DECISION

 

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 9^th Circuit and the Polaroid factors in the 2^nd 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., 811 F.2d 26 (1^st 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, 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, 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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