WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WIZZ Air Hungary Airlines Limited Liability Company v. Holden Thomas
Case No. D2009-1105
1.
The Parties
The Complainant is WIZZ Air Hungary Airlines Limited Liability Company of Vecses,
Hungary.
The Respondent is Holden Thomas of Austin, Texas, United States of America.
2.
The Domain Name and Registrar
The disputed domain name <wizzairsucks.com> is registered with GoDaddy.com, Inc.
3.
Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”)
on August 17, 2009. On August 18, 2009, the Center transmitted by email to
GoDaddy.com, Inc. a request for registrar verification in connection with the disputed
domain name. On August 18, 2009, GoDaddy.com, Inc. transmitted by email to the
Center its verification response confirming that the Respondent is listed as the registrant
and providing the contact details for the disputed domain name.
The Center has verified that the Complaint together with the amendment to the
Complaint satisfies the formal requirements of the Uniform Domain Name Dispute
Resolution Policy (the “Policy” or “UDRP”), 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 proceeding commenced on August 24, 2009. In
accordance with the Rules, paragraph 5(a), the due date for the Response was
September 13, 2009. The Response was filed with the Center on August 26, 2009.
The Center appointed Sebastian Hughes as the sole panelist in this matter on
Page 1
September 7, 2009. 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
A.
The Complainant
The Complainant is a Hungarian company and the owner of registrations for the
WIZZAIR and WIZZ word and stylised word trade marks covering numerous countries
in Europe, which predate the date of registration of the disputed domain name (the
“Trade Marks”).
The Complainant is also the owner of the global top level domain name <wizzair.com>
as well as several country level domain names such as <wizzair.hu> comprising the
Trade Marks.
B.
The Respondent
The Respondent is an individual with an address in the United States of America.
The disputed domain name was registered on April 27, 2009.
5.
Parties’ Contentions
A.
Complainant
The following facts are alleged by the Complainant in the Complaint.
The Complainant is an airline and a member of the European Low Fare Airlines
Association, operating under the Trade Marks, with 11 operating bases in the Eastern
European region, and currently offering flights on over 150 routes to 21 countries in
Europe. The Complainant has carried over 15.5 million passengers since the start of its
operations in May 2004, and expects to carry about 7.5 million passengers in 2009. The
Complainant operates its wizzair domain names in 15 languages, and the Trade Marks
are well and widely known throughout the world.
A.
The Disputed Domain Name is identical or confusingly similar to a trade
mark or service mark in which the Complainant has rights
The disputed domain name contains the Trade Marks entirely, with the addition of the
suffix “sucks”. The use of the word “sucks” does not sufficiently distinguish the
disputed domain name from the Trade Marks.
The word “sucks” is a negative term used to indicate criticism. The disputed domain
name falls within the category of so-called “sucks” cases (where a trade mark is joined
with a negative term).
Even if some Internet users dissociate the addition of the word “sucks” from the
Complainant, not all Internet users are English speaking. The Complainant has a
significant number of non English speaking customers. These customers will not
Page 2
automatically recognize that the word “sucks” is a pejorative term and they will not be
able to dissociate it from the Trade Marks. Other Internet users will not give the domain
name any definite meaning, and will be confused regarding its association with the
Complainant.
Even Internet users who do understand the meaning of “sucks” may still remain confused
regarding the similarity of the disputed domain name with the Trade Marks. An Internet
user may also think that the Complainant registered the disputed domain name for
marketing purposes (in a self-derision strategy).
B.
The Respondent has no rights or legitimate interests in respect of the
Disputed Domain Name
The Respondent is not in any way related to the Complainant’s business, and is not an
agent of the Complainant. The Respondent is not currently known and has never been
known in relation to the Trade Marks, or any combination of the Trade Marks with the
term “sucks”. The Complainant has not granted any licence or authorisation to the
Respondent to make any use, or apply for registration, of the disputed domain name.
The Respondent is not using the disputed domain name in connection with bona fide
criticism; there is no evidence to support the conclusion that the disputed domain name
was registered for the purpose of a legitimate protest site.
The Respondent offers for sale T-shirts and other goods on the website to which the
disputed domain name is resolved (the “Website”). This evidences the commercial
purposes of the Respondent.
The Website also makes reference to competitors of the Complainant by recommending
Internet users to use these airlines instead of the Complainant.
C.
