WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Euromaster Services et Management. v. Privacy Hero Inc. / Domain Admin, Honeysalt Ltd
Case No. D2021-1361
1. The Parties
Complainant is Euromaster Services et Management, France, represented by Dreyfus & associés, France.
Respondent is Privacy Hero Inc., Turks and Caicos Islands, United Kingdom / Domain Admin, Honeysalt Ltd, United Kingdom, represented by Orrick, Herrington & Sutcliffe, LLP, United States of America.1
2. The Domain Name and Registrar
The disputed domain name <euromaster.sucks> (hereinafter “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 May 3, 2021. On May 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 7, 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 Complainant on May 7, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 11, 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 Respondent of the Complaint, and the proceedings commenced on May 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 1, 2021. Respondent requested an extension to file a response and the new Response due date was June 5, 2021. The Response was filed with the Center on June 5, 2021. On June 15, 2021, Complainant filed a supplemental filing and Respondent submitted a reply to it on June 23, 2021. On July 13, 2021, the Panel issued the Administrative Panel Order No, 1 granting Complainant’s request to submit a Supplemental Filing and inviting Respondent to submit a response thereto. The Panel also informed the Parties that the due date to submit the Decision to the Center was extended to July 26, 2021.
The Center appointed Lawrence K. Nodine, Douglas M. Isenberg, and Stephanie G. Hartung as panelists in this matter on June 29, 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
Complainant is a wholly owned subsidiary of the Michelin group, the well-known tire company, with operations in 170 countries. Michelin operates a network of over 2,000 tire service and vehicle maintenance facilities in 17 European countries. It also operates similar facilities in the United Kingdom under the trademark ATS EUROMASTER.
Complainant owns numerous EUROMASTER trademark registrations around the world, including:
- United Kingdom trademark EUROMASTER, No. UK00001455074, registered on June 25, 1993, duly renewed and covering goods and services in classes 12 and 37.
- United Kingdom trademark EUROMASTER, No. UK00002313137, registered on November 28, 2003, duly renewed and covering goods and services in classes 9 and 35.
- French trademark EUROMASTER, No. 1624667, registered on July 25, 1990, duly renewed and covering goods and services in classes 12 and 37.
5. Parties’ Contentions
With respect to Policy paragraph 4(a)(i), Complainant contends that the Disputed Domain Name is identical or at least confusingly similar to Complainant’s trademark EUROMASTER. The Disputed Domain Name reproduces entirely Complainant’s trademark EUROMASTER without adding any term that could reduce the similarity between a trademark and a domain name. The generic Top-Level Domain (“gTLD”) “.sucks” does not preclude a finding of confusion similarity.
With respect to Policy paragraph 4(a)(ii), Complainant contends that Respondent is neither affiliated with Complainant in any way nor has it been authorized by Complainant to use and register its trademarks, or to seek registration of any domain name incorporating said mark.
Complainant argues that “the information contained on this website is naturally false and could be misleading for Internet consumers. It translate [sic] the willingness of Respondent to take advantage of the Disputed Domain Name by finding a purchaser.”
Complainant contends that Respondent did not register or use the Disputed Domain Name for noncommercial free speech criticism. Complainant acknowledges that the webpage associated with the Disputed Domain Name disclaims any commercial purpose with the statement:
“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… [S]imply take this Authorization Code to your favorite domain name registrar, and they can transfer it right to you.”
Complainant contests this statement as a bait to start negotiations. Indeed, it is unlikely that a registrant will donate a domain name, free of charge, and above all, authorization codes to proceed with the transfer of domain names have a strictly limited lifetime. Therefore, the information contained on this website is false and could be misleading for Internet consumers.
Complainant also contends that a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.6.
Complainant contends that the comments on the website are not genuine because they are anonymous and undated. The comments, therefore, appear to be automatically generated and never generated by Respondent.
With respect to Policy paragraph 4(a)(iii), Complainant contends Respondent registered and uses the Disputed Domain Name in bad faith.
It is implausible that Respondent was unaware of Complainant when it registered the Disputed Domain Name, Complainant is well-known throughout the world and the content of the website under the Disputed Domain Name specifically targets Complainant.
