WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vivendi Universal v. Mr. Jay David Sallen and GO247.COM,INC.
Case No. D2001-1121
1. The Parties
The Complainant is Vivendi Universal, a French corporation headquartered in Paris, France, represented by Jeffrey D. Neuberger, Esq. and Nancy J. Mertzel, Esq. of Brown Raysman Millstein Felder & Steiner LLP of New York, U.S.A.
The Respondents are Mr. Jay David Sallen and GO247.COM, INC., both of 7 Fiske Terrace, Brookline, Massachusetts, U.S.A. and both represented by Mr. Sallen.
2. The Domain Name and Registrar
The disputed domain name is .
The Registrar is Tucows, Inc., of Toronto, Ontario, Canada.
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The Complaint was received by the Center by email on September 13, 2001, and in hardcopy on September 19, 2001. The Complaint was acknowledged on September 17, 2001. That day registration details were sought from the Registrar. On September 20, 2001, the Registrar confirmed that the disputed domain name is registered in the name of GO247.COM,INC. at the address mentioned above and that the Policy applies to the disputed domain name by operation of section 7 of the Registration Agreement.
On September 21, 2001, the Center satisfied itself that the Complaint complied with all formal requirements (including payment of the prescribed fee) and that day formally dispatched copies of the Complaint by post/courier (with enclosures) to the Respondents at the address as recorded with the Registrar and by email (without attachments). The Center also sent copies of the material by the same methods to alternative mail and e-mail addresses for the Respondents provided by the Complainant and to the Respondents� Administrative, Billing and Technical Contacts at the addresses recorded by the Registrar. The Center included with the material dispatched to the Respondents and to those contacts a letter dated September 21, 2001, containing notification of the commencement of this administrative proceeding, with copies (of the Complaint without attachments) to the Complainant, the Registrar and ICANN.
The last day specified by the Center for a Response was October 11, 2001. A Response was filed on October 8, 2001, by email and on October 16, 2001, in hard copy.
The Complainant elected to have the case decided by a three-member Administrative Panel ("the Panel") and on October 30, 2001, the Center notified the parties of the appointment of the undersigned as panelists, each panelist having submitted a Statement of Acceptance and Declaration of Impartiality and Independence. On October 30, 2001, the Center transmitted the case file to the Panel and notified the parties of the projected decision date of November 13, 2001.
The Panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the Panel agrees with the Center�s assessment concerning the Complaint�s compliance with the formal requirements; the Center discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondents of the Complaint; the Response was filed within the time specified in the Rules and the Panel was properly constituted.
The language of the proceedings was English, being the language of the Registration Agreement.
4. Factual Background
The Complainant is a global communications company with businesses in music, the Internet, pay TV, telecommunications, multimedia, publishing and film. It was formed amid much publicity by the US$100 billion three-way merger in December 2000, of Vivendi SA (formerly Compagnie Générale des Eaux), the Seagram Company Ltd. (owner of the Universal Music Group and Universal Studios) and Canal + (the European pay television group). (Complaint, Ex. 5).
The Complainant (by itself or through a subsidiary) owns the registered trademarks VIVENDI, UNIVERSAL and VIVENDI UNIVERSAL (Complaint, Ex. 6, Ex. 7 and Ex. 8). The mark VIVENDI has been used by the Complainant since at least 1998. The mark UNIVERSAL has been used by the Complainant's entertainment company subsidiary, Universal City Studios, Inc., for the greater part of the 20th century. The mark VIVENDI UNIVERSAL has been used since at least June 2000, and was registered in France on December 22, 2000. (Complaint, Ex. 7).
The disputed domain name was registered by the Respondent GO247.COM, INC. on February 27, 2001. The Respondent Mr. Sallen is the chief executive officer, secretary and managing director of that company and the administrative contact for the disputed domain name. On July 26, 2001, the Complainant sent to the Respondents a cease and desist letter and on August 6, 2001, a follow-up letter. The only response was:
"in due time. please remember that -- one of us is not making any money off of this process and therefore must attend to the business of making a living".
