The Complainant is WIZZ Air Hungary Airlines Limited Liability Company of Vecses, Hungary.
The Respondent is Holden Thomas of Austin, Texas, United States of America.
The disputed domain name <wizzairsucks.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2009. On August 18, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On August 18, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name.
The Center has verified that the Complaint together with the amendment to the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 proceeding commenced on August 24, 2009. In accordance with the Rules, paragraph 5(a), the due date for the Response was September 13, 2009. The Response was filed with the Center on August 26, 2009.
The Center appointed Sebastian Hughes as the sole panelist in this matter on September 7, 2009. 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.
The Complainant is a Hungarian company and the owner of registrations for the WIZZAIR and WIZZ word and stylised word trade marks covering numerous countries in Europe, which predate the date of registration of the disputed domain name (the “Trade Marks”).
The Complainant is also the owner of the global top level domain name <wizzair.com> as well as several country level domain names such as <wizzair.hu> comprising the Trade Marks.
The Respondent is an individual with an address in the United States of America.
The disputed domain name was registered on April 27, 2009.
The following facts are alleged by the Complainant in the Complaint.
The Complainant is an airline and a member of the European Low Fare Airlines Association, operating under the Trade Marks, with 11 operating bases in the Eastern European region, and currently offering flights on over 150 routes to 21 countries in Europe. The Complainant has carried over 15.5 million passengers since the start of its operations in May 2004, and expects to carry about 7.5 million passengers in 2009. The Complainant operates its wizzair domain names in 15 languages, and the Trade Marks are well and widely known throughout the world.
The disputed domain name contains the Trade Marks entirely, with the addition of the suffix “sucks”. The use of the word “sucks” does not sufficiently distinguish the disputed domain name from the Trade Marks.
The word “sucks” is a negative term used to indicate criticism. The disputed domain name falls within the category of so-called “sucks” cases (where a trade mark is joined with a negative term).
Even if some Internet users dissociate the addition of the word “sucks” from the Complainant, not all Internet users are English speaking. The Complainant has a significant number of non English speaking customers. These customers will not automatically recognize that the word “sucks” is a pejorative term and they will not be able to dissociate it from the Trade Marks. Other Internet users will not give the domain name any definite meaning, and will be confused regarding its association with the Complainant.
Even Internet users who do understand the meaning of “sucks” may still remain confused regarding the similarity of the disputed domain name with the Trade Marks. An Internet user may also think that the Complainant registered the disputed domain name for marketing purposes (in a self-derision strategy).
The Respondent is not in any way related to the Complainant's business, and is not an agent of the Complainant. The Respondent is not currently known and has never been known in relation to the Trade Marks, or any combination of the Trade Marks with the term “sucks”. The Complainant has not granted any licence or authorisation to the Respondent to make any use, or apply for registration, of the disputed domain name.
The Respondent is not using the disputed domain name in connection with bona fide criticism; there is no evidence to support the conclusion that the disputed domain name was registered for the purpose of a legitimate protest site.
The Respondent offers for sale T-shirts and other goods on the website to which the disputed domain name is resolved (the “Website”). This evidences the commercial purposes of the Respondent.
The Website also makes reference to competitors of the Complainant by recommending Internet users to use these airlines instead of the Complainant.
The disputed domain name contains the Complainant's well known Trade Marks. It is clear that the Respondent was aware of the Trade Marks at the time of registering the disputed domain name. By entirely incorporating the Trade Marks in the disputed domain name, the Respondent deliberately chose a domain name which was likely to be confused with the Complainant's trade marks, company name, brand names and domain names. This name was explicitly chosen to generate Internet traffic to the Website, by creating a likelihood of confusion with the Trade Marks and as a consequence to receive commercial gains.
The Respondent is hiding its registered seat (sic), factual address and other contact details. The Complainant has carried out research with regard to the Respondent and has not found yet any data concerning the Respondent's company form, its residence, contact details or other company data. The Complainant also sent a notice letter both to the Respondent and the Respondent's administrative contact; however, the Complainant has not received any response from either of them yet.
The disputed domain name has been registered to disrupt the Complainant's online presence, tarnish its trade marks and infringe its reputation. The Complainant promotes and sells its services mostly via the Internet. Approximately 85 % of the Complainant's ticket purchases are transacted through online bookings. As a consequence, the disputed domain name is especially harmful to the Complainant's rights and interests.
Furthermore, on the Website the Respondent invites potential customers to use other airlines, which constitutes clear abuse of the Trade Marks. Such behaviour also qualifies as anti-competitive conduct under competition law and as such, it violates the lawful interests of the Complainant. The good reputation of the Trade Marks is used by the Respondent for the purpose of attracting users to the Website and to generate commercial revenue.
The fact that the disputed domain name contains a well-known Trade Mark together with the word “sucks” also supports the argument of bad faith registration as the word “sucks” only has a negative, pejorative meaning.
