WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alstom v. Privacy Hero Inc. / Honey Salt ltd, Pat Honeysalt
Case No. D2021-1148
1. The Parties
The Complainant is Alstom, France, represented by Lynde & Associes, France.
The Respondent is Privacy Hero Inc., United Kingdom / Honey Salt ltd, Pat Honeysalt, United Kingdom, represented by Orrick, Herrington & Sutcliffe, LLP, United States of America.
2. The Domain Names and Registrar
The disputed domain names <alstom.sucks> and <alsthom.sucks> are registered with Rebel Ltd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2021. On April 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 20, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 21, 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 April 21, 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 April 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 23, 2021. The Response was filed with the Center on May 22, 2021.
The Center appointed Mihaela Maravela, Stephanie G. Hartung, and Adam Taylor as panelists in this matter on August 2, 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 French company created in 1928. It carried on its activities under the name Alsthom before changing it to Alstom in 1998. The Complainant is a leader in the field of power generation, power transmission and rail infrastructure, employing 36,000 professionals in more than 60 countries.
The Complainant is the exclusive owner of a number of registered trademarks consisting of or including the word “Alstom” or “Alsthom”, including:
- the International trademark registration No. 706292 for ALSTOM, registered on August 28, 1998 covering goods and services in classes 6, 7, 9, 11, 12, 19, 24, and 35-42,
- the European Union trademark registration No. 00948729 for ALSTOM, registered on August 8, 2001 covering goods and services in classes 6, 7, 9, 11, 12, 16, 19, 24, and 35-42,
- the European Union trademark registration No. 011179471 for ALSTHOM, registered on February 11, 2013 covering goods and services in classes 7, 9, 11, 12, 37, 39, and 42;
- the International trademark registration No. 1506804 for ALSTHOM, registered on November 2, 2018 covering goods and services in classes 9, 12, 37, 39, and 42.
The Complainant is the owner of various domain names consisting of ALSTOM or ALSTHOM, for instance, <alstom.com>, registered since January 20, 1998, and <alsthom.com>, registered since June 20, 2000.
The disputed domain names were registered on October 15, 2020. They resolve to webpages on the “Everything.Sucks” platform that display a yellow speech bubble containing the elements of the disputed domain names above the tagline “Tell the World!” alongside a search engine with the words “Search Everything.Sucks” (the “Websites”). A sidebar displays links to “Popular Pages” and “Recent Updates” on the platform regarding other companies and trademarks. The webpages at the disputed domain names contain basic information about the Complainant and invite Internet users to post customer reviews and feedback about the Complainant.
The Websites include the following statements:
“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.
AUTH CODE: [redacted]
We are all about feedback. If you have some thoughts for us, you can email us at [...]@everything.sucks.”
5. Parties’ Contentions
The Complainant argues that the disputed domain names are confusingly similar to its trademarks ALSTOM and ALSTHOM respectively, as the disputed domain names completely reproduce the Complainant’s prior ALSTOM, and respectively ALSTHOM trademarks in addition to the suffix “.sucks”, which only indicates that the disputed domain names are registered in the “.sucks” generic Top-Level Domain (“gTLD”). The Complainant contends that the “.sucks” gTLD should be disregarded in determining identity or confusing similarity for the purposes of the Policy, and also that the risk of confusion is heightened as the trademark ALSTOM is famous.
As regards the second element, the Complainant argues that the Respondent is not affiliated in any way to the Complainant and that it has not authorized, licensed or permitted the Respondent to register or use a domain name incorporating the Complainant’s trademarks. As per the Complainant, the Respondent is not commonly known under any of the ALSTOM or ALSTHOM names. The Complainant further contends that the Websites are not genuine and that the content appears to be computer generated, hence the Respondent lacks rights or legitimate interests in respect of the disputed domain names.
