WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
M and M Direct Limited v. Pat Honey Salt, Honey Salt Limited
Case No. D2020-2545
1. The Parties
The Complainant is M and M Direct Limited, United Kingdom, represented by Eversheds Sutherland (International) LLP, United Kingdom.
The Respondent is Pat Honey Salt, Honey Salt Limited, United Kingdom, represented by Orrick, Herrington & Sutcliffe, LLP, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <mandmdirect.sucks> is registered with Rebel Ltd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2020. On October 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 2, 2020, 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 October 2, 2020, 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 October 5, 2020.
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 October 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2020. The Response was filed with the Center on October 31, 2020.
Following a request from the Complainant, the Center gave notice on November 13, 2021 of a suspension of the proceedings until December 13, 2021, for the purpose of settlement discussions. The period of suspension was extended on several occasions at the parties’ request. No settlement having been reached, the proceedings were reinstituted as of April 7, 2021.
The Center appointed Steven A. Maier, David Perkins, and Douglas M. Isenberg as panelists in this matter on May 5, 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 is a company registered in England and Wales. It is an online off-price retailer of fashion items and has traded in the United Kingdom under the name M AND M since 1987.
The Complainant is the owner of numerous trademark registrations for the mark M AND M DIRECTin various territories. Those registrations include, for example:
- European Union trademark number 006679559 for the word mark M AND M DIRECT, registered on January 22, 2009, in International Classes 25, 28 and 35;
- International trademark number 1111792 for the word mark M AND M DIRECT, registered on November 11, 2011, in International Classes 25, 28 and 35; and
- United States trademark number 6208836 for the word mark M AND M DIRECT, registered on December 1, 2020, in International Class 35.
The Complainant trades from a principal website at “www.mandmdirect.com”. That website incorporates a logo comprising the stylized white text “M and m DIRECT” against a rectangular blue background (the “Complainant’s Logo”).
The disputed domain name was registered on September 18, 2020.
On September 30, 2020, the disputed domain name resolved to a website headed “Mandmdirect SUCKS – Tell the World! – Search Everything.Sucks”. The next item on the website was a link to “Check if this domain in available”. The website continued with the heading “On Social” under which appeared four short comments, one of which appeared to have been copied from the Complainant’s Twitter account and two of which appeared to be promoting a marketing summit of no relevance to the Complainant. Clicking on the link referred to above produced a redirection to a page at Sedo.com offering the disputed domain name for sale at USD 199.
At the date of the Panel’s own review,1 the disputed domain name resolved to a website headed “M and M Direct Sucks Customer Reviews and Feedback”. The website prominently displayed the Complainant’s Logo. The website included a brief introductory paragraph about the Complainant followed by a section headed “Reviews” which appeared to comprise mainly one- and two-star reviews, apparently from former employees of the Complainant, identified as, for example, “Warehouse Operative (Temp)” or “Customer Service Operative”. The website also contained a prominent, boxed statement as follows:
“Everything.sucks is a non-profit organization and communications forum for social activism. This website allows users a voice to share their point of view online about what sucks in the world.
We occasionally buy a dot sucks domain and point it at a specific page. We do this to bring awareness to our site and because, well, we love the dot sucks domain. If you ask us if we would sell the domain, our answer is simple. Absolutely not. We will give it to you.
If the domain pointing at this page inspires passion in you and you want to build a fuller site around it, you can have it. That’s right, we will simply give it to you. We want to promote more sites on the Internet where people can share their voices.
To make it as simple as possible for you to have this domain, simply take this Authorization Code to your favourite domain name registrar, and they can transfer it right to you.
AUTH CODE: [redacted]
We are all about feedback. If you have some thoughts for us, you can email us at email@example.com.”
5. Parties’ Contentions
The Complainant states that it has traded under a name including the term M AND M since 1987, this being an invented term reflecting the names of its founders, Mark Churchwood and Martin Ellis. Having traded historically as M AND M SPORTS, it changed its name to M AND M DIRECT in 2006.
The Complainant states that it is currently one of Europe’s leading online off-price retailers, with over 3.1 million customers and dedicated websites in numerous European countries. It states that it also makes online sales worldwide, including to Australia, India, and the United States.
