The Power of Internet Gripe Sites

Confusingly Similar Domains

There are two schools of thought when evaluating the confusing similarity of a domain. On one hand, the consensus seems to be that “the fame of a mark does not always mean that consumers will associate all use of the mark with the mark’s owner,” which is particularly apt in the case of brandsucks domains.³ These domain name arbitration panels decide that adding the word “sucks” to a domain does not constitute registration of a confusingly similar domain name, stating that “trademark owners, indeed, are highly unlikely to disparage or parody their own goods or services.”⁴ The panel in the Kendall/Hunt Publishing Company v. headhunterbob dispute handled by the National Arbitration Forum (NAF) went so far as to say that “‘sucks’ is a pretty short word and it isn’t a compliment,” and “considering most beginning linguists learn curse words first, it is likely anyone with any command of the English language knows ‘sucks’ doesn’t have a good connotation.” ⁵

On the other hand, brand owners attempt to prove the confusing similarity of “sucks” by pointing out that it is a slang term that may not be understood by non-Americans and therefore might be attributed to the brand owner in question. As stated by the panel of Cabela v. Cupcake Patrol, “courts and other UDRP Panels have recognized that the intentional registration of a domain name while knowing that the second-level domain contains another’s valuable trademark weighs in favor of a likelihood of confusion”. ⁶

Since all three UDRP criteria need to be met, being unable to prove that the name meets the first criterion of confusing similarity would invalidate the complaint. However, cases that present overriding evidence of bad faith registration and a lack of legitimate interest in using the domain tend to settle the question in favor of the Complainant even if there is some uncertainty as to the similarity of the domain.

< previous page | next page >