by using
the domain name, respondent intentionally attempted to attract, for commercial
gain, Internet users to respondent’s
web site or other on-line location, by
creating a likelihood of confusion with the complainant's mark as to the
source, sponsorship,
affiliation, or endorsement of respondent’s web site or
location or of a product or service on respondent’s web site or location.
Complainant has
not met its burden of establishing these factors, for the following reasons:
(i) While Respondent sent Complainant an e-mail
warning Complainant to “be prepared” on the same date as the registration for
the <aitsucks.net> domain name, this by itself does not establish
that Respondent registered the domain name primarily for the purpose of
selling,
renting, or otherwise transferring the domain name registration to the
Complainant or other bad faith intent. Compare The Stop & Shop
Supermarket Company v. Anderson, FA 133637, page 6 (Nat. Arb. Forum Jan. 8,
2003) (“Respondent’s stated intent to auction the domain name registration for
at least
$20,000, and its subsequent statement that it was willing to either
sell the registration to ‘an unknown buyer somewhere in the world’
or the
parent company of Complainant attest to the conclusion that sale of the
registration was Respondent’s ultimate goal when acquiring
the
<stopandshopsucks.com> domain name.”).
(ii)
Respondent’s registration of the aitsucks domain names has not prevented
Complainant from reflecting its service marks in domain
names. Complainant does use several domain names
incorporating the letters AIT, including the most obvious domain name
ait.com. There is no evidence that
Respondent has engaged in any pattern of registering <company name sucks>
domain names. It appears that
Respondent has reserved his ire for AIT alone.
(iii) It appears that Respondent has registered
the domain name primarily for the purpose of disrupting Complainant’s business
through criticism
of Complainant’s services.
The vast majority of the comments on the Respondent’s website are
critical of the Complainant. This is no doubt due to the fact that
those
customers who are satisfied with Complainant’s services are not looking for a
website entitled <aitsucks.com> on which to note their satisfaction. However, the disruption to Complainant’s
business is taking place through protected criticism of the Complainant’s
services. That type of disruption is
not what is contemplated by UDRP paragraph 4(b)(iii). The type of disruption contemplated by the UDRP is diversion of
consumers from the Complainant’s website to the Respondent’s website
for
commercial purposes.[7] Even though both Respondent and Complainant
design websites and may therefore potentially compete on a very small scale,
Respondent
is not at this time using the <aitsucks.com> or <aitsucks.net>
website for that purpose. If Respondent
began using his website for commercial purposes, that would materially change
the analysis of whether he was using the
domain names in bad faith.
(iv) Respondent has not intentionally created a
likelihood of confusion with the Complainant's marks through use of the domain
names. Respondent has made extensive
use of disclaimers on his website, in an attempt to avoid confusion. See Caterpillar Inc. v. Off Road Equip.
Parts, FA 95497 (Nat. Arb. Forum Oct. 10, 2000) (finding no bad faith when
Respondent put a very visible disclaimer on its website located
at
<catparts.com> , because the disclaimer eliminated the possibility that
Respondent was attempting to imply an affiliation
with Complainant and
Complainant’s CATERPILLAR mark); Am. Online, Inc. v. Anytime Online Traffic
School, FA 146930 (Nat. Arb. Forum April 11, 2003) (Respondent’s disclaimer
operated as evidence of good faith use of the domain names).
Respondent has
not intentionally attempted to attract, for commercial gain, Internet users to
Respondent’s web site. Although it does
appear that the Complainant and Respondent are to some extent actual and
potential competitors in the web-design
field, at this time it does not appear
that the Respondent is using the AITSUCKS domain names to divert or obtain
business either
for himself or for others.[8]
In fact, Respondent certifies that he has not received credit for a single
referral to Ventures Online. Respondent has requested
that no credit should
ever be given to him in exchange for a referral to Ventures Online, and this
has been acknowledged by a Ventures
Online representative. This is a strong
indication of good faith and non-commercial purposes on the part of Respondent.
There do not
appear to be other sufficient indicia of bad faith on the part of the
Respondent.[9] Compare Kendall/Hunt Publishing
Company v. headhunterbob, FA 102247 (Nat. Arb. Forum Jan. 14, 2002),
majority and dissenting opinions. Respondent
registered more than one domain name which incorporates the Complainant’s
mark. In some cases, that could be an
indicia of bad faith, particularly if the Respondent registered so many domain
names incorporating
the Complainant’s mark that it becomes difficult to locate
the Complainant’s websites. Here,
Respondent only registered two domain names, <aitsucks.com> and
<aitsucks.net>. Both
domain names resolve to the same website.
This does not preclude Complainant from using its mark in its domain names
or make it difficult to locate the Complainant’s website,
as noted above.
Therefore, at
this time, Complainant has not met its burden of establishing that Respondent’s
domain name has been registered and
is being used in bad faith. However, in light of the fact that
Complainant and Respondent are competitors at least in some fields, Complainant
should not be precluded
from reinstituting proceedings if any of these factors
materially change. For example, if Respondent
starts using the <aitsucks.com> or the <aitsucks.net>
website for commercial purposes, that could have a material effect on the
outcome of any future proceedings.
DECISION
Since
Complainant has not met its burden of establishing two of the three elements
required under the ICANN Policy, the Panel concludes
that relief shall be DENIED. Accordingly, it is Ordered that the <aitsucks.com>
and <aitsucks.net> domain names shall not be transferred from
Respondent to Complainant.
In effect, this
decision holds that the Respondent may continue to use the domain names in
issue so long as the site continues to
be a non-commercial legitimate criticism
site and nothing more. If these factors
regarding the website change, Complainant should not be precluded from
reinstituting proceedings.
JEFFREY N. MAUSNER, Panelist
Dated: May 11, 2004
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