The Respondent was evidently aware of the Complainant and its Trade Marks when it registered the disputed domain name, and it intended to generate traffic on the Website and to publish defamatory information on the Website.
The following facts are alleged by the Respondent in the Response.
The disputed domain name is not confusingly similar to the Trade Marks. The Respondent has made no attempt at deception or in any way represented himself as the Complainant. No consumer or customer would believe that the Complainant would sponsor a site critical of itself, or actively support its customers' claims of malfeasance. The “sucks” mantra is itself protected under free speech and similar sites exist for many other corporations and have been upheld as such.
The Complainant's argument that a consumer may think the disputed domain name had been registered by the Complainant for marketing purposes (as part of a “self-derision strategy”) is absurd. The Website is meant to parody and criticise the character of the Complainant's business and could not in any way be interpreted as, or supported by, the Complainant.
There are a multitude of criticisms on the Website and the Respondent is operating the Website as a legitimate protest site.
The Respondent does not recommend competitors of the Complainant on the Website. Rather, the Respondent conducted a poll on the Website listing 5 well-known budget airlines, including the Complainant, and asking visitors to the Website which of the airlines “sucked the most”. A competitor of the Complainant, Ryanair, “won” the poll as “the most hated airline in Europe”, with the Complainant “a narrow second”, by 4 votes. Visitors to the Website “hated” Skyeurope and Easy Jet the least, but to say that the Respondent recommended these airlines would be a stretch. The Respondent received no money or compensation from any of the other airlines in any way.
The Respondent has never made any money from the operation of the Website. The Respondent is not a company nor does he represent the interests of any others. The Respondent does not agree with all of the postings on the Website. There are several comments on the Website in favour of the Complainant.
The Respondent did not receive the notice letter from the Complainant's lawyers prior to the filing of this Complaint. The Respondent's contact details, including his email address, are listed under the registration details for the disputed domain name. The Respondent's contact details are also firmly elucidated on the Website.
The disputed domain name was registered and the Website set up following the Respondent's bad experiences flying with the Complainant in Romania and in Germany. The intention of the Website is to criticise the Complainant for its conduct, including its failure to respond to the Respondent's letters, and to create a support group for fellow disgruntled customers of the Complainant.
The Respondent's motives have never been for financial gain.
The Respondent has never attempted to solicit money from the sale of the disputed domain name or any other, nor has the Respondent used advertising or keywords to generate revenue from the Website.
The t-shirt shop on the Website was set up in humour and the Respondent has not sold any t-shirts on the Website.
The Respondent asserts a legitimate interest in the disputed domain name and the legal right to express his opinions and personal experiences, and collect those of others, on the Website.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) The domain name is identical with or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
The Panel finds that the Complainant has rights in the Trade Marks acquired through registration and use.
The disputed domain name comprises the Trade Marks in its entirety. UDRP panels have consistently held that a domain name is identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
It is established that, where a mark is the distinctive part of a domain name, the domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).
Generally a user of a mark “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it” (J. Thomas McCarthy, McCarthy on Trade Marks and Unfair Competition (4th ed. 1998)), General Electric Company v CPIC NET and Hussain Syed, WIPO Case No. D2001-0087), PCCW-HKT DataCom Services Limited v Yingke, HKIAC Case No. 0500065).
It is also established that the addition of a generic term to the disputed domain name has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253). Furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189). There have been numerous panel decisions in which it has been held that the addition of derogatory terms does not affect a finding of confusing similarity for purposes of the Policy (Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647). This may even be the consensus view today (Société Air France v. Mark Allaye-Chan, WIPO Case No. D2009-0327).
In any event, this Panel finds that the addition of the word “sucks” as a suffix in the disputed domain name does little to distinguish the disputed domain name from the Trade Marks, and that there is a clear likelihood of confusion between the disputed domain name and the Trade Marks.
However, the Panel finds the Complainant's suggestion that Internet users might think the disputed domain name was registered by the Complainant itself as part of a “self-derision” marketing strategy unlikely.
The Panel has no hesitation in finding that the disputed domain name is confusingly similar to the Trade Marks.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to the Respondent of the dispute, 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Panel finds no evidence that the disputed domain name has been used in respect of a bona fide offering of goods or services, nor is there any evidence that the Respondent has been commonly known by the disputed domain name.
The Complainant appears to have wholly missed the point of the Website in asserting that “there is no evidence to support the conclusion that the disputed domain name was registered for the purpose of a legitimate protest site”.
There is a divergence of opinion among panelists regarding “sucks” cases. This is sometimes said to reflect differences in national laws relating to freedom of speech. Cases involving US parties, US jurisdiction and/or US panelists have tended to support the right to set up non-commercial websites which are critical of trade mark owners. Such panel decisions sometimes refer to the constitutional right of US citizens to free speech under the First Amendment to the US Constitution, and to the considerable body of case law in the US Courts in which it has been held that setting up websites critical of trade mark owners, even if designed to cause economic damage to trade mark owners, is not a commercial use, and not therefore prohibited under the US Lanham Act.
