airfrance-suck.com. Aaron's contribution is welcome as this site is not meant to be a vehicle solely for my own opinions, but is meant to be a platform where contending views may be expressed and debate encouraged.
The decision that Aaron has commented on raises again the question whether the so called ‘sucks’ cases can give rise to confusing similarity with the trademarks and then in turn whther the trademark owner can show that the domain name registrant has no right or legitimate interest in such a domain name and registered and used it in bad faith.
It is the second ‘sucks’ case concerning Air France, the first being a three person panel decision in 2005: Societé Air France v. Virtual Dates, Inc, WIPO Case No. D2005-0168 where the domain name in question was the similar
There was, however, a dissent in that case, the dissenting panellist Mr J M Samuels holding that:
‘ The term “sucks,” … is clearly pejorative in nature and, thus, at least in my view, sufficient to avoid a determination of confusing similarity…(for) …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.”
… I note that a recent UDRP panel held that “[t] hough there are some decisions to the contrary, the weight of authority, and the clear trend of recent cases, firmly support the position [that adding a pejorative term to a trademark or service mark dispels the likelihood of confusion].” The decision referred to is FMR Corp. v. Native American Warrior Society, WIPO Case No. D2004-0978 (emphases added)’
The recent decision, Societe Air France v Mark Allaye-Chan (supra)
the subject of Aaron’s commentary, however, holds that:
‘This view (that “sucks” domain names are confusingly similar to the trade mark) is the majority view of previous panels, and may even be the consensus view. See e.g., Sermo, Inc. v. CatalystMD LLC, WIPO Case No. D2008-0647, Footnote 5; Air Austral v. Tina Yi Tong Investment Ltd., WIPO Case No. D2009-0020 (emphases added)’.
It is apparent, therefore that there is room for debate on this issue and that the recent decision and Aaron’s commentary are valuable additions to that discussion.
We invite other contributors to add to the debate.
The Hon Neil Brown QC
Aaron Newell's contribution commences here.
Airfrance-suck.com – Transfer
To English speaking internet users, “sucks” domain names contain an inherent indication that they will be used for criticism purposes. While some businesses may adopt self-deriding marketing plans to appeal to younger consumers or put a humourous spin on their advertising, it’s a rare and brave business that will promote itself ironically with statements that it’s bad at whatever it does.
You’d think this would be even less likely for an airline. If an airline is promoting itself by saying it “sucks”, then it’s communicating that it’s bad at flying. To tread a little carefully: an airline is not likely to hold itself out as a business that might be able to deliver the services advertised. You expect that from a law firm. You want more reassurance from an airplane.
Societe Air France v Mark Allaye-Chan (WIPO No D2009-0327) is interesting because the Respondent did not manage to upload a criticism website at his domain name before the dispute was lodged. He registered the domain name in January of this year, and Air France was quick to act, initiating proceedings in March. It’s possible that the Respondent had a valid gripe with Air France. It’s also possible that he saw an opportunity to secure a domain name that might be immune to the UDRP, and for which he could name his price in negotiations.
If an actual “gripe site” had been uploaded with genuine criticism, the Respondent probably would have walked away with his domain name, as this could have been a legitimate interest. But in this case the Respondent had no website, had used a privacy registration service and a redirect to Google, and therefore gave Air France sufficient material for successful arguments for the second and third limbs of the UDRP.
As to whether the domain name was confusingly similar to “AIR FRANCE”, the Panel noted the following:
Previous panels who encounter “sucks” cases have found that domain names can be confusingly similar to the trade mark for various reasons, including because the disputed domain name is highly similar to the trade mark; or because the domain name may not be recognized as negative (for example, for non-English speaking Internet users). This view (that “sucks” domain names are confusingly similar to the trade mark) is the majority view of previous panels, and may even be the consensus view.…It is in any event the Panel’s preferred view in these circumstances, particularly because the Complainant originated in France, and may have a significant number of non-English speaking customers who will not automatically recognize “suck” as a pejorative term.
As Internet users may not immediately recognize the disputed domain name as involving negative connotations, and because the “-suck” component (when added to the well known trade mark of AIR FRANCE) is not the most prominent or obvious feature of the name, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark.
As suggested above, English speakers will, in the absence of a rare and misguided ironic marketing plan, know what a “sucks” domain name is getting at. Similarly, for non-English speakers one has to query whether the Panel’s position is tenable.
For most jurisdictions (excluding the US), disputes regarding domain names that resolve to criticism sites are assessed on the basis of initial interest confusion. The idea is that internet users will type in “airfrance.com”, assuming it will resolve to an official Air France website. Air France then suffers damage if this website is not official, but rather resolves to a criticism site or to a competitor. In these situations the argument is that the domain name owner is using the trade mark owner’s reputation for his own purposes (critical and commercial), which fits into the broader definition of “cybersquatting”.
The logic does not fit as nicely when the domain name is not substantially identical to the trade mark. For example, an English speaker is not going to type “airfrance-suck.com” in a pursuit to buy tickets to Paris. A non-English speaker is even less likely to do this: they don’t know what sucks means, may have never used or noticed the word before, so how are they going to land at this domain name accidentally when shopping for airline deals? They’re surely not randomly typing hyphens and English words. And if the domain name owner’s Google rating is that high, it arguably has a legitimate interest: a successful criticism site.
On a strict comparison between the terms “AIR FRANCE” and “AIR FRANCE SUCKS”, someone who doesn’t recognise “SUCKS” as being pejorative might think it’s simple brand extension, or even laudatory. In this sense in a vaccuum and on a pure side-by-side comparison the trade mark and the domain name are similar. But it’s more difficult to say that they are confusing because non-English speaking internet users will go to airfrance-suck.com instead of a valid Air France domain name. In the realm of normal internet use, this similarity is not likely to be confusing for speakers of English (who recognise what’s going on) or for speakers of other languages (who won’t care because they’re not using or typing this word in the first place). In Air France the Panel arrived at the contrary position, and in the absence of actual use of the domain name by the Respondent (over a brief three month period), this was the deciding factor in the dispute.
Aaron Newell
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