WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie française d’assurance pour le commerce extérieur (Coface) v. Domain Admin, Honey Salt ltd
Case No. D2021-2300
1. The Parties
The Complainant is Compagnie française d’assurance pour le commerce extérieur (Coface), France, represented by Novagraaf France, France.
The Respondent is Domain Admin, Honey Salt ltd, United Kingdom, represented by Orrick, Herrington & Sutcliffe, LLP, United States of America.
2. The Domain Name and Registrar
The disputed domain name <coface.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 July 15, 2021. On July 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 15, 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 July 19, 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 July 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 July 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 16, 2021. Further to an extension request submitted by the Respondent on July 31, 2021, the due date for Response was extended until August 20, 2021. The Response was filed with the Center on August 20, 2021.
The Center appointed Taras Kyslyy as the sole panelist in this matter on August 31, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant was established in France over 75 years ago and is specialized in credit insurance protection and credit management services. The Complainant has 4,300 collaborators in 100 countries.
The Complainant is the owner, among others, of the following COFACE trademark registrations:
- French trademark No. 96656978, registered on December 24, 1996;
- European Union trademark No. 000500793, registered on January 25, 1999;
- International trademark No. 678577, registered on June 10, 1997.
The Complainant owns the domain name <coface.com>, registered on December 16, 1996, reflecting its trademark.
The disputed domain name was registered on January 3, 2021, and resolves to a webpage on the “Everything.Sucks” platform. The webpage displays a yellow speech bubble stating “Coface Sucks” above the tagline “Tell the World!” alongside a search engine with the words “Search Everything.Sucks”. There is a sidebar at the webpage displaying links to “Popular Pages” and “Recent Updates” on the platform regarding other companies and trademarks. The webpage contains basic information about the Complainant and invites Internet users to post customer reviews and feedback about the Complainant.
On June 8, 2021, the Complainant sent a cease and desist letter which was ignored by the Respondent.
5. Parties’ Contentions
The disputed domain name is identical or confusingly similar to the Complainant’s trademark. The disputed domain name reproduces the Complainant’s trademark, thus Internet users will think it belongs to the Complainant or has been registered in its name or for its account.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent does not have rights in any registered COFACE trademark. The Complainant has never licensed or otherwise authorized registration of the disputed domain name nor use of its intellectual property rights by the Respondent.
The disputed domain name was registered and is being used in bad faith. The Respondent failed to react to the Complainant's cease and desist letter. The Respondent has used its website at the disputed domain name as a pretext to take unfair advantage of the Complainant’s trademark rights for financial gain. There is no need to register a domain containing other parties trademark rights to operate a forum for social activism. It would be sufficient to register the domain name “everything.sucks” and to have a forum opened for everybody. A basic Google search reveals that the content of the reviews on the website at the disputed domain name seems to have been extracted from reviews on the employment site “INDEED”. No independent user appears to have posted any of the reviews on the website at the disputed domain name and the content appears to have been extracted selectively and out of context. There is no indication of date of the reviews. This confirms the website at the disputed domain name is misleading, the reviews are fake and automatically generated. It is likely that the Respondent included links to its other “.sucks” websites on the website, which the disputed domain name resolves to, in order to increase their traffic, and therefore their potential sale price. The associated website prominently displays the platform’s search engine and invites Internet users to search for other pages on that platform, each of which is associated with a different domain name in the “.sucks” generic Top-Level Domain (“gTLD”). The sidebars also display dozens of direct links to other such webpages on the platform. This all shows that the website at the disputed domain name is designed to generate traffic for the rest of the platform. Further, in previous cases concerning a “.sucks” domain name, proofs have shown that the Respondent has placed offers for sale of domain names in the “.sucks” gTLD on a domain name broker’s website. Considering the foregoing, the disputed domain name was not registered for genuine and noncommercial criticism of the Complainant, but constitutes an infringement of the Complainant’s rights and the high risk of other phishing attacks.
The Respondent 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. Its users may create Wiki-style pages at “Everything.sucks”, each devoted to commentary and criticism. 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 gTLD “.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 from well-known sources and allows users to post additional commentary and criticism.
The disputed domain name is not identical or confusingly similar to the Complainant’s trademark, since the trademark is used in connection with a negative gTLD such as “.sucks”, and its pejorative nature instantly and obviously renders the disputed domain name as a whole non-identical and prevents confusion.
The Respondent has a legitimate interest in the disputed domain name, since using a trademark for purposes of criticism and commentary is noncommercial fair use. The disputed domain name provides an open space (on a site operated by a non-profit entity) to aggregate feedback and allow users to exercise their free speech rights to post genuine criticism of the Complainant’s business. The Respondent makes fair use of the Complainant’s trademark, combining it with the unambiguously critical term “sucks” as part of a communicative message about the nature and purpose of the website: to allow others to view and engage in criticism of the Complainant. The Respondent has a free speech right to operate its business, even though the reviews are posted by third parties.
The Respondent has a legitimate interest in the disputed domain name, since the disputed domain name and the website are not misleading and there is no tarnishment of the Complainant’s trademark. No reasonable Internet user is going to believe that the disputed domain name clearly stating “coface sucks” is associated with the Complainant. Even an unreasonable user would realize that the website is not affiliated with the Complainant the second he saw it due to the prominent yellow speech bubble stating “coface sucks” and the critical content from employees and customers. Tarnishment cannot be inferred from mere criticism.
The Respondent neither registered nor is using the disputed domain name in bad faith. "Everything.sucks" modified their pages on March 12, 2021, to provide an easier method for anyone who wanted one of “Everything.sucks” domains to get them for free: providing an authorization code that anyone could take to any registrar to transfer the domain, which also applied to the disputed domain name. The Complainant’s gripe is not that it was unable to secure a transfer of the disputed domain name (which it could have done by using the authorization code), but instead that it wanted it “remove[d] and delete[d].” which is an attempt to use trademark law and abuse the UDRP process to stifle any potential criticism.
