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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Full Sail, Inc. v. Ryan Spevack
Case No. D2003-0502
1. The Parties
The Complainant is Full Sail, Inc., Winter Park, Florida, United States of America, represented by Foley & Lardner, United States of America.
The Respondent is Ryan Spevack, represented by Law Offices of Stephen H. Sturgeon & Associates, United States of America.
2. The Domain Name and Registrar
The disputed domain name <fullsailsucks.com> ("the Domain Name") is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 25, 2003. On June 25, 2003, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On June 26, 2003, Go Daddy Software transmitted by email to the Center its verification response. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 proceedings commenced July 9, 2003. The Response was filed with the Center July 30, 2003.
The Center appointed Mark Partridge, Frederick M. Abbott and G. Gervaise Davis III as Panelists in this matter on August 27, 2003. The Panel finds that it was properly constituted. Each member of 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.
In addition, late submissions were received from both parties and considered by the Panel.
4. Factual Background
Complainant, Full Sail, Inc. is an accredited education institution providing instruction in the fields of film, entertainment and recording. It has been in business since 1979 and has operated a website at "www.fullsail.com" for a number of years.
Complainant owns Federal trademark registrations for the mark FULL SAIL, as well as several other trademark registrations for marks that included the words "Full Sail" with other matter. It appears that these registrations were originally obtained in the name of Complainant’s predecessor, Full Sail Recorders, Inc., and that the name was changed to Full Sail, Inc. in 2000.
Respondent registered the Domain Name on May 27, 2003. It appears that the initial registrant was Zero One Entertainment. The registrant subsequently was listed as "Shitty Schools Inc.". In each case the Administrative Contact is listed as Ryan Spevack, the named respondent in this action ("Respondent"). The Domain Name is used for a website that provides reviews and opinions about Complainant’s educational services.
The website included the following statement of purpose:
"Welcome to Full Sail Sucks.com. This website was started as an informational resource for students interested in attending Full Sail in Winter Park, Florida. This website hopes to present students with objective and unbiased reviews of the school in a concise manner so future students can make an educated decision before deciding to attend the school."
The website also included the following "special offer":
"$100 to anyone who takes a self picture of themselves in front of Full Sail with a sign that reads fullsailsucks.com! It will be posted on this site! Try and post flyers around campus to [sic]"
While many of the posted comments provide negative commentary about Complainant, some of the opinions posted are positive. Examples include: "‘I think Full Sail was the right choice for me and found it to be a very positive experience’; ‘In my opinion Full Sail is a great school’; ‘I think Full Sail has been worth the money’".
After this proceeding was filed, Complainant filed a civil action in Federal Court in Orlando, Florida, seeking damages and injunctive relief for tortious interference with plaintiff’s advantageous business relationships and dilution by tarnishment of its trademarks.
5. Parties’ Contentions
Complainant contends that the Domain Name is virtually identical or confusingly
similar to Complainant’s FULL SAIL mark, except for the addition of "sucks".
Complainant contends the Respondent lacks any legitimate interest in the Domain
Name and is using the Domain Name in bad faith because the Domain Name is used
for the purpose of disrupting Complainant’s business and diverting business
to other educational institutions.
Complainant contends that the Domain Name use is not justified by free speech
considerations because the website fails to provide objective comment and is
instead used to divert, disparage or tarnish Full Sail’s reputation.
Respondent contends that Complainant has failed to prove trademark rights in
the mark FULL SAIL because it does not appear to be the registrant of the trademark
registrations relied upon. Respondent also asserts that the Domain Name and
alleged trademark are not confusingly similar because "sucks" is recognized
as a distinguishing, pejorative term that would not be confused with the trademark
Respondent contends that Complainant has failed to prove that Respondent lacks
a legitimate interest in the use of the Domain Name for non-commercial commentary
Finally, Respondent contends that Complainant has failed to prove that the
Domain Name was registered and used in bad faith. More specifically, Respondent
denies any connection with any competitor of Complainant in regard to the operation
of the website.
6. Discussion and Findings
As mentioned above, the parties here are also engaged in federal court litigation
involving claims of tortious interference with business relationships and trademark
dilution by tarnishment. However, those claims are beyond the scope of this
proceeding. The only question before the Panel is whether the registration and
use of the Domain Name <fullsailsucks.com> is a violation of the Policy.
We reach a determination of that narrow issue based on the record before us.
In this case, we have received and considered supplemental filings by both parties.
To establish a violation of the Policy, the Complainant has the burden of establishing
each of the following three elements: (1) the Domain Name is identical to or
confusingly similar to a trademark in which the Complainant has rights; (2)
the Registrant lacks any right or legitimate interest in the Domain Name; and
(3) the Domain Name was registered and used in bad faith.
A. Confusing Similarity
Since the year 2000, there have been approximately 30 cases decided under the
Policy involving "-sucks.com" websites. Given the number of cases
involving analogous disputes, it seems useful to review the conclusions reached
by prior Panels, even though those decisions do not formally bind this Panel.
It seems that five different rationales have been expressed for finding that
the domain name with the "sucks" suffix were confusingly similar to
the complainant’s mark. The first of these approaches is simply to find that
a domain name is confusingly similar to a trademark "when the domain name
includes the trademark, 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; see also Kendall/Hunt Publishing Co. v. headhunterbob,
NAF Case No. FA0111000102247. The Wal-Mart panel stated that its decision was
based on its understanding that "the phrase ‘identical or confusingly similar’
[is] greater than the sum of its parts". The panel also noted that its
approach does not look at whether "the domain name causes confusion as
to source … but instead whether the mark and domain name, when directly compared,
have confusing similarity". While the panel noted that a "-sucks.com"
site could be used as for legitimate protest, it found that such sites would
be adequately protected by the legitimate interest and bad faith prongs of the
A second approach that is used by the panels is to say that the "-sucks.com"
domain name will lead to a diversion of customers because it will be pulled
up by search engine queries for the trademark. As one panel stated, "Respondent’s
domain names are sufficiently similar to Complainant’s mark … that Internet
search engine results will list Respondent’s domain names and websites when
searching Complainant’s mark". Wal-Mart Stores, Inc. v. Walsucks and
Walmarket Puerto Rico, WIPO Case No. D2000-0477.