As at the date of the cease and desist letter, the Respondents had made no use of the disputed domain name, which led to a page stating that the site was unavailable.
Following receipt by the Respondents of the cease and desist letter, Mr. Sallen tried without success on August 12, 2001, to change the servers on the disputed domain name (Response, Ex. 6) and again on August 16, 2001, stating "time is of the essence" (ibid). Eventually, the disputed domain name was directed to the page on the website owned by a Mr. Miguel C. Danielson of Cambridge, Massachusetts, U.S.A., who declared (Response, Ex.7) that the page is a legitimate portion of his site, directed at criticizing the practices of the Complainant; that Mr. Danielson had allowed Mr. Sallen to direct the disputed domain name to that page and that "no commercial purpose is allowed or intended for such use" The page includes remarks concerning the current dispute.
5. Parties� Contentions
A. Complainant
The Complainant requests the Panel to direct that be transferred to the Complainant and it invokes the following legal grounds as a basis for the relief sought:
Identity or confusing similarity
The disputed domain name is identical or confusingly similar to the Complainant�s trademarks VIVENDI, UNIVERSAL and VIVENDI UNIVERSAL. The mere addition of the common/generic terms "sucks" and ".com" to the VIVENDI UNIVERSAL Mark does not have the effect of creating a new or different mark in which the Respondents have rights. See Bloomberg L.P. v. Secaucus Group, Case No. FA0104000097077 (National Arbitration Forum June 7, 2001) (stating that the addition of the terms "sucks" and ".com" to the Bloomberg mark does not have the effect of escaping confusing similarity).
Legitimacy
The Respondents have no legitimate interests in the disputed domain name.
Bad faith
The disputed domain name was registered and is being used in bad faith.
B. The Respondents
Identity or confusing similarity
The overwhelming majority of the "sucks" cases support the contention that the disputed domain name is not confusingly similar to the Complainant's trademark.
Legitimacy
The disputed domain name was registered for the legitimate and good faith purpose of creating a site critical of the Complainant's business practices, since shareholders and others have criticized the merger by which the Complainant was created (Response Ex. 1,2 and 3).
The Respondents made a significant good faith effort to use the domain name as quickly as possible but were unable to do so for a significant period due to the registrar's failure to acknowledge the Respondent's registration in its database (Response Ex. 6).
Good Faith
The purpose of the Respondent's registration of the disputed domain name was to create a site for the free expression of criticism of Complainant's business practices.
6. Discussion and Findings
Under paragraph 15(a) of the Rules, the Panel must decide this Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:
(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 domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Identity or confusing similarity
Essential or virtual identity is sufficient for the purposes of the Policy: see The Stanley Works and Stanley Logistics, Inc v. Camp Creek. Co., Inc. (WIPO Case No. D2000-0113), Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd. (WIPO Case No. D2000-0802) and Nokia Corporation v. N a.k.a IBCC (WIPO Case No. D2000-0102).
The Panel finds the disputed domain name is not identical to any of the Complainant�s trademarks.
To ascertain the presence of confusing similarity, several ICANN panels have adopted principles of United States trademark law and weighed a number of factors. See Diageo v. Zuccarini (WIPO Case No. D2000-0996) (holding that "sucks" domain names are not immune from scrutiny as being confusingly similar and that each case must be considered in light of the facts presented). The panels in Diageo and Wal-Mart Stores, Inc. v. Walsucks (WIPO Case No. D2000-0477) both considered the likelihood of confusion factors set forth by the United States Court of Appeals for the Ninth Circuit in AMF v Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) [1].
The learned panelist in Diageo applied the Sleekcraft factors with manifest hesitation as to whether this approach is appropriate under the Policy. In the course of his analysis, he exposed several instances in which the Sleekcraft factors for determining confusing similarity between a trademark and another trademark are inappropriate for determining confusing similarity between a trademark and a domain name.
