WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eutelsat v. Domain Admin, Honey Salt ltd
Case No. D2021-3806
1. The Parties
The Complainant is Eutelsat, France, represented by Bignon Lebray, 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 <eutelsat.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 November 15, 2021. On November 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 18, 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. TheCenter sent an email communication to the Complainant on November 22, 2021, providing the registrantand contact information disclosed by the Registrar, and inviting the Complainant to submit anamendment to the Complaint. The Complainant filed an amendedComplaint on November 24, 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 November 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2021. On December 1, 2021, the Representative of the Respondent requested an automatic extension of the Response due date. The Response due date was extended to December 19, 2021. The Response was filed with the Center on December 17, 2021.
The Center appointed Edoardo Fano as the sole panelist in this matter on January 10, 2022. 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.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules.
4. Factual Background
The Complainant is Eutelsat, a French company operating in the satellite communication field that owns several trademark registrations for EUTELSAT, including the following:
- International Trademark Registration No. 479499 for EUTELSAT, registered on June 20, 1983;
- International Trademark Registration No. 777505 for EUTELSAT, registered on December 31, 2001;
- European Union Trademark Registration No. 017895828 for EUTELSAT, registered on
October 20, 2018.
The Complainant also operates on the Internet, its official website being “www.eutelsat.com”.
The Complainant provided evidence in support of the above.
According to the WhoIs records, the disputed domain name was registered on March 29, 2021, and it resolves to a website showing information, comments, and criticism about the Complainant in Wiki pages, together with links to other webpages with similar content concerning third party brand owners.
5. Parties’ Contentions
The Complainant states that the disputed domain name is confusingly similar to its trademark EUTELSAT, as the disputed domain name wholly incorporates the Complainant’s trademark.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name, it is not commonly known by the disputed domain name, nor it is making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The Respondent’s website at the disputed domain name purports to be a noncommercial genuine criticism website, allegedly allowing Internet users to post customer reviews or feedback on the Complainant. However, the Complainant states that the Respondent is not operating a true and genuine criticism forum on the website at the disputed domain name, but instead that it consists of a pretext for cybersquatting and commercial activity, as already established by numerous prior UDRP Panels in cases involving the same Respondent as in the present case, by copying and pasting anonymous criticisms originally posted on unaffiliated third-parties’ websites.
The Complainant submits that the Respondent has registered the disputed domain name in bad faith, since the Complainant’s trademark EUTELSAT is distinctive and internationally known. Therefore, the Respondent targeted the Complainant’s trademark at the time of registration of the disputed domain name and the Complainant contends that the Respondent’s use of the disputed domain name in connection to a website that appears not to constitute a genuine criticism website, in order to increase traffic on its website, and thus obtain profit through the possible resale or transfer of the disputed domain name, qualifies as bad faith registration and use. The Complainant submits that, even if the Respondent appeared to offer the disputed domain name for transfer free of charge (according to the following statement previously featured on the website at the disputed domain name and subsequently removed: “If you ask us if we would sell the domain, our answer is simple. Absolutely not. We will give it to you… 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.”), when attempting to follow the stated procedure the transfer of the disputed domain name was not free of charge but implied a transfer fee of USD 4,270, as the disputed domain name is a “premium domain name”.
Finally, the Complainant asserts that the Respondent involvement in several prior UDRP cases consisting of “.sucks” similar scenarios is evidencing its engagement in a pattern of abusive registrations.
The Respondent, according to a statement from a “Pat Collins” Domain Name Manager for Honey Salt Ltd.,1 is a company that registers and holds domain names “.sucks”, for the apparent benefit of the non-profit organization Everithing.sucks Inc., to be used in connection to a criticism platform in which users can create so-called Wiki pages devoted to commentary and criticism on a variety of subjects.
The Respondent states that the disputed domain name cannot be considered as confusingly similar to the Complainant’s trademark EUTELSAT, since when a trademark is used in connection with a negative term such as “sucks”, the pejorative nature instantly and obviously prevents confusion.
