Does Your Domain Name Suck?

January 1, 2003

There have been many cases and arbitrations about “” domain names, particularly in the USA. As a condition of registering a domain name, most domain name registrars will insist that the domain name holder be bound by WIPO’s Uniform Dispute Resolution Policy (UDRP). Under the UDRP, in order to have a domain name transferred, a complainant must prove three things:

  • the respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights

  • the respondent has no rights or legitimate interests in respect of the domain name

  • the respondent’s domain name has been registered and is being used in bad faith.

Other actions may be brought against a domain name holder and these may include actions for passing off. In the USA, actions may also be brought for trade mark infringement and dilution, cybersquatting and unfair competition (for example, actions were brought in the courts for, f** and the free-speech rights darling,

One problem with bringing an action under the UDRP is that a decision is not binding on other panellists when making their decisions under the UDRP. Therefore, there are conflicting decisions about how to handle the domain name disputes. For example, AOL lost its UDRP action to get the f** domain name transferred to it. The WIPO panellist in that case noted that “it is inconceivable that anyone looking for this domain name will believe it has anything to do with a company of such high repute as the Complainant”. Conversely, was transferred to Vivendi with the panel stating that adding the word “sucks” to a domain is not always to be taken as “language clearly indicating that the domain name is not affiliated with the trademark owner”. Similarly, was ordered to be transferred after the WIPO panellist decided that non-English speakers might not be familiar with sucks and that companies might want to run their own sucks sites as a means of obtaining feedback on the companies’ products and services.

The UDRP’s recent decision of Asda Group Limited v Paul Kilgour Case No.D2002-0857 was a case brought by Asda against Paul Kilgour as the owner of the domain name. Kilgour was a disgruntled former employee of Asda and not only owned but also where he had posted some “scandalously and disgustingly abusive ” material. The site merely provided a link to the site (the decision makes no reference to what happened to the domain name but it does not seem to be operational currently). Asda contended that the domain name is confusingly similar to the many Asda registered trade marks, Kilgour had no legitimate interest in the domain name and that it was registered and is being used in bad faith.

The WIPO panel dismissed Asda’s complaint as it believed that “asdasucks” was not confusingly similar to the Asda registered trade marks. The panel was “unable to accept that a substantial number of people are likely to be confused about the potential association of the Domain Name with the Complainant” and that “the number of Internet users who do not appreciate the significance of the “-sucks” suffix must be so small as to be de minimis and not worthy of consideration”. As for the ‘use by foreigners’ reasoning used in the case, the panel in the Asda case found that “the only possible confusion will be among Internet users, who are aware of the existence of the Complainant, who are not fluent in English and who do not therefore appreciate the significance of the “-sucks” suffix. .. the Panel has examined the Complainant’s website for signs of a foreign clientele and has found nothing of relevance. The website is an English language website devoted essentially to a UK orientated business”. Therefore, the panel found that, as Asda had not satisfied the first element needed to transfer a domain name under the UDRP, it was unnecessary for it to contemplate the other two elements and Asda’s complaint was dismissed.

Therefore, for now, it appears that the domain name owners may be safe but, as illustrated above, the history of these domain names decisions is not necessarily a guide to the future.

Anna Feros is a Solicitor in the Media and Technology Group at Shepherd & Wedderburn (