WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Trivago N.V. v. Pat Honey Salt, Honey Salt ltd

Case No. D2021-0692

1. The Parties

The Complainant is Trivago N.V., Germany, internally represented.

The Respondent is Pat Honey Salt, Honey Salt ltd, United Kingdom, represented by Orrick, Herrington & Sutcliffe, LLP, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <trivago.sucks> (hereafter referred to as the “Disputed Domain Name”) is registered with Rebel Ltd (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2021. On March 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 10, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 10, 2021, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 12, 2021.

The Center verified that the Complaint, together with the amended Complaint, satisfied 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 5, 2021. On March 22, 2021, the Respondent requested an automatic extension of the Response deadline. The Center granted the extension on March 23, 2021, confirming that the due date for the filing of the Response was April 9, 2021. The Response was filed with the Center on April 9, 2021.

The Center appointed Flip Jan Claude Petillion, Jonathan Agmon, and Brian J. Winterfeldt as panelists in this matter on May 10, 2021. The Panel finds that it was properly constituted. Each member of 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

The Complainant, Trivago N.V., operates a worldwide hotel comparison website including via the domain name <trivago.com>.

The Complainant invokes several registered trademarks including the following:

- TRIVAGO, international word mark registration No. 910828, registered on August 18, 2006 in classes 35, 38, 39, and 42;

- TRIVAGO, United Kingdom word mark registration No. UK00912129565, registered on February 7, 2014 in classes 35, 38, 39, 42, and 43.

The Disputed Domain Name was registered on September 30, 2020. The Disputed Domain Name resolves to a website mentioning the Complainant’s trademark, providing information about the Complainant, inviting Internet users to “Tell the world why Trivago sucks!” and appearing to include negative reviews related to the Complainant. A sidebar also displays links to “Popular Pages” and “Recent Updates” regarding other topics, including other companies and brands.

The Respondent has been the subject of several other recent UDRP cases, also involving the overall platform of “Everything.sucks”. Some of these decisions were handed down after the Complaint in this proceeding was filed. See, e.g., Bureau Veritas v. Pat Honey Salt, Honey Salt Ltd, WIPO Case No. D2021-0769 (<bureauveritas.sucks>); Association des Centres Distributeurs E. Leclerc - A.C.D. Lec. v. Privacy Hero Inc. / Honey Salt ltd, Pat Honeysalt, WIPO Case No. D2021-0186 (<eleclerc.sucks>); Tetra Laval Holdings & Finance S.A. v. Privacy Hero Inc / Pat Honeysalt, Honey Salt Ltd., WIPO Case No. D2020-3398 (<tetrapak.sucks>); Sanofi v. Privacy Hero Inc / Honey Salt ltd., pat honey salt, WIPO Case No. D2020-2836 (<sanofi.sucks>). In each of these prior decisions, the UDRP panel found in favour of the respective complainant and against the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant considers the Disputed Domain Name to be identical to a trademark in which it claims to have rights.

The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent is in no way affiliated with the Complainant. The Complainant claims that the Respondent is not making a bona fide or legitimate noncommercial or fair use of the Disputed Domain Name, but rather uses the Disputed Domain Name to link to a website containing unverifiable fake citations which disparage the Complainant and tarnish its image. According to the Complainant, an alleged right to free speech (which the Respondent cannot claim for itself anyway) or an alleged right to legitimate criticism cannot overrule the Complainant’s trademark rights. The Complainant further contends that the Respondent uses the website linked to the Disputed Domain Name to justify the registration of the Disputed Domain Name and to take unfair advantage of the Complainant’s high reputation by falsely suggesting that the Respondent is somehow affiliated or otherwise connected to the Complainant and thus attracting Internet users to its website for financial gain, which does not constitute a “legitimate” or “fair” use under the Policy.

Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. According to the Complainant, it is highly unlikely that the Respondent was not aware of the Complainant’s mark based on its popularity. In the Complainant’s view, the sole purpose for Respondent’s registration and use of the Disputed Domain Name is to gain financial benefit from the Complainant’s well-known trademark, which is indicated by the unverifiable and – highly likely – fake reviews in addition to the links on the associated website to similar websites related to other known brands.

B. Respondent

The Respondent states that it “was formed on February 12, 2020 to register and hold domain names for the benefit of a non-profit organization, Everything.sucks Inc. (…) Everything.sucks has created a platform for users to exercise their free speech rights to engage in discussion and criticism related to a wide variety of topics. Users may create Wiki-style pages at Everything.sucks, each devoted to commentary and criticism on a variety of subjects, ranging from popular brands to the moon landing. After a user creates a page, Everything.sucks may (through Respondent) register a domain name using the topic of criticism as the SLD [Second-Level Domain] and the TLD [Top-Level Domain] ’.sucks’ to direct users who wish to comment on that topic to the relevant Wiki page. (…) Each page aggregates commentary and criticism of that topic and allows users to post additional commentary and criticism”.

The Respondent claims that the Disputed Domain Name is neither identical nor confusingly similar to trademarks in which the Complainant has rights. According to the Respondent, the addition of the “.sucks” generic Top-Level Domain (“gTLD”) in the Disputed Domain Name prevents confusion.

The Respondent asserts that it has rights or legitimate interests in the Disputed Domain Name, because it uses it to host a criticism website allowing users to voice legitimate criticisms of the Complainant’s business. According to the Respondent, the Complainant fails to show that the Respondent intended to misleadingly divert consumers or sought to tarnish the Complainant’s trademarks. The Respondent claims that the presence of the gTLD “.sucks” in the Disputed Domain Name and the content of the website linked to the Disputed Domain Name makes it abundantly clear that it is not affiliated with Complainant. Also according to the Respondent, criticism is not the equivalent of tarnishment, and the fact that the Respondent’s website criticizes the Complainant does not mean that the Respondent associated the Complainant’s trademark with any unwholesome activity. The Respondent asserts that the Disputed Domain Name has never been offered for sale.

Finally, the Respondent claims that the Complainant does not prove any bad faith registration or use of the Disputed Domain Name. In the Respondent’s view, the Complainant ignores the legitimate purpose of the website linked to the Disputed Domain Name: providing an open forum for the free exchange of commentary, taking into account that the primary purpose of the “.sucks” gTLD is to allow people to “Tell the world WHAT.sucks”. The Respondent further asserts that the links to similar websites are not pay-per-click links used for commercial gain.

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are administrative, the standard of proof is the balance of probabilities.

Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) The Disputed Domain Name has been registered and is being used in bad faith.

The Panel will therefore deal with each of these elements.

A. Identical or Confusingly Similar

To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that it has rights in the TRIVAGO trademark, which has been registered and used in various countries in connection with the Complainant’s hotel comparison business.

The operative element of the Disputed Domain Name is identical to the Complainant’s TRIVAGO mark.

The only additional element in the Disputed Domain Name is a gTLD suffix (“.sucks”). As a technical requirement of registration, this element is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.11.

As mentioned in section 1.13 of the WIPO Overview 3.0, domain names consisting of a trademark and a negative or pejorative term (such as <trademarksucks.com> or in this case <trademark.sucks>) are considered confusingly similar to the complainant’s trademark for the purpose of satisfying standing under the first element. The merits of such cases, in particular as to any potential fair use, are typically decided under the second and third elements. Panels have also observed that permitting such standing avoids gaming scenarios whereby appending a “sucks” variation would potentially see such cases fall outside the reach of the UDRP.

Therefore, the Panel finds that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see section 2.1 of the WIPO Overview 3.0).

The Panel notes that the Respondent has not apparently been commonly known by the Disputed Domain Name and that the Respondent does not seem to have acquired trademark or service mark rights. According to the information provided by the Registrar, the Respondent is “Pat Honey Salt, Honey Salt ltd”. The Respondent’s use and registration of the Disputed Domain Name was not authorized by the Complainant.

