NOTE:
Gearblog has morphed into Gibbsblog. All new postings, same great Gibbs. Come on over!
Air France wins AirFranceSucks.com
By Gearhead, NetworkWorld.com, 06/08/05
According to a story on out-law.com a company named Virtual Dates Inc. registered the domain name AirFranceSucks.com (which actually redirects to an Epinions.com web site).
Virtual Dates contends that the domain was "a freedom of expression site for the registration of complaints or recommendations about the airline." Au contraire, Air France disagreed claiming that Virtual Dates was just trying to cash-in on the airline's trade mark -- Air France sees the site as a commercial entity and not a gripe site (actually, if you check out the postings you'll find that the airline seems reasonably well liked although its hub, Charles de Gaulle airport in France, is apparently almost universally loathed).
In February 2005 that Air France put their a claim to the World Intellectual Property Organisation alleging cybersquatting. WIPO moved with astounding speed and made their decision on May 24th!
The decision? Air France gets to own the domain, AirFranceSucks.com.
What's interesting about this case is it highlights the whole problem of domains that are disputed on the basis of potential trademark infringement.
Previous judgements of whether a trademark word or phrase plus the word "sucks" constituted trademark infringement were less than consistent. In the case of AirFranceSucks.com the WIPO board were split 2 to 1 in favor of it being a case of infringement. The two panelists voting for it being infringement considered that: The incorporation of a well known trade mark in its entirety as the first and dominant part of a domain name is confusingly similar to this trade mark regardless of whether the additional elements are pejorative as in this case or of a more neutral kind such as airfrancetickets.
The third panelist disagreed concluding that: ... it is likely that a substantial percentage of potential customers of Air France are familiar with the English language and, thus, would be aware of the pejorative nature of 'sucks.' This then makes the domain name non-infringing and the claim of cybersquatting is invalidated.
According to an article in The Register the domain name "was not confusingly similar to Air France’s trade mark, because it did not look or sound alike nor convey the same commercial impression."
The world of customer complaint sites is going to become a lot hotter in the next few years as consumer activists learn the power of the Internet for getting their concerns aired. We suspect that eventually the sucks.com domains will eventually be prohibited or at least become a losing proposition.
This isn't the first domain dispute that Virtual Dates has lost: In 2001 Daily Racing Form LLC appealed to WIPO over Virtual Dates registration of racingform.com and Daily Racing prevailed.
In the WIPO Decision the discussion notes that the "[Virtual Dates] effectively argues that it has rights or legitimate interests in respect of the domain name because, before it had any notice of the dispute, it had been using the domain name in connection with a bona fide offering of goods or services."
Note that the panel used the phrase "effectively argues" which, at least to us, implies that the contention was considered by the panel to be valid yet the discussion continues: "The Panel does not agree. The domain name is being used to link to a web site at which virtual horse racing is conducted. This is intended to confuse the user that the web site is somehow connected to [Daily Racing Form]. Where the domain name is being used in this fashion, the use is in bad faith and cannot be bona fide." So how was argument "effective"?
Virtual Dates pointed out in their claims: [Daily Racing Form] has no registered trademark RACING FORM, but only has registered the trademark DAILY RACING FORM, that Respondent is using the domain name at issue to link to a web site at which virtual horse racing is occurring and that this both constitutes a legitimate interest in respect of the domain name and a good faith use.
The WIPO panel concluded:
... the domain name registered by Respondent is identical or confusingly similar to the mark in which the Complainant has rights, that the Respondent has no rights to or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith. Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel orders that the domain name racingform.com be transferred to the Complainant.
This looks like a rather "thin" decision on the part of WIPO and is not atypical of the judgments being handed down at present. We can expect to see domain trademark infringement cases become more common and more complex over the next few years.
Back to Gearblog
Comments
The ability for a disgruntled customer to reserve companynamesucks.com should be protected if the customer uses that domain to share experiences with that company. But trademark laws, at least here in the US, properly prohibit people from using trademarked names to garner business for their own endeavors. This is also done to prevent confusion to consumers. Our company used to offer Web Hosting service. I remember we had one client sign up with the domain eBayworld.com. An unsuspecting consumer may believe that that domain was affiliated with eBay. One could argue that in the case you outlined above that no one would figure that AirFranceSucks.com was affiliated with AirFrance, regardless of the purpose of the web site. But in this case, Virtual Dates was not using the trademark to express a legitimate problem with AirFrance, they were, as you pointed out, redirecting the site to another, or in other cases, were using the domain to garner business for themselves. It takes a lot of work to build a trademark and it is right to have laws to protect them. In terms of the decision of the WIPO being thin, I am not sure. You are right that the use of the word "effectively" is strange. But it is not too difficult to calculate when a person is using someone elses trademark in bad faith. But what about sites that raise legitimate problems but also make some money? Take the web site PayPalsucks.com. This web site expresses problems people have had with the PayPal.com payment web site. People from all over the world express their concerns and problems they have had on the site. The intent of the site seems to be to proliferate knowledge about possible problems a consumer may have with PayPal, problems that they claim you won't read about in literature on PayPal's own web site. But the web site does advertise other payment services as "alternatives." This is where they could get into trouble. If an issue were ever made of it, a court could possibly decide that even though the site seems to operate on the discussion of consumer issues with PayPal, the advertisements constitute an unfair stream of revenue for the site authors. After all, when you look up a company at the BBB, even a company with a poor rating, you don't get advertisements for their competitors.
Posted by: Jason on June 15, 2005 12:08 PM
