The Complainant is ADT Services AG, a Swiss corporation with its principal place of business at Shaffhausen, Switzerland. The Complainant is represented by Mr John P. Margiotta, of Fross Zelnick Lehrman & Zissu P.C., Attorneys of New York, USA.
The Respondent is ADT Sucks.com of Box 4357, Boynton Beach, Florida, USA. The Respondent is represented by Mr Howard M. Neu, Attorney of Pembroke Pines, Florida, USA.
2. The Domain Name and Registrar
The domain name at issue is <adtsucks.com>. The domain name is registered with Network Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, U.S.A. ("NSI").
3. Procedural History
The Complaint submitted by ADT Services AG, was received on February 9, 2001, (electronic version) and February 12, 2001, (hard copy) by the World Intellectual Property Organization and Mediation Center ("WIPO Center").
On February 15, 2001, a request for Registrar verification was transmitted by the WIPO Center to NSI.
By email dated February 16, 2001, NSI advised WIPO Center as follows:
NSI had received a copy of the Complaint from the Complainant.
NSI is the Registrar of the domain name registration <adtsucks.com>.
ADTsucks.com at the address shown for the Respondent is shown as the "current registrant" of the domain name.
R Schwartz of Nevis, Kentucky, USA is the billing, administrative and technical contact.
The domain name registration is currently in "Active" status.
The NSI has currently incorporated in its agreements the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").
The advice from NSI that the domain name in question is still "active" indicates the Respondent has not requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with NSI. Accordingly, the Respondent is bound by the provisions of NSI’s Domain Name Dispute Resolution Policy, i.e., the ICANN policy. The Respondent has not challenged the jurisdiction of the Panel.
Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, the WIPO Center on February 26, 2001, transmitted by post-courier and by email a notification of Amended Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Amended Complaint was also emailed to NSI and ICANN. The Respondent filed a Response on March 15, 2001 (electronic) and March 20, 2001 (hard copy).
The Respondent elected to have the Complaint resolved by a three member panel. The parties have duly paid the amounts required of them to the WIPO Center.
The WIPO Center invited the Honorable Sir Ian Barker QC to serve as Presiding Panelist in the case. It had previously invited Mr David E Wagoner and Mr Dennis A Foster to be Panelists. All panelists have duly given a statement of acceptance and a declaration of impartiality and independence.
The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
On April 5, 2001, WIPO Center forwarded to the Panelists by courier the relevant submissions and the record. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel would have been required to forward its decision by
April 19, 2001. In view of communication difficulties and the intervention of Easter holidays, a decision will now be given on or before April 27, 2001.
The Complainant sought leave to file a Reply to the Response. The Respondent opposed. The Panel has not seen the need for further documents: there is no right to file a reply given to a Respondent under the Rules. The Panel does not permit the filing of a Reply.
The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules.
The language of the administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
Complainant is the largest provider of residential and commercial security monitoring services in the United States. It provides security monitoring services of all kinds to protect personal and real property customers under the service marks and trade names ADT and/or ADT SECURITY SYSTEMS, since at least as early as 1908. Complainant currently provides such services, commonly known as "central station monitoring" services, to over 1,000,000 homes in the United States.
Complainant provides central station monitoring and other security services to commercial customers from small businesses to the world’s largest corporations. SDM magazine, a trade magazine for the electronic security industry, ranked the Complainant number one, based on revenue, in its 1999 and 2000 "Top Systems Integrators Report," which ranked the top 100 companies "that derive more than half of their revenue from the sales, installation, and service of access control, CCTV, and integrated security systems."