This Panel prefers the view that the test of confusing similarity under the Policy, unlike trademark infringement or unfair competition cases, is usually confined to a consideration of the disputed domain name and the trademark: Wal-Mart Stores, Inc. v. Richard MacLeod (WIPO Case No. D2000-0662); Cimcities, LLC v. John Zuccarini d/b/a Cupcake Patrol (WIPO Case No. D2001-0491); AltaVista Company v. S.M.A., Inc. (WIPO Case No. D2000-0927); Gateway, Inc. v. P, Inc (formerly Gateway Media Productions, Inc.) (WIPO Case No. D2000-0109); America Online Inc. v. Anson Chan (WIPO Case No. D2001-0004) and Playboy Enterprises International, Inc. v. Federico Concas, a.k.a John Smith, a.k.a. Orf3vsa (WIPO Case No. D2001-0745).
Here, the disputed domain name incorporates, as its most prominent feature, the whole of each of the Complainant�s trademarks VIVENDI, UNIVERSAL and VIVENDI UNIVERSAL together with the historically descriptive and, more recently, sometimes pejorative word SUCKS. What is the effect of that word on the otherwise immediate association with the Complainant likely to be aroused in the public mind by the words VIVENDI UNIVERSAL?
There is an unresolved disagreement between panels and, as here, amongst panelists, as to whether a domain name can ever be confusingly similar to the trademark to which the word sucks is appended. Panels which have found confusing similarity include Wal-Mart Stores, Inc. v. Walsucks (WIPO Case No. D2000-0477); Direct Line Group Ltd. v. Purge I.T. (WIPO Case No. D2000-0583); Dixons Group PLC v. Purge I.T. (WIPO Case No. D2000-0584); Freeserve PLC v. Purge I.T. (WIPO Case No. D2000-0585); National Westminster Bank PLC v. Purge I.T. (WIPO Case No. D2000-0636); Standard Chartered PLC v. Purge I.T.,(WIPO Case No. D2000-0681); Cabela v. Cupcake Patrol, NAF Case No. FA95080 (August 29, 2001); Wal-Mart Stores, Inc. v. MacLeod (WIPO Case No. D2000-0662); Diageo v. Zuccarini (WIPO Case No. D2000-0996); Société Accor v. M. Philippe Hartmann (WIPO Case No. D2001-0007); ADT Services AG v. ADT S (WIPO Case No. D2001-0213); and Bloomberg L.P. v. Secaucus Group, Case No. FA0104000097077 (National Arbitration Forum June 7, 2001).
The opposite view has essentially espoused a per se rule that a domain name created by the mere addition of "sucks" and the generic top level domain can never be confusingly similar to the complainant�s trademark. In Wal-Mart v. wallmartcanada (WIPO Case No. D2000-1104), the panelist concluded:
"I do not see how a domain name including "sucks" ever can be confusingly similar to a trademark to which "sucks" is appended." (p. 10).
Similarly, the panel in Lockheed Martin v. Dan Parisi (WIPO Case No. D2000-1015) stated:
"Both common sense and a reading of the plain language of the Policy support the view that a domain name combining a trademark with the word "sucks" or other language clearly indicating that the domain name is not affiliated with the trademark owner cannot be considered confusingly similar to the trademark." (p. 4).
A similar approach was taken in the recent case of America Online v. Johnathan Investments, Inc., and AOLLNEWS.COM (WIPO Case No. D2001-0918) in finding the domain name is not identical or confusingly similar to the trademark NETSCAPE.
This Panel, by a majority, is of the view that the addition of the word "sucks" to a well-known trademark is not always likely to be taken as "language clearly indicating that the domain name is not affiliated with the trademark owner". Two examples of the use of the word "sucks" which do not so indicate, even to English speakers, are:
(1) the use of the words "sucks" purely descriptively, as in the advertising slogan "Nothing sucks like Electrolux" (If there were a website at , it would be unlikely to be taken as unaffiliated with the company Electrolux); and
(2) the website of the band Primus, , so named after the album Suck on This (1990). (The website of the band's lead singer, Les Claypool, at , has a link to the website).