The Disputed Domain Name was registered and is being used in bad faith
The disputed domain name contains the Complainant’s well known Trade Marks. It is
clear that the Respondent was aware of the Trade Marks at the time of registering the
disputed domain name. By entirely incorporating the Trade Marks in the disputed
domain name, the Respondent deliberately chose a domain name which was likely to be
confused with the Complainant’s trade marks, company name, brand names and domain
names. This name was explicitly chosen to generate Internet traffic to the Website, by
creating a likelihood of confusion with the Trade Marks and as a consequence to receive
commercial gains.
The Respondent is hiding its registered seat (sic), factual address and other contact
details. The Complainant has carried out research with regard to the Respondent and has
not found yet any data concerning the Respondent’s company form, its residence, contact
details or other company data. The Complainant also sent a notice letter both to the
Respondent and the Respondent’s administrative contact; however, the Complainant has
not received any response from either of them yet.
The disputed domain name has been registered to disrupt the Complainant’s online
presence, tarnish its trade marks and infringe its reputation. The Complainant promotes
and sells its services mostly via the Internet. Approximately 85 % of the Complainant’s
ticket purchases are transacted through online bookings. As a consequence, the disputed
domain name is especially harmful to the Complainant’s rights and interests.
Furthermore, on the Website the Respondent invites potential customers to use other
Page 3
airlines, which constitutes clear abuse of the Trade Marks. Such behaviour also qualifies
as anti-competitive conduct under competition law and as such, it violates the lawful
interests of the Complainant. The good reputation of the Trade Marks is used by the
Respondent for the purpose of attracting users to the Website and to generate commercial
revenue.
The fact that the disputed domain name contains a well-known Trade Mark together with
the word “sucks” also supports the argument of bad faith registration as the word “sucks”
only has a negative, pejorative meaning.
The Respondent was evidently aware of the Complainant and its Trade Marks when it
registered the disputed domain name, and it intended to generate traffic on the Website
and to publish defamatory information on the Website.
B.
Respondent
The following facts are alleged by the Respondent in the Response.
A.
The Disputed Domain Name is identical or confusingly similar to a trade
mark or service mark in which the Complainant has rights
The disputed domain name is not confusingly similar to the Trade Marks. The
Respondent has made no attempt at deception or in any way represented himself as the
Complainant. No consumer or customer would believe that the Complainant would
sponsor a site critical of itself, or actively support its customers’ claims of malfeasance.
The “sucks” mantra is itself protected under free speech and similar sites exist for many
other corporations and have been upheld as such.
The Complainant’s argument that a consumer may think the disputed domain name had
been registered by the Complainant for marketing purposes (as part of a “self-derision
strategy”) is absurd. The Website is meant to parody and criticise the character of the
Complainant’s business and could not in any way be interpreted as, or supported by, the
Complainant.
B.
The Respondent has no rights or legitimate interests in respect of the
Disputed Domain Name
There are a multitude of criticisms on the Website and the Respondent is operating the
Website as a legitimate protest site.
The Respondent does not recommend competitors of the Complainant on the Website.
Rather, the Respondent conducted a poll on the Website listing 5 well-known budget
airlines, including the Complainant, and asking visitors to the Website which of the
airlines “sucked the most”. A competitor of the Complainant, Ryanair, “won” the poll as
“the most hated airline in Europe”, with the Complainant “a narrow second”, by 4 votes.
Visitors to the Website “hated” Skyeurope and Easy Jet the least, but to say that the
Respondent recommended these airlines would be a stretch. The Respondent received
no money or compensation from any of the other airlines in any way.
The Respondent has never made any money from the operation of the Website. The
Respondent is not a company nor does he represent the interests of any others. The
Respondent does not agree with all of the postings on the Website. There are several
comments on the Website in favour of the Complainant.
Page 4
C.
The Disputed Domain Name was registered and is being used in bad faith
The Respondent did not receive the notice letter from the Complainant’s lawyers prior to
the filing of this Complaint. The Respondent’s contact details, including his email
address, are listed under the registration details for the disputed domain name. The
Respondent’s contact details are also firmly elucidated on the Website.
The disputed domain name was registered and the Website set up following the
Respondent’s bad experiences flying with the Complainant in Romania and in Germany.
The intention of the Website is to criticise the Complainant for its conduct, including its
failure to respond to the Respondent’s letters, and to create a support group for fellow
disgruntled customers of the Complainant.
The Respondent’s motives have never been for financial gain.
The Respondent has never attempted to solicit money from the sale of the disputed
domain name or any other, nor has the Respondent used advertising or keywords to
generate revenue from the Website.
The t-shirt shop on the Website was set up in humour and the Respondent has not sold
any t-shirts on the Website.
The Respondent asserts a legitimate interest in the disputed domain name and the legal
right to express his opinions and personal experiences, and collect those of others, on the
Website.
