In the recent domain name dispute decision of TRS Quality, Inc. v. Gu Bei (WIPO D2009-1077, September 25, 2009) a single member Panel was faced with a dispute over the domain www.radioshacksucks.com. Complainant is the parent company of the Radio Shack Corporation (now known as “the Shack” if you have seen the new ads). They maintain a web site at www.radioshack.com and own numerous U.S. trademark registrations for the RADIO SHACK mark. The disputed domain was registered on April 27, 2007 and Respondent failed to respond to the Complaint.
Paragraph 4(a) of the UDRP Policy directs that the Complainant must prove each of the following: (i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.
In addressing the first element, the Panel found that the domain contained all of Complainant’s mark with the addition of the generic word sucks. The Panel explained:
Indeed, considering the vulgar and offensive meaning of the term, it is unlikely to believe that companies would publish a website with such a self-denigrating domain name. On these grounds are based some panel decisions which concluded that a domain name containing a well-known trademark and the term “sucks” is not “confusingly similar” to the mark included in the domain name.
But the Panel also noted:
However, as held i.a. in La Quinta Worldwide L.L.C. v. Heartland Times LLC, MD Sullivan, WIPO Case No. D2007-1660, “it is not self-evident that Internet users would always take notice of the slang word following the trademark in the Domain Name and recognize its negative import”, also in light of the fact that many Internet users potentially interested in the Complainant’s services accessing to the web site “www.radioshacksucks.com” may be not fluent English-speakers.
The Panel found that Radio Shack met its first element burden and moved to the second element. The Panel noted that Complainant showed a prima facie case and explained the necessity to review the contents of the disputed domain. The Panel relied on a previous decision for the standard to apply in such a case:
Simply having a domain name with “-sucks” in the name cannot, by itself, establish fair use; one must look to the content of the website to determine if there is an exercise of free speech which allows the Respondent to rely on the fair use exception. To do otherwise would legitimize cybersquatters, who intentionally redirect traffic from a famous mark, simply through the use of a derogatory term.
In light of this the Panel found that Respondent’s domain did not point toward a legitimate gripe web site, and instead contained pay-per-click links at third party commercial web sites. The Panel also found that there is no relationship between the Complainant and Respondent and that no licence or authorization was present.
The Panel found the second element was satisfied and moved onto the last element of bad faith. The Panel found that Respondent must have known about Complainant due to its 85 year existence prior to registration of the domain. The panel further explained that the third party pay per click links on the pages resulted in an attempt to attract users to the web site for commercial gain. Lastly the Panel found that Respondent’s failure to respond was bad faith.