More importantly, it must be borne in mind that not all Internet users speak English as their mother tongue. In Société Accor v. M. Philippe Hartmann (WIPO Case No. D2001-0007) the panel said:
��la Commission estime que dans le cas d�un public non anglophone, voire anglophone, mais peu habitué aux expressions familières ou argotiques, bref, d�un public ignorant la signification du mot "sucks" en soi ou pour désigner des sites de "cyberprotestation", la formule "accorsucks" ne signifie rien de plus que l�adjonction à la marque connue "accor" d�un suffixe dénué de sens particulier et, donc est inapte à constituer un "tout indivisible" modifiant globalement la perception de la marque "accor" constituant les deux premières syllabes de la séquence "accorsucks".
Cette situation a déjà été envisagée dans de précédentes Décisions. Par exemple, la Décision OMPI D2000-0636, National Westminster Bank, a indiqué :
"Given the apparent mushrooming of complaints sites identified by reference to the target�s name, can it be said that the registration would be recognised as an address plainly dissociated from the Complainant? In the Panel�s opinion, this is by no means necessarily so. The first and immediately striking element in the Domain Name is the Complainant�s name. Adoption of it in the Domain Name is inherently likely to lead some people to believe that the Complainant is connected with it. Some will treat the additional "sucks" as a pejorative exclamation and therefore dissociate it after all from the Complainant; but equally others may be unable to give it any definite meaning and will be confused about the potential association with the Complainant".
De même, la Décision OMPI D2000-0996, Diageo plc, a relevé :
"As the Internet extends far beyond the Anglophone world, a more difficult question arises as to whether non-English speaking users of the Internet would be confused into believing that such a site is owned and / or controlled by the Complainant. Because the word �sucks� is a slang word with which all English speakers may not be familiar, this Administrative Panel concludes that there may well be circumstances where Internet users are not aware of the abusive connotations of the word and consequently associate the domain name with the owner of the trademark".
Dans ces conditions, la Commission estime que le public pourra penser que le nom de domaine en litige réfère à un service en relation avec le Requérant et, dès lors, le nom de domaine en cause sera semblable au point de prêter à confusion, à une marque sur laquelle le Requérant a des droits.
Ayant la conviction que le public en général et les internautes en particulier, n�étant pas tous anglophones et/ou avertis du sens du terme "sucks" dans le monde d�Internet, auront, pour certains, plutôt le sentiment que "sucks" est un ajout banal et obscur à la marque "accor" passablement connue et que, dès lors, réfère à un service du Groupe Accor, la commission constate que l�exigence du paragraphe 4 (a), (i) des Principes directeurs est satisfaite. �
By the same reasoning, being satisfied that certain members of the public in general and "Internauts" in particular, not being English speakers and/or aware of the meaning of the word "sucks" in the Internet world, would be likely to understand "sucks" as a banal and obscure addition to the reasonably well-known mark VIVENDI UNIVERSAL and that, accordingly, refers to goods or services provided by the Complainant, this Panel, by majority, finds the requirements of paragraph 4(a)(i) of the Policy to have been met.
The Complainant has established this element.
Illegitimacy
The Complainant has not authorized the Respondents to use any of its trademarks nor to register the disputed domain name. The Respondents are not known by the disputed domain name. They must have been aware of the Complainant�s trademarks before registering the disputed domain name because their stated purpose was to criticize the Complainant.
It is common ground that no use was made of the disputed domain name between the date of registration, February 27, 2001, and the date when notice of the dispute was given to the Respondents by way of "cease and desist" letter on July 26, 2001. Nor have the Respondents demonstrated any preparations to use the disputed domain name during this period. Following receipt of that letter, the Respondents attempted with some urgency ("time is of the essence") to make changes to the servers and directed the disputed domain name to the website, where the relevant page, , is devoted to criticism of the Complainant.
