In a recent domain dispute, Vanguard Trademark Holdings USA, LLC v. European Travel Network (WIPO D2008-1325, October 31, 2008), a Panel was faced with whether or not a “sucks” web site violated the ICANN policies. Critical commentary or “sucks” web sites are many times the subject of domain disputes. Complainant is the owner of the ALAMO and ALAMO RENT A CAR trademarks, which have been in use since at least 1973. Complainant maintains a web site at www.alamo.com. The disputed domain was www.alamo-sucks.com. The disputed domain was registered on April 29, 2008. Complainant sent the Respondent a cease and desist letter regarding the use of the disputed domain, since it was being redirected to www.lowest-car-rental-price.com, which provided links to other providers of car rentals services. Respondent’s web site apparently did not criticize Complainant ALAMO. After receiving the cease and desist letter, Complaint changed the domain to a landing site offering the domain for sale at a price of $7,500.00. As a result the following domain dispute was instituted.
The Panel analyzed the three prong test in the ICANN policy and first addressed whether the disputed domain was identical or confusingly similar. The Panel found that the disputed domain incorporated all of Complainant’s trademark and that inclusion of the additional term “sucks” did not dispel such confusing similarity.
In addressing the second prong, whether or not Respondent had any rights or legitimate interests in the disputed domain, the Panel made some observations regarding the Respondent’s prior use.
The use of a domain name incorporating the Complainant’s well-known ALAMO mark to redirect Internet users to a pay-per-click website containing links to other providers of vehicle rental or leasing services does not constitute a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Nor does the offering of the disputed domain name for sale, under the circumstances of this case, fall within this safe harbor provision. To the contrary, as discussed below, such opportunistic behavior is a strong indication of the Respondent’s bad faith intent to profit from and exploit the Complainant’s mark.
As a result the Panel found that Respondent did not have any rights or legitimate interests. The Panel then reviewed the last prong, whether or not the domain was registered and used in bad faith. The Panel explained:
It is an inescapable inference from the circumstances of this case that the Respondent knew of and had in mind the Complainant and the Complainant’s ALAMO Marks when registering the disputed domain name. The Respondent’s opportunistic use of the disputed domain name to redirect Internet visitors to its “www.lowest-car-rental-prices.com” website underscores this conclusion. Such opportunistic use by the Respondent prior to receiving notice of this dispute, followed by the Respondent’s attempt to sell the disputed domain name for an amount appearing to be in excess of the reasonable out-of-pocket expenses directly related to the domain name without any evidence to the contrary shown by the Respondent, manifests the Respondent’s bad faith intent to profit from and exploit the Complainant’s ALAMO Marks. The pattern of cybersquatting indicated by prior decisions under the Policy involving the Respondent provides an exclamation point to the Respondent’s bad faith in this case.
Ultimately the Panel found that all of the ICANN prongs had been met and agreed to TRANSFER the disputed domain to Complainant.