Complainant owns the following federally registered US trademarks:
ARK
NO./DATE
GOODS/SERVICES
ADT
710,708
registered: 01/31/1961
first use:1903
Central station electric protection service, including fire alarm service, watchmen’s supervisory service, sprinkler and waterflow supervisory service, intruder and burglar alarm service, and industrial process supervisory service. (Class 35)
ADT
710,507
registered: 01/31/1961
first use: 10/16/1913
Electric protection equipment, including fire alarm boxes, fire detecting and alarm devices, watchmen’s tour stations, sprinkler supervisory and waterflow alarm devices, intruder alarm apparatus, and vault alarm devices. (Class 9)
ADT
(stylised)
803,247
registered: 02/01/1966
first use: 01/1937
Installation, inspection, maintenance and trouble call service for electrical protection equipment and services-namely, fire alarm equipment and services, watchmen’s supervisory equipment and services, sprinkler and waterflow supervisory equipment and services, intruder and burglar alarm equipment and services, and industrial process supervisory equipment services. (Class 37)
ADT
(stylized)
838,956
registered: 11/14/1967
first use: 02/15/1965
Central station electric protection service, including fire alarm service, watchmen’s supervisory service, sprinkler and waterflow supervisory service, intruder and burglar alarm service, industrial process supervisory service. (Class 35)
Installation, inspection, maintenance and trouble call service for electrical protection equipment and services-namely, fire alarm equipment and services, watchmen’s supervisory equipment and services, sprinkler and waterflow supervisory equipment and services, intruder and burglar alarm equipment and services, and industrial process supervisory equipment and services. (Class 37)
ADT
(stylized)
846,966
registered: 04/02/1968
first use: 08/02/1966
Electric protection equipment – namely, fire alarm boxes, fire detecting and alarm devices, watchmen’s tour stations, sprinkler supervisory and waterflow alarm devices, intruder alarm apparatus, and vault alarm devices. (Class 9)
ADT
(stylised)
1,034,716
registered: 03/02.1976:
first use: 12/04/1973
Closed circuit television equipment – namely, closed circuit television services, television cameras, television monitors and monitor units, television camera lenses, television camera zoom lenses and remote control units, television camera mountings and housings and video switches for providing a single output from a plurality of inputs. (Class 9)
Complainant has developed substantial goodwill in the ADT marks and trade name. It currently spends tens of millions of dollars annually in national advertisement and promotion of its goods and services under its ADT-related marks in television, radio, newspapers, magazines and direct mail advertisements. ADT Security services also maintains an Internet web site, <adt.com>, which provides consumer information concerning its goods and services.
The Respondent diverts users of <adtsucks.com> to its own web site, <erealestate.com> which offers links to several other sites, including pornographic sites. The other sites that users can link to through <erealestate.com> are all commercial in nature.
The <errealestate.com> site is controlled by Rick Schwartz, the administrative, technical and billing contact for the Domain Name. Mr. Schwartz claims on the home page of <erealestate.com> to own over 3,000 domain names, many of which incorporate famous trademarks and trade names.
Mr Schwartz has received publicity as a result of the large number of domain names that he has acquired and sold. According to an article in The Business Journal, more than half of the domain names owned by Mr. Schwartz are "dirty". They include such generic names as <dick.com>, <orgy.com>, <porno.com>, <ass.com> and <horny.com>. Mr. Schwartz has also a group of domain names incorporating famous trademarks with the word "SUCKS" appended to them. These include, for example, <cbs-sucks.com>, <bellatlantic-sucks.com>, <gm-sucks.com>, <mci-sucks.com>, <motel6sucks.com>and <nbcsportsucks.com>.
One of the featured jump sites from Mr. Schwartz’s <erealestate.com> site is to an adults-only entertainment site called <men.com>. If the user clicks on <men.com>, he or she is taken to a page that offers two jump sites to pornographic material; one advertised for "straight" men and one for "gay" men. Clicking through to these sites, the viewer sees very explicit pornographic pictures.
In addition to the jump sites to pornographic material, <erealestate.com> features jump sites to other commercial entities, including <bulkemail.com> (which sells bulk e-mail programs for the desktop computer), <discount reservations.com> (which sells discount travel arrangements), <ebid.com> (an auction site), <netfinders.com> (a search engine), <e-movie.com> (which enables users to rent, buy and view VHS and DVD recordings) <and tradeshows.com> (a site that enables users to locate their favourite tradeshows).
5. Parties’ Contentions:
Complainant
(in summary)
(a) The disputed domain name is confusingly similar to its registered marks. It invokes various WIPO decisions which have held that the addition of a pejorative term such as ‘sucks’ to a famous mark is evidence of confusing similarity to that mark.
(b) Respondent has no legitimate rights or interest in the name.
(c) Respondent has no defence based on free expression rights.
(d) Respondent is using the name to divert traffic to its own commercial sites featuring pornography.
(e) The Respondent registered and is using the name in bad faith. Mr Schwartz proclaims on his <enrealestate.com> home page that he owns 3,000 names, many of which incorporate famous marks.
(f) Mr Schwartz (who controls Respondent) deals in domain names including names which are famous marks plus the word ‘sucks’. E.g. CBS-SUCKS on <bellatlantic-sucks.com>.
(g) Complainant’s marks are tarnished by the deflection of Internet users entering the disputed domain name site on to pornographic sites.
(h) Respondent is seeking to capitalise on Complainant’s goodwill.
Respondent
(a) It relies on those WIPO decisions which have, contrary to others, held that the word ‘sucks’ when added in a domain name to a famous mark does not make the name confusingly similar to the mark.