The Disputed Domain Name is also used in bad faith, according to Complainant. The site is not used for genuine criticism, as the comments are automatically generated, anonymous and undated.
Respondent contends 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, according to Respondent, 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 second-level domain (SLD) and the top-level domain (TLD) “.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.
With respect to Policy paragraph 4(a)(i), Respondent argues that the inclusion of “.sucks” makes abundantly clear that the website is not affiliated with, and instead contains criticism of, Complainant.
With respect to Policy paragraph 4(a)(ii), WIPO Overview 3.0 states at section 1.13 that in cases involving a domain name such as <trademark.sucks>, “[t]he merits of such cases, in particular as to any potential fair use, are typically decided under the second and third elements.” WIPO Overview 3.0, section 2.6.3 further explains that “[w]here the domain name is not identical to the complainant’s trademark, but it comprises the mark plus a derogatory term (e.g., <trademarksucks.tld>), panels tend to find that the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is prima facie noncommercial, genuinely fair, and not misleading or false.”
Respondent argues that using a trademark for purposes of criticism and commentary is noncommercial fair use. Respondent contends that the Disputed Domain Name provides an open space to scrape and aggregate feedback and allow users to exercise their free speech rights to post genuine criticism of Complainant’s business.
Respondent denies that the posted criticisms are false. Although Complainant asserts these entries “cannot be identified since they are anonymous, the name of their authors is not available, and they are undated,” Respondent contends that Complainant submits no evidence to establish such falsehood.
Respondent rejects Complainant’s contention that “[t]he invitation to contact Respondent may be seen as a bait to start negotiations. Indeed, it is unlikely that a registrant will donate a domain name, free of charge, and above all, auth-codes to proceed with the transfer of domain names have a strictly limited lifetime.” Respondent contends that this argument is completely without merit or supporting evidence. These statements represent pure speculation by Complainant, which does not satisfy the burden they face in a UDRP proceeding. In contrast, Respondent has replied with sworn evidence. Thus, Complainant has failed to carry the burden of proof on this issue.
Respondent also contends that Complainant failed to present any evidence of bad faith. Complainant has not shown that Respondent registered the Disputed Domain Name primarily for the purpose of selling it to Complainant. See UDRP, paragraph 4(b)(i).
Respondent insists that it registered the Disputed Domain Name to support criticism and commentary. In fact, there is no evidence of an intent to resell this or other domains names, nor even an allegation that Respondent has attempted to sell the domain name to Complainant, no less that Respondent is attempting to sell the domain name for a price “in excess of [its] documented out-of-pocket costs.” See UDRP, paragraph 4(b)(i). This is because Respondent has never attempted to sell the Disputed Domain Name to anyone, including Complainant.
Moreover, Respondent has made its intentions clear by stating it will transfer any domain name free of charge. Complainant may find that hard to believe, but Complainant did not bother to take advantage of the free offer and so has no support for its bald assertions.
C. Complainant’s Supplemental Filing
Complainant submitted a Supplemental Filing with evidence that it contacted a registrar and inquired about acquiring the Disputed Domain Name. The registrar advised that the Disputed Domain Name was a “premium domain” and quoted a fee of USD 2418.79 to add or renew. As this evidence was inconsistent with Respondent’s assertion that it would transfer the Disputed Domain Name at no charge, the Panel issued an Administrative Panel Order requesting that Respondent respond to the Supplemental Filing.
Respondent’s Response argues mainly that Complainant should not have been allowed to submit the supplemental information because all of the evidence submitted was available when the original Complaint was prepared and Complainant has not justified its failure to submit the evidence with its original Complaint.
The Panel rejects Respondent’s objection and will consider both Complainant’s Supplement and Respondent’s response thereto. The Panel has discretion to request or permit additional statements from either party. Rules paragraph 12. The Panel also has the duty to “ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case”. Rules paragraph 10(b). See also WIPO Overview 3.0, sections 4.6 and 4.7. Any prejudice to Respondent (which to be clear the Panel asserts does not exist) was cured by allowing Respondent an opportunity to respond.
