Wachovia Corporation v. Alton Flanders

WIPO

Arbitration and Mediation Center

ADMINISTRATIVE PANEL

DECISION

Wachovia Corporation v. Alton Flanders

Case No. D2003-0596

1. The Parties

The Complainant is Wachovia Corporation, Charlotte, North Carolina, United States of America,

represented by Kennedy Covington Lobdell & Hickman, LLP, United States of

America.

The Respondent is Alton Flanders, Nantucket, Massachussetts, United States

of America.

2. The Domain Names and Registrar

The disputed domain names are <wachovia-sucks.com>, <wachoviabanksucks.com>,

<wachoviasucks.com> and are registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center")

on July 29, 2003. On July 30, 2003, the Center transmitted by email to eNom

a request for registrar verification in connection with the domain names at

issue. The Registrar failed to submit a Verification Response. Therefore, the

Center made a Whois printout on August 6, 2003, which showed that the disputed

domain name was registered with eNom, and that the Respondent was the current

registrant of the disputed domain name. The Panelist would like to remind the

Registrar of the importance of providing a Verification Response so that the

Center can ascertain the contact information of the Respondent and provide appropriate

notice and furthermore to ensure that the domain name registration remains locked

during the UDRP proceedings.

The Center verified that the Complaint satisfied the formal requirements of

the Uniform Domain Name Dispute Resolution Policy (the "Policy"),

the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"),

and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy

(the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally

notified the Respondent of the Complaint, and the proceedings commenced on August

6, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response

was August 26, 2003. The Respondent filed his response on August 27,

2003.

The Center appointed Sandra Franklin as the sole panelist in this matter on

September 9, 2003. The Panel finds that it was properly constituted. The

Panel has submitted the Statement of Acceptance and Declaration of Impartiality

and Independence, as required by the Center to ensure compliance with the Rules,

paragraph 7.

4. Factual Background

Complainant is the owner of the registered trademark WACHOVIA and related marks

for banking and financial services. Complainant has 24 registered marks and

17 pending marks for its WACHOVIA family of marks in the U.S., and another 6

foreign registrations.

5. Parties’ Contentions

A. Complainant

Complainant makes the following assertions:

1. Respondent’s <wachoviasucks.com>, <wachovia-sucks.com>,

and <wachoviabanksucks.com> domain names are confusingly similar

to Complainant’s WACHOVIA mark.

2. Respondent does not have any rights or legitimate interests in the <wachoviasucks.com>,

<wachovia-sucks.com>, and <wachoviabanksucks.com> domain names.

3. Respondent registered and used the <wachoviasucks.com>, <wachovia-sucks.com>,

and <wachoviabanksucks.com> domain names in bad faith.

B. Respondent

The Respondent replied on August 27, 2003, one day late. Nevertheless, the

Panel has considered Respondent’s arguments. In summary, Respondent relies primarily

on the right of free speech, to claim fair use, by virtue of simply having the

derogatory "-sucks" domain names. Respondent claims to be a disgruntled

customer of Complainant, but does not actually operate a protest site.

6. Discussion and Findings

Complainant is a major participant in the international banking community.

Respondent is an individual who appears to have the following d/b/a’s: DomainExchange.com,

DotComCatolog.com, CreditInfoAbuse.com and ProBuyer.com. Respondent’s domain

names <wachoviasucks.com>, <wachovia-sucks.com>, and <wachoviabanksucks.com>

point to tools allowing users to run predetermined searches in several categories

of financial products and services.

A. Identical or Confusingly Similar

There is a split among the UDRP decisions regarding whether a "-sucks"

domain name is confusingly similar to the trademark to which it is appended.

The majority of the decisions have found confusing similarity. In a minority

of decisions, and in some dissenting opinions, Panelists have deemed a "-sucks"

addition to a well-known trademark to be an obvious indication that the domain

name is not affiliated with that trademark owner. This Panel, however, concurs

with the notion that every case must be assessed on its own merits, as put forth

in Cabela’s Inc. v. Cupcake Patrol, FA 95080 (National Arbitration Forum,

August 29, 2000), and therefore does not accept the per se rule, resulting

in an automatic finding of no confusing similarity. Complainant’s arguments

on the inappropriateness of the per se rule are persuasive. The per

se rule is derived in part from the Bally case. See Bally Total

Fitness Holding Co. v. Faber, 29 F.Supp.2d 1161 (C.D. Cal. 1998). A United

States federal appeals court, however, recently acknowledged the Bally

court’s distinction of its case from cases in which a trademark is used as a

domain name and reaffirmed that the Bally court’s language appearing

to permit the use of "-sucks" in a domain name is pure dicta. See

E & J Gallo Winery v. Spider Webs, Ltd., 286 F.3rd 270

(5th Cir. 2002). This Panel notes that the Bally case, and

2 other cases often cited in support of a finding of no confusing similarity,

the Lucent and Sleekcraft cases, are all cases discussing proof

of trademark infringement. See Lucent Tech., Inc. v. Lucentsucks.com, 29

F.Supp.2d 528, (E.D. Va. 2000), and AMF, Inc. v. Sleekcraft Boats, 599

F.2d 341 (9th Cir. 1979.) Proof of trademark infringement is not

the same as proof of the first element under the UDRP Policy. This Panel finds

it more appropriate to adopt the UDRP Policy and precedent developed specifically

to address cybersquatting.