Moreover, the Respondent asserts to have rights or legitimate interests in respect of the disputed domain name since the latter is used for purposes of criticism and commentary, therefore as noncommercial fair use. The Respondent’s website at the disputed domain name allows users to exercise their free speech rights to post genuine criticism about the Complainant’s business.
The Respondent submits that the disputed domain name was not registered and is not used in bad faith, but instead that the registration as a domain name of a trademark combined with “.sucks” is an obvious legitimate reason to express the nature of a criticism website. The Respondent adds that the fact that the content on the Wiki pages is aggregated from other sources is a nearly universal tool used on news and other information websites and therefore does not establish bad faith. The Respondent states that the disputed domain name has never been offered for sale and, to make it clear, in March 2021 the following statement was added to the relevant website: “We occasionally buy a dot sucks domain and point it at a specific page… If you ask us if we would sell the domain, our answer is simple. Absolutely not. We will give it to you… 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.” This Authorization Code-related statement was then removed in August 2021 in an effort to comply with apparent “guidance” (as the Respondent calls it) from prior UDRP panels who the Respondent claims found the statement “objectionable”.
Finally, the Respondent asserts that finding bad faith based on previous UDRP decisions involving the Respondent with different complainants and facts would be blatantly unfair to Respondent.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant is the owner of the trademark EUTELSAT both by registration and acquired reputation and that the disputed domain name is confusingly similar to the trademark EUTELSAT, as the disputed domain name incorporated the entirety of the Complainant’s trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPOOverview 3.0”), section 1.7.
It is well accepted that a generic Top-Level Domain (“gTLD”), in this case “.sucks”, is ignored when assessing the similarity between a trademark and a domain name. See WIPOOverview 3.0, section 1.11.
Moreover, according to WIPO Overview 3.0, section 1.13:
“A domain name consisting of a trademark and a negative or pejorative term (such as <[trademark]sucks.com, […] or even <trademark.sucks>) is considered confusingly similar to the complainant’s trademark for the purpose of satisfying standing under the first element. […] Panels have thereby observed that permitting such standing avoids gaming scenarios whereby appending a ‘sucks variation’ would potentially see such cases fall outside the reach of the UDRP.” The Panel notes that the Respondent has in its Response (intentionally or not) misunderstood that this test under the first UDRP element requires actual confusion – it is beyond well established that it does not; the Respondent’s arguments about the meaning of the term “identical” similarly (again, intentionally or not) entirely miss the point of the first element test.
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following circumstances, in particular but without limitation:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with abona fideoffering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
According to paragraph 4(a) of the Policy, the Complainant has the burden of proving the three elements of the Policy. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially difficult, since proving a negative circumstance is more complicated than establishing a positive one.
As such, it is well accepted that it is sufficient for the Complainant to make aprima faciecase that the Respondent has no rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPOOverview 3.0, section2.1.
TheComplainantin its Complaint, and as set out above, has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that the Respondent is not currently associated with the Complainant in any way, is not commonly known by the disputed domain name and is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name: according to the Complainant, the Respondent is not operating a true and genuine criticism forum in the website at the disputed domain name, but instead is using it as a pretext for cybersquatting and commercial activity, by copying and pasting anonymous criticisms originally posted on unaffiliated third-parties’ websites.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.
The Respondent in its Response, and as set out above, asserts to have rights or legitimate interests in respect of the disputed domain name since the latter is used for purposes of criticism and commentary, therefore as noncommercial fair use.
Even if the comments and criticism on the website at the disputed domain name are genuine and made by real users on specific dates they are acknowledged to be aggregated from external third party sources, and moreover are accompanied by links to a broad range (no less than 20 on the Panel’s count) of unrelated third parties including (famous) individuals, television shows, and known brands – the Respondent somewhat disingenuously refers to these as mere “navigation aids” and boldly claims that “[w]hether such links may drive traffic to other [ ] pages is irrelevant”. Even if one accepts that aggregating third party criticism is itself a bona fide activity – which may be open to some debate given that most criticism sites (whether operated by an individual or otherwise) seem to focus their attention on airing a specific grievance with a specific brand owner – the Panel reckons that the use of the disputed domain name cannot be considered mere (or traditional) noncommercial fair use (i.e., done for its own critical purpose, which may even according to prior UDRP cases include incidental advertising), but rather agrees with prior panels that the content is a pretext for cybersquatting and commercial activity. See WIPOOverview 3.0, sections 2.5.3 and 2.6.1.
