The man had claimed his was a protest site warning of the
dangers of energy drinks but was found to be publishing a site at
the address promoting a rival drink.
Carl Gamel of Kentucky in the US was found to have violated Red
Bull's trade mark rights in registering the domain name
redbullsucks.com and using it for commercial purposes.
The World Intellectual Property Organisation (WIPO)'s
arbitration and mediation centre ruled on the domain under its
uniform domain name dispute resolution policy (UDRP) which protects
trade mark rights holders against bad faith users of domain names
which are identical or confusingly similar to a trade mark.
The administrative panel in the case took Red Bull to task over
its argument that the addition of 'sucks' to its trade mark was
inherently confusing as to the origin of the domain name because
'sucks' was a generic term.
The panel rejected the argument that a user might think the
domain name belonged to Red Bull because the term 'sucks' was so
widely known as an insult, and therefore was a generic term which
added nothing to the domain name, leaving the trade marked 'Red
Bull' phrase as the main part of the name.
"This Panel’s view is that it is not helpful to characterize
'sucks' as a generic term in the same way earlier cases have held
'buy-', 'cheap-', '-online' and numerous similar terms to be
non-distinctive," said the ruling. "The virtually universal finding
of confusing similarity in those cases is based on the primacy
accorded to a complainant’s (usually well known) trademark over
added matter of no source distinguishing value."
Instead of treating the 'sucks' part of the name as generic and
therefore declaring the domain
name 'confusingly similar' to Red Bull's trade mark, the panel
followed the guidance of a
previous case in which that rule was defined more broadly.
"The Panel understands the phrase 'identical or confusingly
similar' to be greater than the sum of its parts," said the
panellist in that previous case, which involved shop chain Wal-Mart
and Richard MacLeod. "The Policy was adopted to prevent the
extortionate behavior commonly known as 'cybersquatting', in which
parties registered domain names in which major trademark owners had
a particular interest in order to extort money from those trademark
owners. This describes Respondent’s behavior," it said.
"Thus, the Panel concludes that a domain name is 'identical or
confusingly similar' to a trademark for purposes of the Policy when
the domain name includes the trademark, or a confusingly similar
approximation, regardless of the other terms in the domain name. In
other words, the issue under the first factor is not whether the
domain name causes confusion as to source (a factor more
appropriately considered in connection with the legitimacy of
interest and bad faith factors), but instead whether the mark and
domain name, when directly compared, have confusing similarity,"
said that ruling.
The panel found that the name was "confusingly similar" under
this definition, though that definition could jeapordise the
existence of legitimate protest sites. The panel addressed this
problem in the ruling.
"The Panel is cognizant of the importance of protecting protest
sites that use a trademark to identify the object of their
criticism," said the ruling. "The 'legitimate interest' and 'bad
faith' factors should adequately insulate true protest sites from
vulnerability under the Policy, especially as [Red Bull] retains
the burden of proof on each factor."
The panel found that Gamel did not have a legitimate interest in
the domain because his site was not a site of legitimate criticism
but one trying to sell a rival product.
"[Gamel's] sole argument is that he is using the disputed domain
name to criticize the Complainant as a manufacturer of energy
drinks which allegedly can have deleterious effects," said the
ruling. "In this case, however, Complainant alleges, the evidence
shows and Respondent does not deny, that the Respondent is using a
website corresponding with the disputed domain name to promote an
energy drink in competition with the Complainant. That is not
noncommercial use and the evidence shows it is for commercial
gain."
The panel also found that the name was registered and used in
bad faith. "Had [Gamel's] use of the domain name related to a
genuine protest site, it might have shown a legitimate interest in
the domain name, whether or not an objective consequence of that
protest site was disruption of [Red Bull's] business. Those
Internet users perhaps disenchanted with the [Red Bull's] products,
or merely curious about [Gamel's] website, were presented … with an
energy drink offered in competition with [Red Bull's] goods."
The panel ordered that the domain name be transferred to Red
Bull.
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