Combined with the distinctive and well-known character of the Complainant’ trademark, the above circumstances are usually sufficient to raise a prima facie case that the Respondent does not have any rights or legitimate interests.

The Respondent asserts that it has rights or legitimate interests in the Disputed Domain Name, because it uses it to host a criticism website allowing third-party users to voice legitimate criticisms of the Complainant’s business. The Respondent states that it was formed to register and hold domain names for the benefit of a non-profit organization, Everything.sucks Inc., which has created a platform for users to exercise their free speech rights.

As in previous recent cases involving the Respondent, this Panel also understands “these statements of the Respondent as a confirmation that it is not itself exercising any free speech rights, but rather assists another entity to provide an online platform for third parties who may eventually wish to exercise their free speech rights. The Respondent is essentially a third party, having no direct relationship with any person who might be able to invoke rights of free speech and the fair use defence under the Policy. Yet it is the registrant of the disputed domain name, and not a person who may or may not have a genuine gripe to make about the Complainant” (See Compagnie Générale des Établissements Michelin and MC PROJECTS B.V Maastricht v. Pat Honey Salt, Honey Salt Limited, WIPO Case No. D2020-2517; Naos vs. Honey Salt Ltd., CAC Case No.103142; Sanofi v. Privacy Hero Inc. / Honey Salt ltd, pat honey salt, WIPO Case No. D2020-2836).

The Respondent claims that it is irrelevant whether the Respondent is the party posting the criticism or whether Respondent is providing a forum for other users to do so. Regardless, the Respondent admits it is only holding the Disputed Domain Name for a third party. It is the Panel’s position that the Respondent must have a genuine intention to criticize the Complainant and that the Respondent’s use of the Disputed Domain Name cannot amount to a pretext for cybersquatting, commercial activity or tarnishment for fair use to exist. (See sections 2.6.1 – 2.6.3 of the WIPO Overview 3.0).

Based on the evidence provided by the Complainant, the Panel notes that the website linked to the Disputed Domain Name contains undated reviews including copied official statements of the Complainant which seems to be in response to negative feedback posted elsewhere, e.g., reading as follows:

“Thanks for your feedback. We’re sorry to hear that you didn’t have the most positive experience at trivago. (…)”. On the website linked to the Disputed Domain Name, the author of this official statement is indicated as a “Former Employee”. In the Panel’s view, it would not make sense for a former employee to make such statement which would typically emanate only from the Complainant itself. This is not evidence of a genuine intention to comment or criticize by the Respondent.

In addition, a basic Google search reveals that the content of the reviews seems to have been extracted selectively and out of context from reviews on third-party websites. The Respondent did not provide evidence showing that independent users have posted any of the reviews on the website linked to the Disputed Domain Name. The Respondent also did not provide evidence showing that it makes any effort to check whether the comments on the website are real and/or made by real people. The Panel believes that this strongly indicates that the content is automatically generated or otherwise not genuine (See Association des Centres Distributeurs E. Leclerc - A.C.D. Lec. v. Privacy Hero Inc. / Honey Salt ltd, Pat Honeysalt, WIPO Case No. D2021-0186 ; Compagnie Générale des Établissements Michelin and MC PROJECTS B.V Maastricht v. Pat Honey Salt, Honey Salt Limited, WIPO Case No. D2020-2517).