In Corinthians Licenciamentos Ltda. v. David Sallen, Sallen Enterprises and J.D.Sallen Enterprises (WIPO Case No. D2000-0461), the posting of scripture on a website after notice of dispute by way of a "cease and desist" letter was found not to demonstrate a legitimate interest under either paragraphs 4(c)(i) or 4(c)(iii) of the Policy.
Here the Panel is mindful that the Respondents have had some experience in defending administrative proceedings under the Policy and are very familiar with it. The Panel infers from the urgency with which the Respondents sought to create a website on which to post criticism of the Complainants, following receipt of the "cease and desist" letter, that their current, supposedly "free speech" use of the disputed domain name is contrived to prevent the Complainant from succeeding in these proceedings (which were foreshadowed in the "cease and desist" letter) and is therefore neither legitimate nor fair. Thus they cannot rely upon paragraph 4 (c)(iii) of the Policy. (See Wal-Mart Stores, Inc. v. Walsucks & Walmarket Puerto Rico (WIPO Case No. D2000-0477), holding the decision was not an anti-free speech precedent because the site was not a legitimate free speech site).
Bearing in mind that the Panel has found that non-English speaking Internet users would be likely to attach no significance to the appended word "sucks" and would therefore regard the disputed domain name as conveying an association with the Complainant, the "free speech" argument of the Respondent is answered by the same reasoning as was adopted in Monty & Pat Roberts, Inc., v. J. Bartell (WIPO Case No. D2000-0300) concerning the domain name :
"[T]he right to express one�s views is not the same as the right to use another�s name to identify one�s self as the source of those views. One may be perfectly free to express his or her views about the quality or characteristics of the reporting of the New York Times or Time Magazine. That does not, however, translate into a right to identify one�s self as the New York Times or Time Magazine".
The Panel finds the Complainant has established this element. The Respondents have no rights or legitimate interest in the disputed domain name.
Bad faith registration and use
The circumstances of this case do not fit easily into any of the sub-paragraphs of paragraph 4 (b) of the Policy. That paragraph however, is expressly not limited to those specified circumstances. A finding of bad faith may be made where the Respondent "knew or should have known" of the registration and use of the trademark prior to registering the domain name: SportSoft Golf, Inc. v. Hale Irwin�s Golfers� Passport (NAF Case No. FA0094956). Likewise Marriott International, Inc. v. John Marriot (NAF Case No. FA0094737); 163972 Canada Inc. v. Sandro Ursino (DeC Case No. AF-0211) and Centeon L.L.C./Aventis Behring L.L.C. v. E (NAF Case No. FA0095037).
As already mentioned, the Respondents did have prior knowledge of the VIVENDI UNIVERSAL mark and they deliberately chose to register a domain name which incorporated that mark in its entirety. In so doing, they might have thought that the word "sucks" would serve to distinguish the disputed domain name from the mark. However, in this regard they were mistaken, at least so far as non-English speakers are concerned, and they must bear the consequences of the risk they took.
In Cruzeiro Licenciamentos Ltda. v. David Sallen, Sallen Enterprises and J.D.Sallen Enterprises (WIPO Case No. D2000-0715), one factor held by the panel as tilting the inference against the Respondent and assisting the Complainant in discharging the onus of proof of bad faith was:
"mere passive holding of a domain name can qualify as bad faith if the domain name owner's conduct creates the impression that the name is for sale."
The Panel finds that such an impression is created by Mr. Sallen's reply to the Complainant's counsel's request of August 6, 2001, for a response to the "cease and desist" letter of July 26, 2001:
"in time. please remember -- one of us is not making any money off of this process and therefore must attend to the business of making a living."
The speed with which the Respondents were able to direct Internet users reaching the disputed domain name to a site with "free speech" content following receipt of the "cease and desist" letter undermines their argument that five months is a perfectly reasonable time within which any legitimate domain name registrant might be expected to establish a website.
