WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wachovia Corporation v. Alton Flanders
Case No. D2003-0596
1. The Parties
The Complainant is Wachovia Corporation, Charlotte, North Carolina, United States of America, represented by Kennedy Covington Lobdell & Hickman, LLP, United States of America.
The Respondent is Alton Flanders, Nantucket, Massachussetts, United States of America.
2. The Domain Names and Registrar
The disputed domain names are <wachovia-sucks.com>, <wachoviabanksucks.com>, <wachoviasucks.com> and are registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 29, 2003. On July 30, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. The Registrar failed to submit a Verification Response. Therefore, the Center made a Whois printout on August 6, 2003, which showed that the disputed domain name was registered with eNom, and that the Respondent was the current registrant of the disputed domain name. The Panelist would like to remind the Registrar of the importance of providing a Verification Response so that the Center can ascertain the contact information of the Respondent and provide appropriate notice and furthermore to ensure that the domain name registration remains locked during the UDRP proceedings.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 6, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2003. The Respondent filed his response on August 27, 2003.
The Center appointed Sandra Franklin as the sole panelist in this matter on September 9, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant is the owner of the registered trademark WACHOVIA and related marks for banking and financial services. Complainant has 24 registered marks and 17 pending marks for its WACHOVIA family of marks in the U.S., and another 6 foreign registrations.
5. Partiesí Contentions
Complainant makes the following assertions:
1. Respondentís <wachoviasucks.com>, <wachovia-sucks.com>, and <wachoviabanksucks.com> domain names are confusingly similar to Complainantís WACHOVIA mark.
2. Respondent does not have any rights or legitimate interests in the <wachoviasucks.com>, <wachovia-sucks.com>, and <wachoviabanksucks.com> domain names.
3. Respondent registered and used the <wachoviasucks.com>, <wachovia-sucks.com>, and <wachoviabanksucks.com> domain names in bad faith.
The Respondent replied on August 27, 2003, one day late. Nevertheless, the Panel has considered Respondentís arguments. In summary, Respondent relies primarily on the right of free speech, to claim fair use, by virtue of simply having the derogatory "-sucks" domain names. Respondent claims to be a disgruntled customer of Complainant, but does not actually operate a protest site.
6. Discussion and Findings
Complainant is a major participant in the international banking community. Respondent is an individual who appears to have the following d/b/aís: DomainExchange.com, DotComCatolog.com, CreditInfoAbuse.com and ProBuyer.com. Respondentís domain names <wachoviasucks.com>, <wachovia-sucks.com>, and <wachoviabanksucks.com> point to tools allowing users to run predetermined searches in several categories of financial products and services.
A. Identical or Confusingly Similar
There is a split among the UDRP decisions regarding whether a "-sucks" domain name is confusingly similar to the trademark to which it is appended. The majority of the decisions have found confusing similarity. In a minority of decisions, and in some dissenting opinions, Panelists have deemed a "-sucks" addition to a well-known trademark to be an obvious indication that the domain name is not affiliated with that trademark owner. This Panel, however, concurs with the notion that every case must be assessed on its own merits, as put forth in Cabelaís Inc. v. Cupcake Patrol, FA 95080 (National Arbitration Forum, August 29, 2000), and therefore does not accept the per se rule, resulting in an automatic finding of no confusing similarity. Complainantís arguments on the inappropriateness of the per se rule are persuasive. The per se rule is derived in part from the Bally case. See Bally Total Fitness Holding Co. v. Faber, 29 F.Supp.2d 1161 (C.D. Cal. 1998). A United States federal appeals court, however, recently acknowledged the Bally courtís distinction of its case from cases in which a trademark is used as a domain name and reaffirmed that the Bally courtís language appearing to permit the use of "-sucks" in a domain name is pure dicta. See E & J Gallo Winery v. Spider Webs, Ltd., 286 F.3rd 270 (5th Cir. 2002). This Panel notes that the Bally case, and 2 other cases often cited in support of a finding of no confusing similarity, the Lucent and Sleekcraft cases, are all cases discussing proof of trademark infringement. See Lucent Tech., Inc. v. Lucentsucks.com, 29 F.Supp.2d 528, (E.D. Va. 2000), and AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979.) Proof of trademark infringement is not the same as proof of the first element under the UDRP Policy. This Panel finds it more appropriate to adopt the UDRP Policy and precedent developed specifically to address cybersquatting.