Although the Respondent claims that it has not offered the Disputed Domain Name for sale, the Panel finds that the Respondent’s registration and use of the Disputed Domain Name is similar to the situations subject to other recent UDRP cases involving the Respondent, which indicates an overall scheme: registering a domain name identical or confusingly similar to a registered trademark, linking it to a website purporting to invite criticism of a company and its trademarked products or services, and populating those websites with hyperlinks to other websites the Respondent has created in its overarching Everything.sucks platform. This Panel agrees with the findings of previous panels in cases involving the Respondent that the Respondent had engaged in cross-reference linking in order to “increase the traffic to the respective domain names and websites, which would increase their attractiveness and price in case they are being offered for sale” (See e.g., Association des Centres Distributeurs E. Leclerc - A.C.D. Lec. v. Privacy Hero Inc. / Honey Salt ltd, Pat Honeysalt, WIPO Case No. D2021-0186 ; Tetra Laval Holdings & Finance S.A. v. Privacy Hero Inc / Pat Honeysalt, Honey Salt Ltd., WIPO Case No. D2020-3398 ; Sanofi v. Privacy Hero Inc / Honey Salt ltd., pat honey salt, WIPO Case No. D2020-2836). In at least the last two cited cases , it was found that the Respondent admits that it has put offers for sale of the disputed domain names and other domain names in the ”.sucks” gTLD on the open market.

Moreover, the Panel notes that a simple search related to the Disputed Domain Name on the Registrar’s website redirects to a website stating that the Disputed Domain Name may be for sale and inviting users to make an offer to buy the Disputed Domain Name at a minimum price of USD199. In the Panel’s view, this further indicates that the Respondent has created the website associated with the Disputed Domain Name as a pretext to legitimize the registration and use of the Disputed Domain Name without a genuine intention to operate a criticism website.

The Respondent claims that the Complainant mischaracterizes the links to similar websites related to other known brands and denies that these are pay-per-click links. However, the Panel finds that such links may still serve to increase the traffic to the different websites operated by the Respondent through search engine optimization or similar tactics, which has an impact on the value of the domain names to which these websites are linked.

In the above circumstances, the Panel finds that the Respondent’s conduct does not rise to the required level necessary to have legitimate interests or rights in the Disputed Domain Name within the meaning of paragraph 4(c)(iii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see section 4.2 of the WIPO Overview 3.0 and, for example, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of bad faith registration and use:

(i) circumstances indicating that the respondent has registered or has 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 its documented out of pocket costs directly related to the domain name; or
(ii) that the respondent has 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 the respondent has engaged in a pattern of such conduct;
(…)

In the present case, the Panel finds that it is inconceivable that the Respondent was unaware of the Complainant and its trademark rights when it registered the Disputed Domain Name. The operating part of the Disputed Domain Name is identical to the distinctive and well-known TRIVAGO trademark of the Complainant, and the website linked to the Disputed Domain Name also mentions the Complainant’s trademark as well as information directly related to the Complainant.

In the Panel’s view, the Respondent’s awareness of the Complainant’s trademark rights at the time of registration suggests bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070, where POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith).

As to the use of the Disputed Domain Name, the Panel incorporates its discussion above in the “Rights or Legitimate Interests” section. As discussed above, the Panel finds, on the balance of probabilities, that the Respondent’s use of the Disputed Domain Name is part of an overall scheme linked to the Everything.sucks platform, which is designed to monetize domain names for a profit through resale of these domain names (including the Disputed Domain Name). In the particular circumstances of this case, this constitutes bad faith within the meaning of paragraph 4(b)(i) of the Policy.

UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration. A pattern of abuse has also been found where the respondent registers, simultaneously or otherwise, multiple trademark-abusive domain names corresponding to the distinct marks of individual brand owners (see section 3.1.2 of the WIPO Overview 3.0). Given the Panel’s findings above and the prior cases against Respondent making similar findings, this Panel also concludes that Respondent’s registration and use of the Disputed Domain Name is part of a pattern of preclusive registrations, thus constituting bad faith within the meaning of the Policy paragraph 4(b)(ii).

There may be additional grounds for finding bad faith registration and use of the Disputed Domain Name notably as described under the second element above, but in light of the Panel’s findings above it is not necessary to consider possible additional bases.

In light of the above, the Complainant also succeeds on the third and last element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <trivago.sucks> be transferred to the Complainant.

Flip Jan Claude Petillion
Presiding Panelist

Jonathan Agmon
Panelist

Brian J. Winterfeldt
Panelist
Date: May 24, 2021