Purge IT registered names including DirectLineSucks.com,
DixonsSucks.com, FreeserveSucks.com and NatwestSucks.com. The
company registered the dot.com names of 18 well-known UK businesses
with the addition of “sucks” in May 1999.
In the cases before WIPO, the major companies asserted that the
name with the “sucks” extension was “identical or confusingly
similar” to their trade marks, that Purge IT had no legitimate
interest in the names, and that the names were registered in bad
faith and for financial gain because Purge IT was trying to sell
them to the trade mark owners – the practice known as
cybersquatting.
Purge IT denied acting in bad faith and said the domain names
had not been used. Although “under construction” sites exist, Purge
IT said it presumed that these were created by the ISP. The company
said that the names were not intended to form web sites and that
they only intended to transfer the names to the trade mark owners,
to “protect” these companies from anyone seeking to host complaints
against them. Purge IT also argued that mere registration cannot
amount to use.
In considering whether the trade marks were infringed, the panel
felt that the addition of “sucks” would be interpreted in different
ways by different people. Some would dissociate it from the proper
company; but others would be confused about the potential
association with the company. Accordingly, the panel felt that the
major companies had rights in the “sucks” names.
The panel also felt that by offering the names for sale at a
premium to the major companies involved, Panel IT’s argument that
it was protecting against the names falling into the wrong hands,
failed. In fact, Purge IT wanted a “five figure sum” transferred to
a charity of Direct Line’s choice. When Direct Line contacted Purge
IT in response to the demand, a person at the company allegedly
suggested that a payment of £5,000 directly to Purge IT would be
adequate alternative compensation. Accordingly, the WIPO Panel
found that Purge IT had registered the names for profit and in bad
faith, and it said that according to the rules, this was sufficient
for a finding of both “registration and use” of the name in bad
faith.
Similarly, Purge IT sought a premium on the transfer of
DixonsSucks.com and others.