The Complainant states that its website at “www.mandmdirect.com” receives more than 200 million visits each year and that its revenue for the year ended July 28, 2019, was over GBP 183 million.
The Complainant submits that the disputed domain name is identical or confusingly similar to its trademark M AND M DIRECT. It contends that the disputed domain name is identical to its trademark, but for the generic Top-Level Domain (“gTLD”) “.sucks” which is to be disregarded for the purpose of comparison.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that it has never authorized the Respondent to use its M AND M DIRECT trademark, that the Respondent has not commonly been known by that name, and that the Respondent is making neither bona fide commercial use nor legitimate noncommercial or fair use of the disputed domain name.
The Complainant contends, in particular, that the Respondent’s website cannot constitute bona fide commercial use or legitimate noncommercial or fair use of the disputed domain name because, while it did contain some comments concerning the Complainant, it redirected to a website offering the disputed domain name for sale. The Complainant states that its trademark M AND M DIRECT has no ordinary meaning and that the Respondent could not legitimately register or use it without the Complainant’s consent. The Complainant contends that the Respondent registered the disputed domain name for no reason other than to cause mischief and detriment to the Complainant and to profit from the registration of a domain name in which it has no legitimate interest.
The Complainant submits that the disputed domain name was registered and has been used in bad faith.
The Complainant states that since its trademark M AND M DIRECT represents an unusual combination of letters and words, and had been in use for some 12 years prior to the registration of the disputed domain name, it is obvious that the Respondent registered the disputed domain name with the Complainant’s trademark in mind. The Complainant adds that the Respondent’s contact details include a UK telephone dialling code, which further suggests that the Respondent was aware of the Complainant’s business.
The Complainant submits that by registering a domain name corresponding to the Complainant’s wholly arbitrary and distinctive trademark, and then offering that domain name for sale, it is clear that the Respondent registered the disputed domain name primarily for the purpose of selling the disputed domain name for valuable consideration in excess of its documented out-of-pocket costs.
The Complainant contends that the Respondent’s use of a “.sucks” gTLD does not legitimize the Respondent’s use of the disputed domain name. The Complainant says that the disputed domain name is nearly identical to the Complainant’s trademark and that it is difficult to see how any party other than the Complainant could legitimately use the name. The Complainant submits evidence that the operator of the “.sucks” gTLD encourages trademark owners themselves to purchase the relevant “.sucks” gTLD as a “defensive registration” to prevent other parties from defaming them. The Complainant submits that even the operator of the “.sucks” gTLD therefore recognizes that such domain names will be harmful in the hands of a third party.
The Complainant also submits that the Respondent has registered the disputed domain name as a blocking registration to prevent the Complainant itself from registering that domain name and that the Respondent is using the disputed domain name misleadingly to divert Internet users to its website.
The Complainant further contends that the Respondent’s registered contact details are deficient and that there is confusion in particular about the country in which it is located.
The Complainant requests the transfer of the disputed domain name.
The Respondent states that it registers domain names on behalf of a non-profit website, “www.everything.sucks”. It states that this website constitutes an open forum for users to exercise their free speech rights and to “Tell the world WHAT.sucks”, which is one of the main purposes of the
ICANN-approved “.sucks” registry. The Respondent states that, after users have created a “Wiki” page at “www.eveything.sucks”, they may then obtain the corresponding “.sucks” domain name to redirect to that page.
The Respondent submits that it registered the disputed domain name on or about September 18, 2020, and redirected it to the corresponding Wiki page on “www.everything.sucks” for the purpose of facilitating free discussion and criticism of the Complainant. The Respondent says that the relevant webpage includes a prominent yellow speech bubble inviting users to “TELL THE WORLD” that “M and M Direct Sucks” and that the page displays user criticism of the Complainant, including comments on its customer service and treatment of employees. The Respondent submits that the page follows its usual template, looks nothing like the Complainant’s own website, and could not be mistaken for the Complainant’s own website by any Internet user.
