The name was registered by Florida-based Virtual Dates Inc. in
1999. It was only in February 2005 that Air France took a claim
before the World Intellectual Property Organisation (WIPO),
alleging cybersquatting. The decision was made on 24th May and
published today.
For most of the past six years, Virtual Dates pointed the domain
name at a page of ePinions.com, an ad-supported site that rates and
invites reader comments on everything from movies and barbecues to
office supplies and zoos.
Virtual Dates said AirFranceSucks.com was a freedom of
expression site for the registration of complaints or
recommendations about the airline. Air France said it was just
trying to cash-in on its trade mark: this was a commercial entity,
not the gripe site of an aggrieved customer.
Two of the three WIPO panellists reckoned that a domain name
that adds 'sucks' to a trade mark will generally be confusingly
similar to that trade mark. Presiding panellist Knud Wallberg
wrote:
“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”.
Co-panellist Christian-André Le Stanc agreed: international
customers might not appreciate the pejorative nature of the term
'sucks', which would leave users confused.
The third panellist, Jeffrey M Samuels, disagreed.
Samuels, an intellectual property professor at Akron University,
Ohio, accepted that not all internet users will be familiar with
the pejorative nature of the term 'sucks.' But he added: "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.'"
A confusingly similar trade mark is not enough of itself to
force a transfer: it must also be shown that the registrant has no
rights or legitimate interest in the name and that its registration
and use were in bad faith.
But if a panel is convinced that a domain name is not
confusingly similar to a trade mark, the rest of a cybersquatting
claim will collapse.
In Samuels' opinion, 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.
Decisions on 'sucks' sites have gone both ways trade mark owners
in the past. But the current panel's majority view on their
similarity to a trade mark is supported by a WIPO report on trends
in domain name dispute decisions, published in March. On 'sucks'
sites, it agreed that non-fluent English speakers would fail to
recognise the negative connotations of the word.
