Disguising the sale of brand-identical domain names as freedom of speech sucks
In a decision of a 3-members panel from the WIPO arbitration center, Honey Salt Ltd. Have suffered another defeat in a case involving a .sucks domain, this time against the French multinational Sanofi, represented by Selarl Marchais & Associés.
Honey Salt Ltd. is behind the registration of several domains consisting in [trademark].sucks. It claims to register and hold domain names for the benefit of the non-profit organization Everything.sucks Inc. “which provides an open forum for the public to discuss complaints about anything with which they might find fault”. In practice, (often negatve) reviews on companies are published by anonymous sources, telling why this specific company and/or brand “sucks”. According to the Respondent contentions, the creation of specific pages on the website everything.sucks by its users may trigger the registration of a corresponding domain name pointing to said page.
The Respondent went as far as referring to the First Amendement of the United States Constitution and Article 10 of the European Convention for the Protection of Human Rights and Fundamental Freedoms, arguing in detail on the disputed domain name sanofi.sucks being a platform for freedom of speech and genuine criticism.
However, this defence strategy did not convince the WIPO Panel, in light of the UDRP. The most damaging fact for the Respondent was that the disputed domain name, identical to a world-famous trademark, had been offered for sale, in parallel of being used for a “criticism site”. After noticing that the Respondent was not exercising itself the free-speech rights it was referring to, the Panel also expressed reservations towards the lack of justification from the Respondent when the genuineness of the negative comments showcased on the website was challenged by the Complainant.
It is hard not to presume, after yet another positive outcome for the trademark holders, that the main business of Honey Salt Ltd. is actually to register domain names identical to well-known trademarks and sell them to Trademark owners behind the façade of Freedom of speech, acting as a deterrent towards trademark owners considering UDRP complaints. The
In the case of sanofi.sucks, the Panel ends its findings by mentioning “the pattern of abusive registrations in which the Respondent has been involved”. Indeed, to this day, several UDRP decisions in favor of the Trademark owners have been published on domain names such as bioderma.sucks (CAC, UDRP 103142, NAOS v. Honey Salt Ltd., 2020-08-26, transfert), cargotec.sucks (CAC, UDRP 103423, Cargotec Oyj v. Honey Salt ltd, 2021-02-19, transfert) and lockheedmartin.sucks (Forum, FA1710001751762, Lockheed Martin Corporation v. Sam Kadosh, November 2, 2017, transfert).
While it is true that UDRP complaints come at a cost, at IP TWINS we are convinced that not endorsing domain-name registration practices targeting trademark owners for commercial gain is more beneficial in the long run. IP TWINS and its experienced team of dedicated account managers is at your disposal to assist you in the search, watch and actions towards domain names registrations targeting your brand.
Source : WIPO, D2020-2836, Sanofi v. Privacy Hero Inc. / Honey Salt ltd, pat honey salt, February 11, 2021, <sanofi.sucks>, transfer, panel: Assen Alexiev (pres.), Jonathan Agmon and Douglas M. Isenberg).