In its Response, Respondent did not offer any additional evidence or explanation for why the registrar quoted a fee of USD 2418.79 to transfer the Disputed Domain Name.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant owns at least three national trademark registrations for EUROMASTER, including United Kingdom trademark registration Nos. UK00001455074 (1993) and UK00002313137 (2003) and French trademark registration No. 1624667 (1990). Accordingly, the Panel finds that Complainant has rights in the EUROMASTER trademark. The Panel also finds that the Disputed Domain Name is identical to Complainant’s mark. The TLD “.sucks” is viewed as a standard registration element and thus is disregarded under paragraph 4(a)(i) of the Policy (see WIPO Overview 3.0, section 1.11.1), although it may be relevant under paragraph 4(a)(ii) of the Policy (Id., sections 1.11.2 and 3.2.1).
The practice of disregarding the TLD in determining identity or confusing similarity is applied irrespective of the particular TLD (including with regard to “new gTLDs”); the ordinary meaning ascribed to a particular TLD would not necessarily impact assessment of the first element. See WIPO Overview 3.0, section 1.11.2. Accordingly, even if the “.sucks” TLD used in combination with the EUROMASTER mark signals “potential legitimate co-existence or fair use,” panels nevertheless consider the disputed domain name confusingly similar under the first element and move on to the second and third elements. See also section 1.13 of WIPO Overview 3.0. (“A domain name consisting of a trademark and a negative or pejorative term (such as […] <trademark.sucks>) is considered confusingly similar to the complainant’s trademark for the purposes of satisfying standing under the first element.”).
Accordingly, Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that Respondent has not demonstrated rights or legitimate interests under paragraph 4(c)(ii) of the Policy, which provides that Respondent may establish rights or legitimate interests in a domain name by demonstrating that “Respondent 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.” For two reasons, Respondent has failed to convince the Panel that it has rights or legitimate interests.
First, Respondent is not entitled the rely on the general right to legitimate criticism because the Disputed Domain Name is identical to Complainant’s trademark and Respondent has not convinced the Panel that Internet users would perceive “.sucks” in this context as conveying any meaning other than its function as a gTLD.
Even if for the sake of argument the Panel accepted that the nature of the TLD may send a signal to an Internet user that the site is not affiliated with the brand being criticized, the fact that Respondent would allow Complainant to take over the registration (which it is noted would not, despite Respondent’s claims, be cost-free) undermines this assertion given that one would not normally expect a brand to host a site dedicated to criticism of itself.
The Panel also notes that while Respondent assumes that all Internet users would understand the term “sucks” as being pejorative, this may not always be true, see e.g., Swarovski Aktiengesellschaft v. Zengwei, WIPO Case No. D2014-0243, where the domain name included the term “schmuck” (German for jewelry) appended to the mark at issue which was in the jewelry business.
Second, even if the Panel were to assume that Respondent were entitled to offer legitimate criticism under the Disputed Domain Name, the criticisms here are not legitimate good faith criticisms. On the contrary, he Panel finds, as several other panels have previously found on similar facts, that Respondent does not use the Disputed Domain Name for authentic criticism. Respondent’s arguments here are essentially the same arguments it made unsuccessfully in several prior cases. Respondent simply recycles rejected arguments without distinguishing the prior facts or justifying a different ruling on the law. These arguments have failed before and this Panel finds that they fail again.
The Panel finds, as previous panels have found, that this Respondent is “essentially a third party, and has no direct relationship with any person who might be able to invoke rights of free speech and the fair use defense 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.” Sanofi v. Privacy Hero Inc. / Honey Salt ltd, pat honey salt, WIPO Case No. D2020-2836. See also Compagnie Générale des Établissements Michelin and MC PROJECTS B.V Maastricht v. Pat Honey Salt, Honey Salt Limited, WIPO Case No. D2020-2517.