The Respondent denies that the disputed domain name is identical or confusingly similar to the Complainant’s M AND M DIRECT trademark. It submits in particular that the “.sucks” gTLD is not like any other gTLD because it is pejorative by its nature and makes clear that a connected website is not affiliated with the relevant trademark owner.
The Respondent further submits that, while the disputed domain name may be similar to the Complainant’s trademark for the purpose of the Complainant’s standing to bring the proceedings, that does not of itself establish confusing similarity between the disputed domain name and the Complainant’s trademark.
The Respondent asserts that it has rights and legitimate interests in respect of the disputed domain name, namely, legitimate noncommercial or fair use, by virtue of hosting a criticism site. It notes that, under paragraph 4(c) of the Policy, such use must be “without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue” and states that the Complainant has failed to address that issue.
The Respondent submits that domain name registrations that are justified by legitimate free speech rights are not to be considered abusive. It cites in this regard paragraph 172 of the Final Report of the WIPO Internet Domain Name Process dated April 30, 1999. The Respondent submits further that incorporating a company’s trademark in a domain name that indicates it is critical of that company, and for the purpose of identifying the company for that critical purpose, is generally to be regarded as fair use (Alsace Croisieres SA v. John Livingstone / Write Place Publications Inc., WIPO Case No. D2013-2025).
The Respondent notes the Complainant’s admission that the Respondent’s website contains “some comments” which have been made about the Complainant and says that the quantity or quality of such criticism is not a relevant factor in determining the legitimacy of a criticism site (Wal-Mart Stores, Inc. v. wallmartcanadasucks.com and Kenneth J. Harvey, WIPO Case No. D2000-1104).
The Respondent submits that, since its website provides a forum for users to engage in discussions about the Complainant, the fact that the disputed domain name may be for sale neither detracts from that purpose nor deprives the Respondent of rights or legitimate interests in the disputed domain name. In particular, the Respondent argues that it is permitted to have intent for commercial gain as long as there is no intent to misleadingly divert consumers or to tarnish the trademark at issue.
The Respondent contends that the Complainant has provided no evidence of any attempt to divert consumers and that it is clear from the content of its website, which contains comments critical of the Complainant, that it is not the Complainant’s website.
The Respondent further submits that criticism of the Complainant does not amount to tarnishment of its trademark: if it did so, then every criticism site could be branded as tarnishing and tarnishment in this context properly refers to unseemly content, e.g.,pornography or violence (Ryanair Limited v. Michael Coulston, WIPO Case No. D2006-1194).
The Respondent denies having registered or used the disputed domain name in bad faith. It states that the nature of the disputed domain name is irrelevant, even if similar to the trademark at issue, where it is used in connection with a genuine criticism site. The Respondent argues that if the purpose of every “.sucks.” domain name was to cause mischief and detriment, as the Complainant claims, then ICANN would not have approved the “.sucks” gTLD in the first place.
The Respondent submits that the offer to sell the disputed domain name is not of itself evidence of bad faith and that the primary purpose of the Respondent’s website is a fair one, namely, to provide a forum for open debate and criticism concerning the Complainant. The Respondent says that is does not seek to profit from the trademark value of the Complainant’s mark, but only to direct users to a platform for engaging in legitimate criticism.
The Respondent denies that its primary purpose in registering the disputed domain name was to sell it to the Complainant and states that the Complainant has produced no evidence to this effect. Nor is there any evidence that the Respondent attempted to sell the disputed domain name for more than its documented out-of-pocket costs associated with the registration. The Respondent further denies that it registered the disputed domain name as a blocking registration and asserts that the Complainant had five years to register the disputed domain name itself, but chose not to do so.
Concerning the Respondent’s registration details, the Respondent denies that it has made any attempt to conceal its identity.
The Respondent contends that the Complaint should in the circumstances be dismissed.
6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are 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) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it has registered trademark rights in the mark M AND M DIRECT. The disputed domain name is identical to that trademark but for the gTLD “.sucks” which is to be disregarded for the purpose of assessing the identical or confusing similarity test under paragraph 4(a)(i) of the Policy.