6.
Discussion and Findings
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must
satisfy the Panel that:
(i)
The domain name is identical with or confusingly similar to a trade mark or service
mark in which the Complainant has rights;
(ii)
The Respondent has no rights or legitimate interests in respect of the domain name;
and
(iii) The domain name has been registered and is being used in bad faith.
A.
Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Marks acquired through
registration and use.
The disputed domain name comprises the Trade Marks in its entirety. UDRP panels have
consistently held that a domain name is identical or confusingly similar to a trade mark
for purposes of the Policy “when the domain name includes the trade mark, or a
confusingly similar approximation, regardless of the other terms in the domain name”
(Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No.
D2000-0662).
It is established that, where a mark is the distinctive part of a domain name, the domain
name is considered to be confusingly similar to the registered mark (DHL Operations
Page 5
B.V. v. DHL Packers, WIPO Case No. D2008-1694).
Generally a user of a mark “may not avoid likely confusion by appropriating another’s
entire mark and adding descriptive or non-distinctive matter to it” (J. Thomas McCarthy,
McCarthy on Trade Marks and Unfair Competition (4th ed. 1998)), General Electric
Company v CPIC NET and Hussain Syed, WIPO Case No. D2001-0087), PCCW-HKT
DataCom Services Limited v Yingke, HKIAC Case No. 0500065).
It is also established that the addition of a generic term to the disputed domain name has
little, if any, effect on a determination of legal identity between the domain name and the
mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253).
Furthermore, mere addition of a generic or descriptive term does not exclude the
likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No.
D2006-0189). There have been numerous panel decisions in which it has been held that
the addition of derogatory terms does not affect a finding of confusing similarity for
purposes of the Policy (Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647).
This may even be the consensus view today (Société Air France v. Mark Allaye-Chan,
WIPO Case No. D2009-0327).
In any event, this Panel finds that the addition of the word “sucks” as a suffix in the
disputed domain name does little to distinguish the disputed domain name from the
Trade Marks, and that there is a clear likelihood of confusion between the disputed
domain name and the Trade Marks.
However, the Panel finds the Complainant’s suggestion that Internet users might think
the disputed domain name was registered by the Complainant itself as part of a
“self-derision” marketing strategy unlikely.
The Panel has no hesitation in finding that the disputed domain name is confusingly
similar to the Trade Marks.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a)
of the Policy.
B.
Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to
demonstrate that the Respondent has rights or legitimate interests in the disputed domain
name:
(i)
before any notice to the Respondent of the dispute, use of, or demonstrable
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; or
(ii)
the Respondent (as an individual, business, or other organization) has been
commonly known by the domain name, even if the Respondent has acquired no
trade mark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the domain
name, without intent for commercial gain, to misleadingly divert consumers or to
tarnish the trade mark or service mark at issue.
Page 6
The Panel finds no evidence that the disputed domain name has been used in respect of a
bona fide offering of goods or services, nor is there any evidence that the Respondent has
been commonly known by the disputed domain name.
The Complainant appears to have wholly missed the point of the Website in asserting that
“there is no evidence to support the conclusion that the disputed domain name was
registered for the purpose of a legitimate protest site”.
There is a divergence of opinion among panelists regarding “sucks” cases. This is
sometimes said to reflect differences in national laws relating to freedom of speech.
Cases involving US parties, US jurisdiction and/or US panelists have tended to support
the right to set up non-commercial websites which are critical of trade mark owners.
Such panel decisions sometimes refer to the constitutional right of US citizens to free
speech under the First Amendment to the US Constitution, and to the considerable body
of case law in the US Courts in which it has been held that setting up websites critical of
trade mark owners, even if designed to cause economic damage to trade mark owners, is
not a commercial use, and not therefore prohibited under the US Lanham Act.
Conversely, there have been several panel decisions often without a US connection in
which it has been held that use of trade marks in respect of websites set up for criticism of
trade mark owners does not amount to a legitimate non-commercial or fair use
(particularly where the domain name in question is identical to the complainant’s trade
mark).
In the present case, the Complainant is based in Hungary. The Respondent is a US
citizen and the disputed domain name has been registered with the US registrar,
GoDaddy.com, Inc. The mutual jurisdiction of the Complaint is US law.
Paragraph 15(a) of the Rules provides that:
“A Panel shall decide a complaint on the basis of the statements and
documents submitted and in accordance with the Policy, these Rules and any
principles of law that it deems applicable”.
The Panel agrees with the view expounded in several WIPO UDRP decisions that issues
arising under the Policy should not be decided on the basis of national law if the relevant
provision does not import or refer to national law (Fundación Calvin Ayre Foundation v.