A reading of UDRP precedent reveals that Panels have routinely found confusing similarity when a domain name incorporates Complainantís well-known mark and merely adds a generic or slang term. Many Panels have specifically found that the addition of the slang word "sucks" does not mitigate confusing similarity from the perspective of a person searching on the Internet. See ADT Services AG v. ADT Sucks.com, WIPO Case No. D2001-0213, which states "The addition of the suffix Ďsucksí does nothing to deflect the impact of the mark on the Internet user." See also Brio Corp. v. Spruce Caboose, NAF Case No. FA0205000114411, noting the dominating presence of Complainantís mark as a source of confusion in the related "-sucks" mark.
Specific to the facts of this case, previous Panels have found that international customers are more likely to be confused by "-sucks" domain names, as they may not recognize the connotation of the word "sucks". See ADT Services, supra, and Vivendi Universal v. Sallen, WIPO Case No. D2001-1121. Indeed, one of the minority Panels that adopted the per se rule noted that the existence of non-English speaking customers of Complainant was an exception to the per se rule. See Asda Group Ltd. v. Kilgour, WIPO Case No. D2002-0857.
This Panel finds that the <wachoviasucks.com>, <wachovia-sucks.com>, and <wachoviabanksucks.com> domain names are confusingly similar to the established international trademark WACHOVIA. Accordingly, the Panel finds that Policy Paragraph 4(a)(i) has been satisfied.
Finally, this Panel would like to echo a previous opinion that finding confusing similarity in "-sucks" cases does not abridge the rights of legitimate protest sites because such sites are adequately protected by the second and third elements of the Policy. See Koninklijke Philips Electronics N.V. v. In Seo Kim, WIPO Case No. D2001-1195.
B. Rights or Legitimate Interests
The domain names at issue here do not point to a protest site. In the previous UDRP cases which have found legitimate interests based on the right of free speech and the fair use doctrine, the domain name has been linked to a "complaint" web site. See Wal-Mart Stores, Inc. v. walmartcanadasucks.com, WIPO Case No. D2000-1104, which held that the Respondent had legitimate rights in the domain name as a forum for criticism of the Complainant. Such is not the case here. Here, Respondentís <wachoviasucks.com>, <wachovia-sucks.com>, and <wachoviabanksucks.com> domain names point to competitive financial products and services. Simply having a domain name with "-sucks" in the name cannot, by itself, establish fair use; one must look to the content of the website to determine if there is an exercise of free speech which allows the Respondent to rely on the fair use exception. To do otherwise would legitimize cybersquatters, who intentionally redirect traffic from a famous mark, simply through the use of a derogatory term.
In this case, there is no such exercise of free speech, but rather a redirection of traffic from WACHOVIA to competitive products and services. The products and services found under the domain names are not those of Respondent, and Respondent does not offer any goods or services itself. Respondent is not known by the name WACHOVIA. Respondent is not affiliated in any way with Complainant.
Respondent states that he may some day launch a special site dealing with wide-ranging consumer matters under CreditInfoAbuse.com. He has not, however, made any such use or even preparations to use the <wachoviasucks.com>, <wachovia-sucks.com>, and <wachoviabanksucks.com> domain names in a way which would constitute fair use. See Vivendi, supra, which found no rights or legitimate interest in a "-sucks" domain name where Respondent failed to make preparations for use of a protest site.
Accordingly, the Panel finds that Policy Paragraph 4(a)(ii) has been satisfied.C. Registered and Used in Bad Faith
The Respondent operates at least 2 businesses which sell domain names. He has been a Respondent in a previous UDRP case where he also tried to use a trademark in a domain name, but was made to transfer the domain name to the trademark owner. See IslandAir, Inc. v. Flanders, NAF Case No. FA0011000096098. Due to the distinctiveness of the mark WACHOVIA and its prominence in the financial services industry, it is inconceivable that Respondent was not aware of Complainantís mark when he registered and used the domain names. It is apparent that Respondent registered the domain names, containing a known trademark, to disrupt Complainantís business. He disrupted Complainantís business by redirecting traffic to competitive financial products and services, and likely by confusing Complainantís customers. Respondent surely has obtained or expected to obtain some commercial gain, either by selling links to Complainantís competitors, selling advertising space, or by being paid to stop using the derogatory domain names.
The factors noted above touch on all 4 of the non-exclusive circumstances listed in Paragraph 4(b) of the Policy indicating bad faith. Factors indicating bad faith may be considered in combination. See RRI Financial, Inc. v. Chen, WIPO Case No. D2000-1483. All circumstances taken together, this Panel finds that the Respondent registered and used the domain names in bad faith and, accordingly, that Policy Paragraph 4(a)(iii) has been satisfied.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <wachoviasucks.com>, <wachovia-sucks.com>, and <wachoviabanksucks.com> be transferred to Complainant.
Dated: September 19, 2003