Conversely, there have been several panel decisions often without a US connection in which it has been held that use of trade marks in respect of websites set up for criticism of trade mark owners does not amount to a legitimate non-commercial or fair use (particularly where the domain name in question is identical to the complainant's trade mark).
In the present case, the Complainant is based in Hungary. The Respondent is a US citizen and the disputed domain name has been registered with the US registrar, GoDaddy.com, Inc. The mutual jurisdiction of the Complaint is US law.
Paragraph 15(a) of the Rules provides that:
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any principles of law that it deems applicable”.
The Panel agrees with the view expounded in several WIPO UDRP decisions that issues arising under the Policy should not be decided on the basis of national law if the relevant provision does not import or refer to national law (Fundación Calvin Ayre Foundation v. Erik Deutsch, WIPO Case No. D2007-1947). Rather, issues should whenever possible be determined having regard to general and globally accepted principles of law and any applicable principles derived from some ten years of accumulated WIPO UDRP decisions.
In accordance with paragraph 15(a) of the Rules, applying “the principles of law that it deems applicable”, the Panel finds that the Respondent has established under paragraph 4(c)(iii) of the Policy that its registration and use of the disputed domain name in respect of a website critical of the Complainant amounts to a legitimate non-commercial or fair use of the domain name.
As regards commercial gain, the Panel does not find the contentions of the Respondent, both in the Response and on the amended Website, that the promotion and sale of t-shirts was merely humorous or a “joke” entirely convincing. Prior to receipt of the Complaint, the Website was linked to a website offering for sale various “wizzairsucks” t-shirts, mugs and badges. The wording on the Website including the following:
“Support Wizzair: the Class Action Lawsuit (Coming Soon)…
Please support of (sic) efforts to the fill (sic) Wizzair Customer Service void by buying something from our Store. Any money earned will go towards advertising and legal purposes. We have a variety of Wizzair sucks memorabilia…”
The Website has since been amended to remove this wording and the link to the online “Store”.
The Panel finds the Respondent's assertion that he “never sold a t-shirt” disingenuous given the fact the “Store” appears to have been operated by a third party website (“www.spreadshirt.net”). However, even if there have been any sales (which is denied by the Respondent), it seems to the Panel likely that such sales would have been merely ancillary to the main purpose of the Website in criticising the Complainant. It strikes the Panel that the reference to a class action law suit is likely mere puffery in line with the humorous nature of the Website. Even if the Website were to be used to support a class action law suit, and if the Respondent and his fellow plaintiffs were to be successful, the Panel considers the results of such a law suit would not amount to a “commercial” gain per se within the meaning of the Policy
Having carefully reviewed the Website (in both its previous and current form), and in the context of paragraph 4(c)(iii) of the Policy, the Panel therefore finds insufficient evidence to suggest the Website has been used by the Respondent for commercial gain.
The Panel finds that the display of the “Worst Euro Budget Airline” poll results on the Website does not amount to a recommendation per se by the Respondent to use competitors of the Complainant, and even if it did, it may still not prove dispositive unless the Respondent itself was a competitor of the Complainant.
The Panel finds no evidence to suggest the Respondent, in registering the disputed domain name and setting up the Website, has misleadingly diverted consumers to the Website.
Other than a bald assertion of tarnishment, the Complainant has not made any submissions nor filed any evidence to suggest that the Website has been set up and used in order to tarnish the Trade Marks. In any event, fair use criticism does not amount to tarnishment and is not proscribed under the Policy (Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014).
For the foregoing reasons, the Panel finds that the Complainant has failed to prove that the Respondent lacks rights or legitimate interests in the disputed domain name under paragraph 4(c)(iii) of the Policy. Accordingly, the Complainant has failed to satisfy the second limb under paragraph 4(a)(ii) of the Policy.
Having found that the Complainant has failed to satisfy the second limb under the Policy, the Panel need not consider whether the disputed domain name has been registered and used in bad faith under the third limb of the Policy.
The Panel would however note that, contrary to the assertions of the Respondent, his contact details do not appear to be accessible on the Website. Further, even though the Respondent has provided his personal email address and postal address when registering the disputed domain name, the Respondent chose to register under the name of “Beyond Convention” rather than in his own name, thereby causing confusion. This is however somewhat counterbalanced by the failure of the Complainant's representatives to send their letter of complaint to the Respondent's personal email address listed in the registration details for the disputed domain name.
As a final observation, there is no evidence that the Respondent has registered any other domain names comprising the Trade Marks, or has registered domain names comprising any other person's domain names in the past.
In any event, in all the circumstances, the Panel is of the opinion that the use of the disputed domain name in respect of genuine and non-commercial criticism of the Complainant does not amount to bad faith registration and use.
For all the foregoing reasons, the Complaint is denied, and the Panel declines to order transfer of the disputed domain name.
Dated: September 22, 2009