[Ecommerce] Decision on Air France 'sucks' sucks

[Manon Ress]

http://www.out-law.com/php/page.php?page_id=3Dairfrancewinssu1118156570&are=
a=3Dnews
  -=09-
Newws Air France wins 'sucks' domain name

07/06/2005

The domain name AirFranceSucks.com will be transferred to Air France.
But the airline's victory at arbitration was not without controversy:
panellists disagreed about what the word 'sucks' really means to
internet users.

The name was registered by Florida-based Virtual Dates Inc. in 1999. It
was only in February 2005 that Air France took a claim before the World
Intellectual Property Organisation (WIPO), alleging cybersquatting. The
decision was made on 24th May and published today.

For most of the past six years, Virtual Dates pointed the domain name at
a page of ePinions.com, an ad-supported site that rates and invites
reader comments on everything from movies and barbecues to office
supplies and zoos.

Virtual Dates said AirFranceSucks.com was a freedom of expression site
for the registration of complaints or recommendations about the airline.
Air France said it was just trying to cash-in on its trade mark: this
was a commercial entity, not the gripe site of an aggrieved customer.

Two of the three WIPO panellists reckoned that a domain name that adds
'sucks' to a trade mark will generally be confusingly similar to that
trade mark. Presiding panellist Knud Wallberg wrote:

=93The incorporation of a well known trade mark in its entirety as the
first and dominant part of a domain name is confusingly similar to this
trade mark regardless of whether the additional elements are pejorative
as in this case or of a more neutral kind such as airfrancetickets=94.

Co-panellist Christian-Andr=E9 Le Stanc agreed: international customers
might not appreciate the pejorative nature of the term 'sucks', which
would leave users confused.

The third panellist, Jeffrey M Samuels, disagreed.

Samuels, an intellectual property professor at Akron University, Ohio,
accepted that not all internet users will be familiar with the
pejorative nature of the term 'sucks.' But he added: "it is likely that
a substantial percentage of potential customers of Air France are
familiar with the English language and, thus, would be aware of the
pejorative nature of 'sucks.'"

A confusingly similar trade mark is not enough of itself to force a
transfer: it must also be shown that the registrant has no rights or
legitimate interest in the name and that its registration and use were
in bad faith.

But if a panel is convinced that a domain name is not confusingly
similar to a trade mark, the rest of a cybersquatting claim will collapse.

In Samuels' opinion, the domain name was not confusingly similar to Air
France=92s trade mark, because it did not look or sound alike nor convey
the same commercial impression.

Decisions on 'sucks' sites have gone both ways trade mark owners in the
past. But the current panel's majority view on their similarity to a
trade mark is supported by a WIPO report on trends in domain name
dispute decisions, published in March. On 'sucks' sites, it agreed that
non-fluent English speakers would fail to recognise the negative
connotations of the word.

See: The WIPO ruling

See also:

Free case book of domain name decisions, OUT-LAW News, 24/03/2005

Bank wins 'sucks' domain case, but protest sites OK, OUT-LAW News,
15/10/2003

"Sucks" domains are OK, says US appeals court
10/02/2003

Asda loses AsdaSucks.net dispute, OUT-LAW News, 19/11/2002

Philips wins transfer of philipssucks.com, OUT-LAW News, 19/11/2001

Bloomberg loses =93sucks=94 domain name case, OUT-LAW News, 21/06/2001

Domain name decision favours a sucks.com name, OUT-LAW News, 12/12/2000



--
Manon Anne Ress
manon.ress@cptech.org,
www.cptech.org

Consumer Project on Technology in Washington, DC PO Box 19367,
Washington, DC 20036, USA Tel.:  +1.202.387.8030, fax: +1.202.234.5176

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