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No doubt, “sucks” sites — those sites that typically are highly critical of companies by former employees — have generated quite a bit of controversy. Indeed, companies have been very aggressive in filing suit under various trademark theories to shut down these sites. However, in Asda Group Limited v. Kilgour, yet the latest in a string of court decisions that generally have favored the viability of sucks sites, an administrative panel of the World Intellectual Property Organization (WIPO) has broadly ruled in favor of the holder of the domain name asdasucks.net. BACKGROUND Asda, the complainant, owns and operates one of the major supermarket chains in the United Kingdom and trades under the U.K. commonly known name Asda. Asda has a number of trademark registrations that include the name Asda and, according to the WIPO panel, holds substantial unregistered rights in the name. The respondent is Paul Kilgour, an individual. As described by the WIPO panel, he is a “disgruntled ex-employee” of Asda. Kilgour registered the domain name asdasucks.net on July 23, 2001, while he was still employed by Asda. When he registered the domain name, he was operating a Web site connected to one of his other domain names, asdasucks.co.uk. At that time, this latter Web site contained content directed at Asda corporate management which is described by the WIPO panel as “scandously and disgustingly abusive.” The subject domain name, asdasucks.net, was not connected to an Internet facility until August 2002. Visitors to the site then were linked to Asda’s official company site at asda.co.uk. The subject asdasucks.net site recently has stated: “his Website is now officially closed! This website is in no way associated with the Asda stores chain.” Apparently, Kilgour indicated to Asda attorneys that he was “open to negotiation” with respect to the domain name asdasucks.co.uk. THE COMPLAINT Asda initiated a legal proceeding by way of a complaint submitted with WIPO on Sept. 12, 2002. Kilgour never responded to Asda’s complaint. In its complaint, Asda contends that the subject domain name asdasucks.net is “confusingly similar” to a trademark in which it has rights, that Kilgour has no legitimate interests in the domain name, and that the domain name was registered in bad faith. THE WIPO PANEL DECISION The WIPO panel, consisting of one panelist, Tony Willoughby, ultimately ruled in favor of Kilgour, notwithstanding the fact that Kilgour never even responded to Asda’s complaint. Willoughby began his analysis by finding that Asda needed to show that the subject domain name asdasucks.net, by reason of its similarity to Asda’s trademark, “is likely to lead to a substantial (i.e. not insignificant) level of confusion among Internet users.” Namely, there must be “confusion in the minds of Internet users that the Domain Name is or may very well be a domain name belonging to the Complainant or licensed by the Complainant.” Asda appeared to agree with this legal interpretation of the type of confusion it must prove, as its complaint states: “The [subject] Domain Name incorporates as its most prominent feature the Complainant’s trade mark ‘ASDA’ together with the pejorative word ‘SUCKS.’ The first and immediate striking element of the Domain Name is the Complainant’s name. The adoption of the Name in the Domain Name is inherently likely to lead some people to believe that the Complainant is connected with the Domain Name.” Willoughby, on balance, was “unable to accept that” a substantial number of people are likely to be confused about the potential association of the domain name with Asda. In fact, he went so far as to express his view that “by now the number of Internet users who do not appreciate the significance of the ‘-sucks’ suffix must be so small as to be de minimis and not worthy of consideration.” As such, “Internet users will be well aware that a domain name with a ‘-sucks’ suffix does not have the approval of the relevant trade mark owner.” While Kilgour’s linking of asdasucks.net to Asda’s official company site at asda.co.uk may have amounted to a confusing use of his domain name, according to Willoughby, that does not mean that the asdasucks.net domain name itself is confusingly similar to Asda’s trademark. Finally, Willoughby noted that the only conceivable confusion among Internet users regarding the asdasucks.net domain could arise for people who are not fluent in English and who “do not therefore appreciate the significance of the ‘-sucks’ suffix.” Here, however, there was no evidence presented of such foreign language confusion. PARTING WORDS In ruling that Kilgour did not have to give up the domain name asdasucks.net, Willoughby stated that he “takes no pleasure in coming to this finding.” In a parting shot, he described Kilgour’s behavior as “grotesque” and he states his belief that Kilgour likely registered the domain name “for a similar purpose.” IMPLICATIONS If Willoughby’s analysis becomes the prevailing legal trend, companies will have a very tough time seeking to shut down sucks sites on the ground that the domain names cause consumer confusion. Indeed, except for the foreign language possible exception created by Willoughby, companies will have to find other legal arguments to support any further efforts directed at sucks sites. Eric Sinrod is a partner in the San Francisco office of Duane Morris ( www.duanemorris.com), where he focuses on litigation matters of various types, including information technology disputes. Mr. Sinrod’s Web site is www.sinrodlaw.com, and he can be reached at [email protected]. To receive a weekly e-mail link to Mr. Sinrod’s columns, please type Subscribe in the subject line of an e-mail to be sent to [email protected].

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