The Panel finds that the Respondents have acted in bad faith both in registration and use of the disputed domain name.
The Complainant has established this element.
7. Decision
Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel directs that the domain name be transferred to the Complainant.
Alan L. Limbury
Presiding Panelist
Sir Ian Barker
Panelist
Dated: November 7, 2001
Dissent
I respectfully dissent from the decision of the majority of the Panel.
As the majority notes, the domain name at issue is clearly not identical to any of the Complainant's trademarks. The case therefore turns on the question whether a domain name that appends the pejorative term "sucks" to a trademark may be confusingly similar to that trademark. Numerous other UDRP panels have addressed this question with conflicting results, but many panels have held -- correctly, in my view -- that "sucks" domain names are not or cannot be confusingly similar. See Lockheed Martin Corp. v. Parisi (WIPO Case No. D2000-1015) (2-1 decision) ( and ); McLane Co. v. Craig (WIPO Case No. D2000-1455) (); Wal-Mart Stores, Inc. v. Wallmartcanada (WIPO Case No. D2000-1104) (); see also Bloomberg L.P. v. Secaucus Group, No. FA97077 (NAF June 7, 2001) (Sorkin, dissenting) (); cf. America Online, Inc. v. Johuathan Investments, Inc.(WIPO Case No. D2001-0918) (holding that is not confusingly similar to NETSCAPE trademark); E.I. du Pont de Nemours & Co. v. ITC, No. FA96219 (NAF February 20, 2001) (3-0 decision) (finding confusingly similar to complainant's LYCRA trademark, contrasting "lovers" with "sucks," "a particularly distinguishing word when added to a trademark ... that uniquely indicates that it is unaffiliated with the mark owner"); Robo Enterprises, Inc. v. Daringer, No. FA96375 (NAF January 15, 2001) (finding confusingly similar to complainant's ROBO ENTERPRISES mark, contrasting "litigation" with "sucks" and similar terms that clearly indicate that the domain name is not associated with or authorized by the trademark owner).
As the majority suggests, there may well be some narrow categories of trademarks for which the word "sucks" does not clearly disassociate a domain name from the trademark, and therefore it may be unwise to adopt a per se rule holding that "sucks" domain names can never be found confusingly similar to the trademarks they contain. But the Complainant in this proceeding does not claim to be known as a manufacturer of vacuum cleaners or suction pumps, or as a self-deprecating alternative rock band, or a test laboratory for beverage straws, or a porn star, a black hole, or any other sort of entity that people are likely to associate with sucking. And even if the Complainant did fall within one of these categories, it would still bear the burden of proving a likelihood of confusion.
It is true that persons who are not fluent in English (and those who are unfamiliar with colloquial English) may not recognize the word "sucks" or the pejorative sense in which it is used here. The Complainant is a large multinational corporation, and its marks certainly must be known to some such persons. On the other hand, the word "sucks" is used quite frequently within domain names (and elsewhere) to criticize, disparage, and ridicule -- probably more frequently than any other single word in any language. The mere fact that some people may not fully comprehend the colloquial meaning of "sucks" is thus immaterial, at least absent evidence that many people understand the word to mean something that, when combined with the Complainant's trademark, is confusingly similar to the trademark.
I would find that the domain name is neither identical nor confusingly similar to the trademark VIVENDI UNIVERSAL, and would dismiss the complaint on this basis without reaching the questions of legitimacy and bad faith.
David E. Sorkin
Panelist
Footnotes:
1. In Sleekcraft, the Court of Appeals for the Ninth Circuit enumerated eight factors to be weighed on the question of likelihood of confusion between trademarks: (1) strength of the mark; (2) proximity of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be exercised by the purchaser; (7) defendant's intent in selecting the mark; and (8) likelihood of expansion of the product lines.
Full & Egal Universal Law Academy