There is a legitimate reason to register a domain incorporating a brand and combining it with gTLD “.sucks”: to express the nature of the criticism website. “Everything.sucks” purpose is to provide a centralized repository of reviews, opinions, and complaints on a wide variety of topics and companies. There is no bad faith intent to confuse or mislead anyone. The Complainant does not like the fact that there are opinions and complaints about its services that are aggregated. Allowing brand owners to claim bad faith merely because the registrant of a domain name containing the brand with the gTLD “.sucks”, should be seen as associated with that that brand and would therefore undermine the primary purpose of the gTLD “.sucks”.
Aggregating content as used by the Respondent is a nearly universal tool applied on news and other informational websites. It is also common to provide third party commentary, such as by embedded Twitter or Instagram feeds. Doing so provides the reader with the convenience of having a broader array of content about a subject available in one place.
Previous UDRP decisions involving the Respondent shall be ignored, since they did not take into account the Respondent’s evidence and the Respondent’s cited authorities.
The disputed domain name has not been set up as a pretext to take unfair advantage of the Complainant’s trademark rights for financial gain, which is confirmed by the website’s legitimate noncommercial purpose: providing an open forum for the free exchange of commentary. The Respondent does not get any type of financial gain from using the disputed domain name. The combination of COFACE with the gTLD “.sucks” immediately communicates that the site is directed to criticism of the Complainant, so there is no mistaking the disputed domain name’s message and there is no bait-and-switch. Use of the Complainant’s trademark for the purpose of directing visitors to a website that provides commentary, criticism and review of the Complainant’s products is a legitimate, fair use.
The disputed domain name is not available for sale, so the Respondent’s actions are not aimed to increase its “potential sale price” and other “.sucks” websites. The Respondent does not include links to its other “.sucks” websites in order to increase their traffic, and therefore their potential sale price. It is a common practice for a website to list its other pages along the top or side of the website.
6. Discussion and Findings
A. Identical or Confusingly Similar
According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) in cases where a domain name incorporates the entirety of a trademark the domain name, will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Panel finds that the disputed domain name incorporates the entirety of the Complainant’s trademark.
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. The Panel finds that addition of the negative term and gTLD “sucks” to the disputed domain name does not preclude finding confusing similarity with the Complainant’s trademark.
Considering the above the Panel finds the disputed domain name is confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPOCase No. D2014-1875).
The Respondent is not commonly known by the disputed domain name, which could demonstrate its rights or legitimate interests (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642).
There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services as provided by the paragraph 4(c)(i) of the Policy.
Under the paragraph 4(c)(iii) of the Policy there could be rights or legitimate interests in the disputed domain name if 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.
According to section 2.6.1 of the WIPO Overview 3.0 the respondent’s criticism must be genuine and noncommercial to support fair use under the paragraph 4(c)(iii) of the Policy.
In the present case, the website at the disputed domain name mainly contains what purport to be comments of former employees of the Complainant drawn from other websites. These are undated and identified only by job titles so it is not clear that these comments are genuine organic reviews left by users of the original websites; even if they are -- and without declaring that aggregation (or embedding in the Respondent’s terms) itself would be impermissible -- it is difficult to see why that activity would vest the Respondent with a right in a domain name which trades on a third party mark (which is the case here).
Moreover, the Respondent’s website contains links to other webpages on the “Everything.Sucks” platform about third parties, i.e., other brands, with similar content. The Panel considers that the most likely explanation is that the inclusion of these links was intended to increase the Internet 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.
Previous UDRP panels confirmed that the Respondent had initially offered the domain names at “Everything.Sucks” platform for sale (see, 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). According to the Respondent on March 12, 2021, it started offering to transfer at no cost the disputed domain name to anyone interested. However, the offer is not available at the time of the Complaint review and 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, e.g., M and M Direct Limited v. Pat Honey Salt, Honey Salt Limited, WIPO Case No. D2020-2545).
The Panel finds that in the present case the Respondent has engaged in a practice of cross-reference linking between the website at the disputed domain name at the “Everything.Sucks” platform, and external linking to third parties’ news websites or social media accounts, that may serve to increase the Internet 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, confirming the commercial gain (see, e.g., Alstom v. Privacy Hero Inc. / Honey Salt ltd, Pat Honeysalt, WIPO Case No. D2021-1148)
The Panel also finds that the UDRP decisions referred to above indicate a pattern of trademark-abusive domain name registrations by the Respondent (section 2.5.3 of the WIPO Overview 3.0).
Taking into account the above, 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.
Considering the above the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four non-exhaustive circumstances in which bad faith registration and use may be found. Those circumstances include:
“(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting th e mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Although the four circumstances listed in the Policy serve as a guide to the Panel’s analysis, they are not exclusive.
It is not disputed in the present case that when registering the disputed domain name as claimed by the Respondent to host the criticism website aimed at the Complainant, the Respondent was aware of the Complainant’s trademark. The Panel also finds that the Respondent registered and used the disputed domain name for what purported to be legitimate criticism website but that, on the balance of probabilities, is more likely to have been designed to profit by taking unfair advantage of the Complainant’s trademark by increasing traffic to the Respondent’s other websites and to obtain profit through resale of the disputed domain name. This confirms the disputed domain name was registered and is being used in bad faith (see, e.g., Alstom v. Privacy Hero Inc. / Honey Salt ltd, Pat Honeysalt, supra).
Therefore, the Complainant has established its case under paragraph 4(a)(iii) 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 name, <coface.sucks> be cancelled.
Date: September 14, 2021