With respect to the third element, the Complainant argues that the disputed domain names incorporate the Complainant’s trademarks and were registered long after the Complainant’s trademarks became well-known, therefore, it is virtually impossible that the Respondent was not aware of the Complainant’s activities at the registration date. The Complainant also shows that the Respondent did not reply to its cease-and desist letter, that the Respondent aimed to avoid being contacted by holders of prior rights, that the disputed domain names are not used in relation to a bona fide offering of goods or services, and that the Respondent has registered other domain names associated to well-known trademarks under the “.sucks” gTLD. The Complainant concludes that the registration and use of the disputed domain names takes unfair advantage of the Complainant’s reputation and that the Respondent intentionally attempted to attract Internet users by creating a likelihood of confusion with the Complainant’s trademarks.
The Respondent argues it was formed in February 2020 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 to engage in discussion and criticism related to a wide variety of topics. As per the Response, users may create Wiki-style pages at Everything.sucks, each devoted to commentary and criticism on a variety of subjects. After a user creates a page, Everything.sucks may (through the Respondent) register a domain name using the topic of criticism as the second level domain and the top level domain “.sucks” to direct users who wish to comment on that topic to the relevant Wiki page.
The Respondent argues that the Complainant failed to meet its burden of proof on all three elements of the Policy.
With respect to the first element, the Respondent argues that where a trademark is used in connection with a negative gTLD such as “.sucks”, the pejorative nature instantly and obviously renders the domain name as a whole non-identical and prevents confusion.
As regards the second element, the Respondent argues that it has a legitimate interest in the disputed domain names, as it uses these to host criticism websites. As per the Respondent, it is irrelevant whether the Respondent is the party posting the criticism or whether the Respondent is providing a forum for other users to do so. The Respondent claims that the Complainant has not proved that the entries on the websites at the disputed domain names are not genuine and, moreover, that this proceeding is not the appropriate forum for the accuracy of the website content to be assessed. In addition, the Respondent claims that the primary purpose of the disputed domain names is to provide a forum for users to engage in free expression and criticism of the Complainant, and not for tarnishment.
With respect to the third element, the Respondent argues that the primary purpose of the “.sucks” gTLD is to allow people to criticize and no bad faith could be claimed by trademark owners in such cases. In addition, the Respondent argues that its use of a privacy service is not evidence of bad faith. The Respondent also claims that the Complainant is wrong to conclude that its lack of response to the cease-and-desist letters is evidence of bad faith, as the Respondent receives a significant amount of mail every day and cannot respond instantly to every piece of correspondence. Moreover, an authorization code was added to the bottom of every page on Everything.sucks before the Complaint was filed, which would have allowed the Complainant to transfer either of the disputed domain names. The Respondent claims that there is no evidence of its intention to resell the disputed domain names and that it is willing to transfer the disputed domain names free of charge. The Respondent admits to having registered multiple domain names associated with well-known trademarks with the gTLD “.sucks”, but argues this is not evidence of bad faith, as the Respondent acts to register and hold domain names for the benefit of a non-profit organization for use on a platform for criticism and commentary on a variety of topics.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:
(i) that the disputed domain names are 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 names; and
(iii) that the disputed domain names were registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has proved its rights over the ALSTOM and ALSTHOM trademarks.
The disputed domain names consist of the ALSTOM and ALSTHOM trademarks respectively, in addition to the gTLD “.sucks”. The gTLD is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark, as they are required for technical reasons. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, according to Section 1.13 of the WIPO Overview 3.0, “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 merits of such cases, in particular as to any potential fair use, are typically decided under the second and third elements.” This approach is aimed at avoiding gaming scenarios whereby appending a “sucks variation” would potentially see such cases fall outside the reach of the UDRP.
It is also well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.” WIPO Overview 3.0, section 1.7.
This Panel concludes that the disputed domain names are identical or confusingly similar to the Complainant’s trademarks ALSTOM and ALSTHOM respectively, and, therefore, finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
In the present case, the Complainant has established a prima facie case, namely in that it holds rights over the trademarks ALSTOM and ALSTHOM and in that it states that it has not granted the Respondent any license to use the disputed domain names.
There is no evidence that the Respondent is using the disputed domain names in connection with a bona fide offering of goods or services or that the Respondent is commonly known by the disputed domain names.
