Out-Law / Your Daily Need-To-Know

UK supermarket chain Asda has lost a battle against a former employee who registered the domain name asdasucks.net, apparently to create a site on which he would air his grievances about the company's management. However, an arbitration panel found that the activity of the ex-employee was outside the scope of the dispute resolution policy.

Asda Group brought the case before WIPO's Arbitration and Mediation Center against Paul Kilgour, who registered asdasucks.net while still employed by the company which is now owned by Wal-Mart.

At the time of registration, Kilgour was already operating another web site bearing the domain name asdasucks.co.uk which, according to WIPO panellist Tony Willoughby, contained "scandalously and disgustingly abusive" material directed to Asda's management.

A notice on the asdasucks.co.uk site stated:

"The aim of this site is to give all the colleagues that work for Asda the right to voice their own opinions, and to make those opinions public. This site is NOT here to promote Asda, it is here to express the negative side that affects the employees that work for the company, though please note, it is not here to ABUSE the company."

The .co.uk site no longer exists; but Willoughby characterised Kilgour's activities in relation to that site as "grotesque." However, the .net site does not yet contain anything and Kilgour did not respond to the current dispute.

Willoughby reasoned that the number of internet users unable to identify the 'sucks' suffix and therefore likely to be confused about asdasucks.net's association with Asda was minimal and "not worthy of consideration."

He added that the only possible confusion could occur among users who are not familiar with the English language and do not appreciate the significance of the 'sucks' suffix. An examination of Asda's web site, however, found no signs of "foreign clientele." Therefore, Willoughby reasoned that Asda had failed to prove that the domain was confusingly similar to its trade mark.

Willoughby concluded that he took "no pleasure" in dismissing the complaint, but observed that a broader interpretation of the dispute resolution policy rules would be "dangerous."

The decision is available at:
http://arbiter.wipo.int/domains/decisions/html/2002/d2002-0857.html

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