The Power of Internet Gripe Sites

Bad Faith Registration of a Domain

The registration of a domain in bad faith can be proved by:

1. circumstances indicating that the domain name has been registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for more than the out-of-pocket costs directly related to registering the domain name; or
2. the domain name has been registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
3. the domain name has been registered primarily for the purpose of disrupting the business of a competitor; or
4. the domain name is being used intentionally to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Web site or location or of a product or service on the Web site or location.¹⁶

Bad faith registrations of brandsucks domains were often proven through attempts on the part of the registrants to sell a domain to the owner of the brand contained within the domain. It appears that such activity reveals awareness of a domain’s similarity and value to the brand, and therefore shows its registration and use to be an act of bad faith. A good example of this is the group of complaints brought forth by Wal-Mart Stores, Inc., against Walsucks and Walmarket Puerto Rico over five domains that include walmartpuertoricosucks.com. These proceedings determined that the Respondents clearly had no legitimate business claims to the domains, and registered names “primarily for disrupting the business of a competitor” and resulted in a transfer of the names in question. ¹⁷

The domain holder’s intent seemed to be the most important element in determining bad faith, and was often decided by the “I know it when I see it” approach. In these cases, the UDRP panels decided to look to the US Ninth Circuit Court of Appeals, which stated that “the law has long been established that if an infringer ‘adopts his designation with the intent of deriving benefit from the reputation of the trademark or trade name, its intent may be sufficient to justify the inference that there are confusing similarities.’” ¹⁸ The panel decision on the UDRP that was filed maintained that the Respondent registered the domain knowing that it would be effective if it contained Wal-Mart’s trademark and the Respondent had a recorded history of trying to extort money from Wal-Mart with his domain registrations. A panel for another UDRP had “no difficulty in finding bad faith registration and use” since the “Respondent has shown a cynical pattern of dealing in domain names with apparent attempt to embarrass the owners of internationally known marks. The fact that Internet users are diverted to the Respondent’s sites is evidence of bad faith.”¹⁹ The panel goes on to say that it “is not in a position, however, to judge whether the criticism found on the Respondent’s Web sites is valid or libelous,” so that again, future panels can be informed, but not bound by, the decisions made for this particular case.²⁰

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