WIPO Leery of Perjorative Domain Names That Contain Trademarks

Case name: Societé Air France v. Virtual Dates, Inc., Case No. D2005-0168 (WIPO Administrative Panel Decision, 5/24/05)

One Sentence Summary: The domain name airfrancesucks.com was transferred from a warehouser of domain names to Air France because of the likelihood that international internet users would be confused.

WIPO Administrative Panel Findings:

• Applying the Uniform Domain Name Dispute Resolution Policy (the "Policy") and the rules relating thereto, the Panel (2 of its 3 members) found that the incorporation of a well-known trademark in its entirety as the first and dominant part of a domain name is confusingly similar to the trademark regardless of whether there are additional perjorative or neutral elements. The Panel was particularly concerned about international internet users who may not understand the perjorative nature of the addition.
• The Panel rejected Respondent's argument that it had a legitimate interest in the domain name as a "free speech website" where internet users could register comments about Air France. In particular, the Panel noted that the domain name was used to redirect users to a pay-per-click provider.
• The Panel found that the Respondent had registered and used the domain name in bad faith because it was aware of the Air France trademark when it registered the claim and used the domain name to disrupt Complainant's business. Furthermore, the Panel noted that registering domain names incorporating the trademarks of others is an indication of bad faith when done by a business engaged in the warehousing of domain names.
• Having found a confusing similarity, bad faith and a lack of legitimate interest by the Respondent, the Panel ordered that the domain name be transferred to Air France.
• The dissenting member of the Panel was inclined to treat domain names that incorporate trademarks differently depending on whether the additional elements were perjorative or neutral in nature because airfrancetickets.com might cause confusion but not airfrancesucks.com.