As regards the third circumstance in paragraph 4(c) of the Policy, the Complainant argues that the pages at the disputed domain names are not genuine and that the content appears to be computer generated, hence the Respondent lacks rights or legitimate interests in respect of the disputed domain names. The Respondent argues instead that it uses the disputed domain names to host legitimate criticism websites.
The Panel considers that the Respondent has not demonstrated that it is making a legitimate use of the disputed domain names.
To support fair use under UDRP paragraph 4(c)(iii), the respondent’s criticism must be genuine and non-commercial. Section 2.6.1 of the WIPO Overview 3.0.
Under the circumstances of the present case, the Panel is not satisfied that the Websites represent an actual “gripe site” that could represent genuine and fair exercise of the right of free speech, giving rise to rights or legitimate interests of the Respondent in the disputed domain names. Instead, it appears more likely to the Panel that the websites at “Everything.Sucks” platform, including the Websites, have been created to increase traffic for such websites and seeking thereby to increase the selling value of the “.sucks” domain names registered by the Respondent or for some other ulterior commercial purpose.
As the evidence submitted indicates, the Websites mainly contain what purport to be comments of former employees of the Complainant drawn from other websites. These are undated and identified only by job titles.
The Panel is not convinced that these comments are genuine organic reviews left by users of the Websites; to the contrary, the Panel has the impression that they are somehow automatically-generated from other sources, as the Complainant asserts.
For example, the Complainant points out that one review implausibly describes a job as “boring but interesting”.
Moreover, other comments read as follows: “Former Employee - Quality Engineer says ’I can’t find out. Anything to say’”.
This simply makes no sense.
“Credit and Collections Specialist (Former Employee) says ’Because of the type of business, I learned something new every day. Management and associates worked well together to handle customer accounts. Most issues were resolved through negotiations.’” Yet this apparently positive review merited only one star.
In addition, the Websites include content from, and links to, news and social media sites that do not on their face provide criticism of the Complainant and, instead, appear to consist of randomly-generated content, some of which is incoherent.
The Panel is not convinced that this activity is evidence of genuine intention to criticize by the Respondent. While the Respondent admits in the declaration of its domain name manager submitted with the Response that “because aggregated sources are generated based on keywords, it is possible that some irrelevant information may be “inadvertently included”, this does not explain why a purported genuine criticism website includes automated comments or news with no criticism.
Furthermore, despite the Complainant having put forward a prima facie case as regards the automated and non-genuine nature of the Websites, the Respondent did not provide any detailed evidence showing exactly how it manages the content at the Websites in order to support its contention that the reviews are genuine user-generated content or to otherwise demonstrate how its alleged genuine criticism purpose is achieved.
Moreover, the Respondent’s Websites contain links to other webpages on the Everything.Sucks platform about third parties, i.e., other brands, with similar content. The Respondent explains in the declaration of its domain name manager submitted with the Response that the “links on the left-hand side of every Everything.sucks page are internal navigation aids to direct users to Wiki pages for other topics on the Everything.sucks platform”. If the Respondent is claiming that someone wishing to criticize the Complainant would be likely to click on the hyperlinked pages listed on the left-hand side of the webpage to find other companies they might wish to criticize or see criticism of, this does not seem a plausible explanation for the inclusion of these links on the Websites. Instead, the Panel considers that the most likely explanation is that the inclusion of these links was intended to increase the traffic to the respective domain names and websites, which would generate revenue and possibly increase the domain names’ attractiveness and price in case they are being offered for sale.
The Panel also notes that the Respondent has not provided any evidence, such as a dated business plan, supporting its claim that its platform is genuinely noncommercial (instead it claims to operate for the benefit of a non-profit organization).