The Respondent is incorrect in asserting that a “.sucks” domain name should be approached differently from those involving other gTLDs: see e.g., section 1.13 of WIPO Overview 3.0 which states: “A domain name consisting of a trademark and a negative or pejorative term (such as <[trademark]sucks.com>, <[trademark]구려.com>, <[trademark]吸.com>, or even <trademark.sucks>) is considered confusingly similar to the complainant’s trademark for the purpose of satisfying standing under the first element.”
The Respondent’s argument that establishing a complainant’s standing to bring a complaint is not the same as establishing confusing similarity is also without merit: In conjunction with proof of rights in a mark, there is no standing under paragraph 4(a)(i) to go on to examining the second and third Policy elements in the absence of identity or confusing similarity between the disputed domain name and the complainant’s trademark.
The Panel finds in the circumstances that the disputed domain name is identical to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
As a threshold matter, under paragraph 4(c)(iii) of the Policy, a respondent can demonstrate rights or legitimate interests in respect of a disputed domain name if it can show that it is “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
As observed in section 2.6 of WIPO Overview 3.0: “UDRP jurisprudence recognizes that the use of a domain name for fair use such as noncommercial free speech, would in principle support a respondent’s claim to a legitimate interest under the Policy.” However, section 2.6.1 goes on to say: “To support fair use under UDRP paragraph 4(c)(iii), the respondent’s criticism must be genuine and noncommercial; in a number of UDRP decisions where a respondent argues that its domain name is being used for free speech purposes the panel has found this to be primarily a pretext for cybersquatting, commercial activity, or tarnishment.”
The principal task for the Panel in this case, therefore, is to assess whether the Respondent is operating a genuine, noncommercial or fair use criticism site, or whether that apparent use of the disputed domain name is merely a pretext for some other purpose.
Having examined the content of the Respondent’s website on both the dates referred to in section 4 of this Decision, the Panel is not of the view that the website gave the impression at either juncture of being a genuine criticism site. At the earlier date, the site included only four short comments, two of which appeared to be promoting a marketing summit of no relevance to the Complainant. It also included a prominent redirection to another website offering the disputed domain name for sale. At the later date, the website contained what purported to be the comments of, principally, former employees of the Complainant, although these were undated and identified only by job titles.
The Panel conducted a Google search against a sample of two of the comments included on the Respondent’s, website, which purported to have been made by “Customer Services Operator (Former Employee) and “Warehouse Operative (Former Employee)” respectively. This search indicated that the comments had in fact been posted on a recruitment website, “www.uk.indeed.com”, in May 2012 and September 2013 respectively. While the evidence of two postings is not a determinative factor, the Panel does not consider a site that incudes postings taken from another website and dating from 2012 and 2013 to be indicative of a legitimate criticism site created in 2020.
The Panel was also puzzled by the boxed statement that appeared at the bottom of the Respondent’s website at the date of the Panel’s review, as set out in detail above. The statement appeared to suggest that any Internet user could obtain the disputed domain name from the Respondent, free of charge (and presumably on a first-come-first-served basis) simply by giving their “favourite domain name registrar” the authorization code published on the website. Since this statement appeared inherently unlikely to the Panel, it attempted to follow the stated procedure using six known domain name registrars.2 All of these registrars indicted that they did not deal in “.sucks” domain names or that the disputed domain name was unavailable or ineligible for transfer. On further enquiry, the Panel was able to find two registrars that would accept the transfer of the disputed domain name,3 however these transfers were priced at USD 3,198 and USD 4,270 respectively, the disputed domain name being described as a “premium domain” in the latter case.
Once again, while the results of the Panel’s limited factual enquiries are not determinative, this investigation did not suggest to the Panel that the Respondent’s website represented a genuine, noncommercial criticism site being operated by the Respondent in good faith.
The Panel also notes that the Respondent’s actions have attracted the attention of the so-called domaining community, with one blogger writing: “Publishing auth codes right there on its web site appears to be the latest stage in a cat-and-mouse game <Everything.sucks> is playing with the trademark lawyers pursuing it through the UDRP process.”4
Further, section 2.5.2 of the WIPO Overview 3.0 considers “circumstances beyond the domain name itself” which may be relevant in a panel’s assessment of fair use. These include (inter alia)the following criteria: “(i) whether the domain name has been registered and is being used for legitimate purposes and not as a pretext for commercial gain or other such purposes inhering to the respondent’s benefit…” and “(iv) whether the respondent has refrained from engaging in a pattern of registering domain names corresponding to marks held by the complainant or third parties.”