Erik Deutsch, WIPO Case No. D2007-1947). Rather, issues should whenever possible
be determined having regard to general and globally accepted principles of law and any
applicable principles derived from some ten years of accumulated WIPO UDRP
decisions.
In accordance with paragraph 15(a) of the Rules, applying “the principles of law that it
deems applicable”, the Panel finds that the Respondent has established under paragraph
4(c)(iii) of the Policy that its registration and use of the disputed domain name in respect
of a website critical of the Complainant amounts to a legitimate non-commercial or fair
use of the domain name.
As regards commercial gain, the Panel does not find the contentions of the Respondent,
both in the Response and on the amended Website, that the promotion and sale of t-shirts
was merely humorous or a “joke” entirely convincing. Prior to receipt of the Complaint,
the Website was linked to a website offering for sale various “wizzairsucks” t-shirts,
mugs and badges. The wording on the Website including the following:
Page 7
“Support Wizzair: the Class Action Lawsuit (Coming Soon)…
Please support of (sic) efforts to the fill (sic) Wizzair Customer Service void
by buying something from our Store. Any money earned will go towards
advertising and legal purposes. We have a variety of Wizzair sucks
memorabilia…”
The Website has since been amended to remove this wording and the link to the online
“Store”.
The Panel finds the Respondent’s assertion that he “never sold a t-shirt” disingenuous
given the fact the “Store” appears to have been operated by a third party website
(“www.spreadshirt.net”). However, even if there have been any sales (which is denied
by the Respondent), it seems to the Panel likely that such sales would have been merely
ancillary to the main purpose of the Website in criticising the Complainant. It strikes the
Panel that the reference to a class action law suit is likely mere puffery in line with the
humorous nature of the Website. Even if the Website were to be used to support a class
action law suit, and if the Respondent and his fellow plaintiffs were to be successful, the
Panel considers the results of such a law suit would not amount to a “commercial” gain
per se within the meaning of the Policy
Having carefully reviewed the Website (in both its previous and current form), and in the
context of paragraph 4(c)(iii) of the Policy, the Panel therefore finds insufficient
evidence to suggest the Website has been used by the Respondent for commercial gain.
The Panel finds that the display of the “Worst Euro Budget Airline” poll results on the
Website does not amount to a recommendation per se by the Respondent to use
competitors of the Complainant, and even if it did, it may still not prove dispositive
unless the Respondent itself was a competitor of the Complainant.
The Panel finds no evidence to suggest the Respondent, in registering the disputed
domain name and setting up the Website, has misleadingly diverted consumers to the
Website.
Other than a bald assertion of tarnishment, the Complainant has not made any
submissions nor filed any evidence to suggest that the Website has been set up and used
in order to tarnish the Trade Marks. In any event, fair use criticism does not amount to
tarnishment and is not proscribed under the Policy (Howard Jarvis Taxpayers
Association v. Paul McCauley, WIPO Case No. D2004-0014).
For the foregoing reasons, the Panel finds that the Complainant has failed to prove that
the Respondent lacks rights or legitimate interests in the disputed domain name under
paragraph 4(c)(iii) of the Policy. Accordingly, the Complainant has failed to satisfy the
second limb under paragraph 4(a)(ii) of the Policy.
C.
Registered and Used in Bad Faith
Having found that the Complainant has failed to satisfy the second limb under the Policy,
the Panel need not consider whether the disputed domain name has been registered and
used in bad faith under the third limb of the Policy.
The Panel would however note that, contrary to the assertions of the Respondent, his
contact details do not appear to be accessible on the Website. Further, even though the
Respondent has provided his personal email address and postal address when registering
the disputed domain name, the Respondent chose to register under the name of “Beyond
Page 8
Convention” rather than in his own name, thereby causing confusion. This is however
somewhat counterbalanced by the failure of the Complainant’s representatives to send
their letter of complaint to the Respondent’s personal email address listed in the
registration details for the disputed domain name.
As a final observation, there is no evidence that the Respondent has registered any other
domain names comprising the Trade Marks, or has registered domain names comprising
any other person’s domain names in the past.
In any event, in all the circumstances, the Panel is of the opinion that the use of the
disputed domain name in respect of genuine and non-commercial criticism of the
Complainant does not amount to bad faith registration and use.
7.
Decision
For all the foregoing reasons, the Complaint is denied, and the Panel declines to order
transfer of the disputed domain name.
Sebastian Hughes
Sole Panelist
Dated: September 22, 2009
Page 9