(b) There is no traffic to divert from Complainant’s site, since any user would know <adtsucks.com> is not a domain of the Complainant.
(c) The disputed domain is being used as a free speech website.
(d) Respondent’s other domains such as <orgy.com> or <dick.com> do not infringe trademarks. Its ownership of <cbs-sucks.com> etc is linked to Respondent’s free speech website for the registering of consumer complaints.
(e) Respondent owns <erealestate.com> for the purpose of purchasing domains and appraising the valuer of others’ domains.
(f) Complainant has failed to prove Respondent’s lack of legitimate interest in the domain or that it intentionally attempted to create a likelihood of confusion with Complainant’s mark.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to:
"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
- That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
- That the Respondent has no rights or legitimate interests in respect of the domain name; and
- That the domain name has been registered and is being used in bad faith.
The domain name <adtsucks.com> is, in the judgment of the Panel, confusingly similar to the Complainant’s marks. The addition of the sucks does nothing to deflect the impact of the mark on the Internet user.
The addition of the suffix ‘sucks’ is a crude attempt to tarnish the mark. Although ‘sucks’ could make an English speaker consider that the name does not promote the Complainant or its products, not every user of the Internet is well-versed in the English language. Consequently, a user could be led to believe that any name using the world-famous mark is associated with the Complainant. In some WIPO cases, a domain name which adds the pejorative term ‘sucks’ to a well-known mark has been ordered to be removed. In D2000-0583, Direct Line Group Ltd & Ors v Purge I.T. Ltd, a distinguished Panelist, Professor W R Cornish, ordered the transfer to the Complainant of the domain name <directlinesucks.com>. He held the name confusingly similar to the mark Direct Line. His rationale, which the majority of this Panel adopts with respect, was as follows:
"The Respondent’s registration, consisting of the Complainants’ name with the suffix, "sucks" (plus ".com"), is not identical to the Complainants’ marks and the question arises whether the registration is confusingly similar to those marks.
Given the apparent mushrooming of complaints sites identified by reference to the target’s name, can it be said that the registration would be recognised as an address plainly dissociated from the Complainants? In the Panel’s opinion, this is by no means necessarily so. The first and immediately striking element in the Domain Name is the Complainants’ name and adoption of it in the Domain Name is inherently likely to lead some people to believe that the Complainants are connected with it. Some will treat the additional "sucks" as a pejorative exclamation and therefore dissociate it after all from the Complainants; but equally, others may be unable to give it any very definite meaning and will be confused about the potential association with the Complainants. The Complainants have accordingly made out the first element in its Complaint (see the rather similar conclusion on this element in Case D 2000-0477 (walmartcanadasucks.com))."
The Panel is aware that there are other decisions by WIPO panelists which have taken a similar approach and others where panelists have concluded that a derogatory word like "sucks" when added to a registered mark does not render the resulting domain name confusingly similar. Unless and until there is some appellate tribunal, this difference of opinion will endure. Although the majority of this Panel can see the contrary arguments, the approach cited above is considered appropriate by the Panel majority.
One member of the Panel considers that "sucks" added to a mark may not be confusingly similar when used as a domain name in a fair use and noncommercial context. However, this is not the case here because the Respondent’s disputed domain name website is commercial in nature. Thus this Panel member agrees that the Respondent’s domain name is confusingly similar to the Complainant’s marks.
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that the Complainant has discharged the onus of proof for the second criterion: The Respondent has failed to demonstrate any legitimate right or interest.
Respondent’s ‘free speech’ claim is untenable. The evidence clearly displays a pattern of registering names which include famous marks plus the word ‘sucks’. There is just no evidence of demonstrable preparations for a business, or of any of the other matters which could assist a Respondent under the Policy.
The Panel has no difficulty in finding bad faith registration and use. Respondent has shown a cynical pattern of dealing in domain names with apparent attempt to embarrass the owners of internationally known marks. The fact that Internet users are diverted to the Respondent’s sites is evidence of bad faith. That would be so even if the sites were non-pornographic.
Accordingly, the Panel finds the complaint justified.
7. Decision
For the foregoing reasons, the Panel decides:
(a) That the domain name registered by the Respondent is confusingly similar to the trademark to which the Complainant has rights;
(b) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) The Respondent’s domain name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <adtsucks.com> be transferred to the Complainant, ADT Services AG.
Hon. Sir Ian Barker QC Presiding Panelist
Mr David E Wagoner Panelist
Mr Dennis A. Foster Panelist
Dated: April 23, 2001
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