As to the second of these matters, as evidenced by publicly available records, the Respondent has been the respondent in at least five previous cases under the UDRP or the Uniform Rapid Suspension System (“URS”), as follows:
- Compagnie Générale des Établissements Michelin and MC PROJECTS B.V Maastricht v. Pat Honey Salt, Honey Salt Limited, WIPO Case No. D2020-2517 (domain names <bfgoodrich.sucks> and <uniroyal.sucks>);
- Sanofi v. Privacy Hero Inc. / Honey Salt ltd, pat honey salt, WIPO Case No. D2020-2836 (domain name <sanofi.sucks>);
- Tetra Laval Holdings & Finance S.A. v. Privacy Hero Inc / Pat Honeysalt, Honey Salt Ltd., WIPO Case No. D2020-3398 (domain name <tetrapak.sucks>); and
- Association des Centres Distributeurs E. Leclerc - A.C.D. Lec. v. Privacy Hero Inc. / Honey Salt ltd, Pat Honeysalt, WIPO Case No. D2021-0186 (domain name <eleclerc.sucks>).
- Capsugel Belgium NV v. Honey Salt Ltd. / Privacy Hero Inc., National Arbitration Forum Claim No. 1927725 (domain name <capsugel.sucks>).
Each of these cases was decided in favour of the relevant complainant, on the ground (inter alia) that, while the Respondent purported in each case to be operating a legitimate “gripe” website, this was more likely to be a pretext seeking to legitimize the conduct of the Respondent, with the true aim of taking unfair commercial advantage of the respective complainants’ trademark by increasing Internet traffic to the associated website and to other websites of the Respondent.
Taking all the above matters into account, the Panel finds on the balance of probabilities that the Respondent is using the disputed domain name as a pretext for commercial gain (or other purposes inhering to the Respondent’s benefit) rather than as a genuine, noncommercial criticism site. The Panel finds accordingly that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Similar considerations apply to the issue of bad faith as to the question of rights or legitimate interests considered above.
The Panel finds that the Respondent was obviously aware of the Complainant’s trademark M AND M DIRECT when it registered the disputed domain name as it did so, on its own admission, for the purpose of identifying the Complainant. While the Respondent submits that it has used the disputed domain name for the purpose of a genuine, noncommercial criticism site inviting open discussion about the Complainant, the Panel does not find the website to be genuinely directed to that purpose and considers it instead to represent a pretext for taking unfair commercial advantage of the Complainant’s trademark.
While the Respondent’s business model is somewhat unclear and evidently subject to change, the Panel finds it to be most likely, on the evidence referred to above, that the Respondent registered the disputed domain name primarily for the purpose of selling it to the Complainant for a sum in excess of its out-of-pocket costs directly related to the domain name (paragraph 4(b)(i) of the Policy). Alternatively, as determined in the previous cases referred to above, the Respondent may have registered the disputed domain name for the purpose of driving traffic to this and other domain names owned by the Respondent with the object of increasing their resale value. In any event, the Panel finds that the Respondent’s website does not constitute a genuine, noncommercial criticism website and finds in all the circumstances that the disputed domain name was registered and is being used in bad faith.
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, <mandmdirect.sucks>, be transferred to the Complainant.
Steven A. Maier
Douglas M. Isenberg
Date: May 13, 2021
1 As observed in paragraph 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name […]”
2 Domain.com, Bluehost.com, Network Solutions, GoDaddy, Namecheap.com, and Dreamhost.com
3 Europe Registry and Webnames.ca
4 “Everything.sucks publishes transfer auth codes for thousands of domains in latest “.sucks” pimpage” (Domain Incite), “www.domainincite.com/26579-everything-sucks-publishes-transfer-auth-codes-for-thousands-of-domains-in-latest-sucks-pimpage” (visited May 13, 2021).