The Panel also finds, like previous panels, that scraping and republishing anonymous criticisms originally posted on unaffiliated third-party websites is not genuine criticism because Respondent is simply copying and pasting a third party’s words rather than exercising free speech rights. 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. (“Respondent is not genuinely exercising free speech rights, but is instead creating a platform that pretextually facilitates the speech of others.”). The Panel also finds, like a previous panel, that the purported criticisms are stale. M and M Direct Limited v. Pat Honey Salt, Honey Salt Limited, WIPO Case No. D2020-2545 (republication of eight year old anonymous criticisms not genuine); see also Compagnie Générale des Établissements Michelin and MC PROJECTS B.V Maastricht, supra.
Additionally, Respondent includes many links to other <trademark.sucks> websites. The Panel finds, as previous panels have found, that, in the absence of a more plausible explanation, this practice “was intended 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 Sanofi, supra; see also Compagnie Générale des Établissements Michelin and MC PROJECTS B.V Maastricht.
The Panel finds, as previous panels have found, that Respondent’s website is not a genuine gripe site, but rather a pretext and “that the actual intent behind the actions of the Respondent is more likely to have been to increase the price that it may receive from the sale of the disputed domain name.” Sanofi, supra; Compagnie Générale des Établissements Michelin and MC PROJECTS B.V Maastricht, supra.
The Panel also finds that Respondent has failed to show that it has no financial interest in the Disputed Domain Name. Complainant’s Supplemental submissions demonstrate that Complainant’s chosen registrar quoted a fee of USD 2418.79 to transfer the Disputed Domain Name. Complainant’s report is consistent with M and M Direct Limited v. Pat Honey Salt, Honey Salt Limited, WIPO Case No. D2020-2545, where a different panel conducted an independent investigation and reported that the domain name at issue in that case was not offered “free” as promised, but instead that registrars classified the domain names at issue as “premium” and quoted transfer fees of USD 3,198 and USD 4,270 respectively.
This directly contradicts any claim to be offering a free and noncommercial service, and given that any registration would result in a fee being paid to the Registry by a registrar, leads the Panel to infer that the Respondent and Registry are connected.
Given the prior decision in M and M Direct, and the evidence that Complainant’s Supplemental submissions, the Panel afforded Respondent an opportunity to submit additional argument and evidence to explain the inconsistency. Respondent made no effort to do so, but instead only opposed consideration of Complainant’s supplemental evidence and repeated its previous contentions. The Panel rejects the objections to Complainant’s Supplemental submission, and emphasizes that Respondent was given an opportunity fully to respond.
The Panel finds that Complainant’s evidence raises substantial questions about the credibility of Respondent’s assertion that it has no financial interest in the Disputed Domain Name and whether Respondent’s offer to transfer the Disputed Domain might, directly or indirectly, financially benefit Respondent. Accordingly, the Panel finds that Respondent has not carried its burden to show that its use is noncommercial, a condition to invoking the protection of Policy paragraph 4(c)(iii).
For all the reasons stated above, the Panel finds that Respondent is not “making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain.…” It follows that Respondent is not entitled to rely on paragraph 4(c)(iii) of the Policy.
Accordingly, the Panel finds that Complainant has satisfied Policy paragraph 4(a)(ii).
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 Respondent was obviously aware of Complainant’s trademark EUROMASTER when it registered the Disputed Domain Name as it did so, on its own admission, for the purpose of identifying Complainant.
The Panel further finds, as other panels have found on similar facts, that Respondent registered the Disputed Domain Name for the purpose of driving traffic to this and other “.sucks” domain names owned by Respondent or related entities with the object of increasing the commercial value of the Disputed Domain Name and other “.sucks” domain names. The Panel also finds that it constitutes bad faith use to rely on the pretext of criticism to inflate the commercial value of domain names.
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 <euromaster.sucks> be transferred to Complainant.
Lawrence K. Nodine
Douglas M. Isenberg
Stephanie G. Hartung
Date: August 5, 2021
1 It is evident from the case file that Privacy Hero Inc., Turks and Caicos Islands, United Kingdom, is a privacy protection service and that Domain Admin, Honeysalt Ltd, United Kingdom, is the underlying registrant of the disputed domain name. Therefore, the term “Respondent” is used by the Panel in the case at hand to refer to the latter underlying registrant only.