The Panel moreover notes that the Response states that “[n]o reasonable user would think that [the disputed domain name] is owned by or affiliated with Complainant” and even goes so far as to suggest that brand owners filing claims against dotSucks domain names are engaged in sophistry. The Panel has come across an article on CircleID discussing the dotSucks registry (by what appears to be its founder) stating that there are “companies hip to use of colloquial [sucks-related] language to make their marketing points [such as] Jolly Rancher, which ran a national ad campaign during the NFL season under the cover of ‘Being a Rookie Sucks’ and [a] Brewing Company who set their consumer complaint email address at dowesuck@[brand].com.” It is not clear if there is an ongoing relationship between the article’s author and the Respondent – but it matters not – the point is that despite the Respondent’s assertion that no one would think a brand would be associated with a “sucks” concept (in a marketing campaign, domain name, email address, or otherwise), this seems not to be a universally shared view, and therefore of little weight in assisting the Respondent’s case.
The Panel also notes that the single case cited in the Respondent’s favor was decided on the basis of the complainant in that case having failed to meets its burden, and not based on a finding in favor of, or endorsing the business model of, the Respondent.
Finally, the Panel notes that the Respondent overemphasizes the impact of appending “sucks” to a domain name; this does not give such registrant a free pass, and indeed, since the very early days of the Policy it has been clear that the broader case circumstances need to be assessed. See e.g., Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477, and Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.
The Panel therefore finds that paragraph4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph4(b) of the Policy provides that “for the purposes of paragraph4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”
Regarding the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark EUTELSAT in the field of satellite communication is clearly established and the Panel finds that the Respondent likely knew of the Complainant and deliberately registered the disputed domain name because it is confusingly similar to the Complainant’s trademark, especially because on the website at the disputed domain name there is a description of the Complainant and its activities.
As set out under the section of rights and legitimate interests, the Panel further notes that the disputed domain name is also used in bad faith since it consists of a pretext for cybersquatting, with the aim to create traffic and by doing so increase the value of the disputed domain name in order to sell it, as proved by the Complainant when trying to obtain the disputed domain name for free, as it was supposedly offered, and being asked the amount of USD 4,270, which exceeds out-of-pocket costs. Notably here the Panel observes that while the Response and “Pat Collins” declaration go to some length to point out their belief that removing the free transfer/AuthCode statement was misunderstood by prior panels, and that it has been removed in good faith to adapt to “guidance” from such prior panels, neither the Response nor the declaration answer the glaringly obvious question as to the charges laid out by complainants that this “free” registration scheme is little more than a ruse to generate registration fees in the thousands of dollars range except to suggest that such fees are either “ICANN-mandated” or “imposed by the registrars” (in some cases apparently owing to such domain names being designated as premium – a questionable assertion given that many domain names in prior cases involving this same “.sucks” business model correspond exactly to unique marks of well-known brands and registrars are known to competitively set their pricing based on registry wholesale costs).
Finally, despite the Respondent opining that “prior UDRP decisions involving Respondent are not evidence of bad faith” the Panel considers that the fact that the Respondent has been involved in a pattern of abusive domain name “.sucks” registrations further supports a finding of bad faith pursuant to the plain language of paragraph 4(b)(ii) of the Policy; indeed, it is difficult to understand how the Respondent or its counsel could have overlooked this clear Policy criteria. See also WIPO Overview 3.0, section 3.1.2.
The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith.
The Panel therefore finds that paragraph4(a)(iii) of the Policy has been satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and15of the Rules, the Panel orders that the disputed domain name <eutelsat.sucks> be transferred to the Complainant.
Date: January 24, 2022
1 The Panel notes that a search of prior UDRP cases shows a “Pat Honeysalt” as the Respondent and as no identifying information is provided for “Pat Collins” this may be a pseudonym of an unidentified real or corporate person.