The Respondent states that it has never attempted to sell the disputed domain names to anyone, including the Complainant, and that none of the disputed domain names have been listed for sale on any website since March 12, 2021. The Respondent’s careful choice of words seems intentional as it appears that the overall scheme surrounding the “Everything.sucks” platform revealed by recent UDRP cases involving the Respondent included registration of domain names identical or confusingly similar to registered trademarks, linking them to websites purporting to invite criticism of a company and its trademarked products or services, and populating those websites with hyperlinks to other websites that the Respondent has created as part of its Everything.sucks platform. Also, the Respondent had initially offered the domain names at “Everything.Sucks” platform for sale (e.g. Sanofi v. Privacy Hero Inc. / Honey Salt ltd, pat honey salt, WIPO Case No. D2020-2836; Tetra Laval Holdings & Finance S.A. v. Privacy Hero Inc / Pat Honeysalt, Honey Salt Ltd., WIPO Case No. D2020-3398 ; Compagnie Générale des Établissements Michelin and MC PROJECTS B.V Maastricht v. Pat Honey Salt, Honey Salt Limited, WIPO Case No. D2020-2517). Subsequently, and as admitted by the Respondent, “partly in response to allegations that mischaracterized the intentions and purposes of Honey Salt and Everything.sucks, in March 2021 language was added on each Everything.sucks Wiki page to make it more clear that Honey Salt and Everything.sucks are not in the business of obtaining domain names for the purpose of reselling them”. The Respondent refers to the language apparently included on or around March 12, 2021, offering to transfer at no cost the disputed domain names to anyone interested. However, the Panel notes that another UDRP panel attempted to follow a similar alleged free-transfer procedure offered by the Respondent in relation to another “.sucks” domain name and that the panel discovered that the domain name could only be acquired for a price above USD 3,000. See M and M Direct Limited v. Pat Honey Salt, Honey Salt Limited, WIPO Case No. D2020-2545.
The above circumstances point to the conclusion that the Respondent has engaged in a practice of cross-reference linking between its websites at the Everything.Sucks platform, and external linking to third parties’ news websites or social media accounts, that may serve to increase the traffic to the different websites operated by the Respondent on the mentioned platform through search engine optimization tools or similar tactics, which has an impact on the value of the domain names to which the relevant websites redirect. See for a similar finding Trivago N.V. v. Pat Honey Salt, Honey Salt ltd, WIPO Case No. D2021-0692.
The statement of the Respondent that it is willing to transfer the disputed domain names to any interested person and that it would not sell these, is most likely a defensive tactic, with the Respondent adjusting the case strategy to the findings of previous UDRP decisions against it. As such, on the one side, the Respondent argues that the Websites are designed for genuine criticism of the Complainant, but on the other side, it publicly offers to transfer the disputed domain names to any interested person. This could open the door for tarnishment or other similar tactics by competitors or the like, which is not consistent with the overall argument of the Respondent that it intends to host a genuine criticism website.
The Panel finds that the decisions referred to above indicate a pattern of trademark-abusive domain name registrations (WIPO Overview 3.0, section 2.5.3). See e.g., M and M Direct Limited v. Pat Honey Salt, Honey Salt Limited, supra., and the cases cited there.
Considering the above matters, the Panel finds on the balance of probabilities that the Respondent is using the disputed domain names as a pretext for commercial gain (or other purposes inhering to the Respondent’s benefit) rather than as a genuine, non-commercial criticism site. The Panel finds accordingly that the Respondent has no rights or legitimate interests in respect of the disputed domain names and the requirement of paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
To fulfil the third requirement of the Policy, the Complainant must prove that the disputed domain names were registered and are being used in bad faith.
It is not disputed that the Respondent was aware of the Complainant’s trademarks at the time of the registration of the disputed domain names.
As regards the use of the disputed domain names, the Panel has concluded that the Respondent registered and used the disputed domain names for Websites that purported to be legitimate criticism websites but that, on the balance of probabilities, were more likely to have been designed to profit by taking unfair advantage of the Complainant’s trademarks by increasing traffic to the Respondent’s other websites and to obtain profit through resale of the disputed domain names.
In these circumstances, the Panel considers that the Respondent has registered and is using the disputed domain names in bad faith and that the Complainant has also established the third element of paragraph 4(a) of the Policy.
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 names <alstom.sucks> and <alsthom.sucks> be transferred to the Complainant.
Stephanie G. Hartung
Date: August 12, 2021