A reading of UDRP precedent reveals that Panels have routinely found confusing

similarity when a domain name incorporates Complainant’s well-known mark and

merely adds a generic or slang term. Many Panels have specifically found that

the addition of the slang word "sucks" does not mitigate confusing

similarity from the perspective of a person searching on the Internet. See ADT

Services AG v. ADT Sucks.com, WIPO Case

No. D2001-0213, which states "The addition of the suffix ‘sucks’ does

nothing to deflect the impact of the mark on the Internet user." See also

Brio Corp. v. Spruce Caboose, NAF Case No. FA0205000114411, noting the

dominating presence of Complainant’s mark as a source of confusion in the related

"-sucks" mark.

Specific to the facts of this case, previous Panels have found that international

customers are more likely to be confused by "-sucks" domain names,

as they may not recognize the connotation of the word "sucks". See

ADT Services, supra, and Vivendi Universal v. Sallen, WIPO

Case No. D2001-1121. Indeed, one of the minority Panels that adopted the

per se rule noted that the existence of non-English speaking customers

of Complainant was an exception to the per se rule. See Asda Group

Ltd. v. Kilgour, WIPO Case No. D2002-0857.

This Panel finds that the <wachoviasucks.com>, <wachovia-sucks.com>,

and <wachoviabanksucks.com> domain names are confusingly similar

to the established international trademark WACHOVIA. Accordingly, the Panel

finds that Policy Paragraph 4(a)(i) has been satisfied.

Finally, this Panel would like to echo a previous opinion that finding confusing

similarity in "-sucks" cases does not abridge the rights of legitimate

protest sites because such sites are adequately protected by the second

and third elements of the Policy. See Koninklijke Philips Electronics N.V.

v. In Seo Kim, WIPO Case No. D2001-1195.

B. Rights or Legitimate Interests

The domain names at issue here do not point to a protest site. In the previous

UDRP cases which have found legitimate interests based on the right of free

speech and the fair use doctrine, the domain name has been linked to a "complaint"

web site. See Wal-Mart Stores, Inc. v. walmartcanadasucks.com, WIPO

Case No. D2000-1104, which held that the Respondent had legitimate rights

in the domain name as a forum for criticism of the Complainant. Such is not

the case here. Here, Respondent’s <wachoviasucks.com>, <wachovia-sucks.com>,

and <wachoviabanksucks.com> domain names point to competitive financial

products and services. Simply having a domain name with "-sucks" in

the name cannot, by itself, establish fair use; one must look to the content

of the website to determine if there is an exercise of free speech which allows

the Respondent to rely on the fair use exception. To do otherwise would legitimize

cybersquatters, who intentionally redirect traffic from a famous mark, simply

through the use of a derogatory term.

In this case, there is no such exercise of free speech, but rather a redirection

of traffic from WACHOVIA to competitive products and services. The products

and services found under the domain names are not those of Respondent, and Respondent

does not offer any goods or services itself. Respondent is not known by the

name WACHOVIA. Respondent is not affiliated in any way with Complainant.

Respondent states that he may some day launch a special site dealing with wide-ranging

consumer matters under CreditInfoAbuse.com. He has not, however, made any such

use or even preparations to use the <wachoviasucks.com>, <wachovia-sucks.com>,

and <wachoviabanksucks.com> domain names in a way which would constitute

fair use. See Vivendi, supra, which found no rights or legitimate interest

in a "-sucks" domain name where Respondent failed to make preparations

for use of a protest site.

Accordingly, the Panel finds that Policy Paragraph 4(a)(ii) has been satisfied.

C. Registered and Used in Bad Faith

The Respondent operates at least 2 businesses which sell domain names. He has

been a Respondent in a previous UDRP case where he also tried to use a trademark

in a domain name, but was made to transfer the domain name to the trademark

owner. See IslandAir, Inc. v. Flanders, NAF Case No. FA0011000096098.

Due to the distinctiveness of the mark WACHOVIA and its prominence in the financial

services industry, it is inconceivable that Respondent was not aware of Complainant’s

mark when he registered and used the domain names. It is apparent that Respondent

registered the domain names, containing a known trademark, to disrupt Complainant’s

business. He disrupted Complainant’s business by redirecting traffic to competitive

financial products and services, and likely by confusing Complainant’s customers.

Respondent surely has obtained or expected to obtain some commercial gain, either

by selling links to Complainant’s competitors, selling advertising space, or

by being paid to stop using the derogatory domain names.

The factors noted above touch on all 4 of the non-exclusive circumstances listed

in Paragraph 4(b) of the Policy indicating bad faith. Factors indicating bad

faith may be considered in combination. See RRI Financial, Inc. v. Chen,

WIPO Case No. D2000-1483. All circumstances

taken together, this Panel finds that the Respondent registered and used the

domain names in bad faith and, accordingly, that Policy Paragraph 4(a)(iii)

has been satisfied.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy

and 15 of the Rules, the Panel orders that the domain names <wachoviasucks.com>,

<wachovia-sucks.com>, and <wachoviabanksucks.com> be transferred

to Complainant.

Sandra Franklin

Sole Panelist

Dated: September 19, 2003

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