While the panel noted that Internet users are unlikely to believe that the trademark
holder actually sponsors the sites, the panel found it likely that potential
customers would visit the sites "if only to satisfy their curiosity".
This would allow the Respondent to accomplish "his objective of diverting
potential customers of Complainant to his websites by the use of domain names
that are similar to Complainant’s trademark".
The third commonly cited rationale for a finding of confusing similarity is
that the "-sucks.com" sites may be mistaken for the trademark holder’s
official complaint site. In support of this rationale, the panels generally
pose the following question: "Given the apparent mushrooming of complaint
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
Complainant’s?" Direct Line Group Ltd, Direct Line Insurance plc, Direct
Line Financial Services Ltd, Direct Line Life Insurance Company Ltd, Direct
Line Unit Trusts Ltd, Direct Line Group Services Ltd, v. Purge I.T., Purge I.T.
Ltd, WIPO Case No. D2000-0583. The
panels have noted that the most striking element of these domain names is the
Complainant’s mark, which could lead people to believe that the Complainant
sponsors the site.
A fourth rationale used by the panels is that non-English speakers may not
be familiar with the pejorative nature of the word "sucks." As this
rationale goes, those Internet users that are not familiar with the slang word
"sucks" may not be able "to give it any very definite meaning
and will be confused about the potential association with the Complainants".
ADT Services AG v. ADTSucks.com, WIPO
Case No. D2001-0213. Thus, such users may "believe that any name using
the world-famous mark is associated with the Complainant".
Finally, some panels (although not very many) have noted that in certain situations
the word "sucks" may not be used in the pejorative sense. As one panel
noted, the word "sucks" can be used "purely descriptively, as
in the advertising slogan ‘Nothing sucks like Electrolux.’". Vivendi
Universal v. Jay David Sallen and GO247.com, Inc., WIPO
Case No. D2001-1121. For example, the domain name <electoluxsucks.com>
"would be unlikely to be taken as unaffiliated with the company Electrolux".
The panel used this example to point out merely that appending the word "sucks"
to a mark does not necessarily mean that a trademark holder has nothing to do
with the website.
In a minority of decisions, those that find that the domain name should not
be transferred, most panels rely on the lack of confusing similarity between
the trademark and the domain name in finding that there need not be a transfer.
Generally, the panel will simply note that both "common sense and a reading
of the plain language of the Policy support the view that a domain name combining
the trademark with the word "sucks" or other language clearly indicating
that the domain name is not affiliated with the trademark owner cannot be considered
confusingly similar to the trademark". Lockheed Martin Corporation v.
Dan Parisi, WIPO Case No. D2000-1015.
These panels see it as basically a per se rule that "-sucks.com"
websites cannot be confusingly similar to a trademark.
In addition, one panel has noted that the rationale underlying the finding
of confusing similarity in many of the cases where the domain name is transferred,
namely that non-English speakers do not understand the pejorative nature of
the word "sucks", should not necessarily apply in all cases. In Asda
Group Ltd. v. Paul Kilgour, WIPO Case
No. D2002-0857, the panel noted that the Complainant’s website was entirely
in English, and was "devoted essentially to a UK orientated business".
As such, the panel did not put much stock in the possibility of confusion about
the meaning of "sucks", since "Internet users unfamiliar with
the English language, yet aware of the existence of Asda are unlikely to exist
in significant numbers". Thus, the panel felt that for businesses that
do not target foreign customers, the non-English speaker rationale is not very
In the case before us, it appears that the Complainant has rights in the FULL
SAIL trademark. The Domain Name at issue is clearly used in a pejorative sense
and is directed to a U.S. audience likely to recognize the pejorative connotation.
Nevertheless, Complainant has placed in the record evidence to suggest that
the Domain Name may create some confusion due to prominent placement of the
Domain Name when using search engines to locate information about Complainant.
Because of our findings on the other necessary elements, it is not necessary
for us to reach a conclusion as to whether or not this is sufficient to satisfy
the first element of Complainant’s claim.
B. Legitimate Interests and Bad Faith
While the Policy separates out the issues of legitimate interest and bad faith,
and the panels often consider the issues separately, the rationales underlying
the decisions on the two prongs are frequently quite similar. Thus, both issues
will be considered together here to avoid unnecessary duplication. That being
said, there are several common rationales used to find a lack of legitimate
interest and bad faith in "-sucks.com" cases, the majority of which
deal with the use of the site for the economic benefit of the Respondent.
The most commonly cited rationale is that the Respondent has registered the
site primarily for the purpose of selling it to the Complainant (or a third
party) at a substantial profit. For example, in Direct Line Group v. Purge
I.T., WIPO Case No. D2000-0583, the
Respondent claimed to have registered the domain name <directlinesucks.com>
so as to protect Direct Line from having the site fall into the hands of critics
of the company who might set up a protest site. The Respondent then offered
to sell the site to Direct Line for the sum of Ј5,000. The panel did not find
the claimed altruistic intentions to be credible, and found that the Respondent
registered the name primarily for the purpose of selling it to Complainant for
an amount in excess of the costs of registering the name, which is one way of
showing bad faith under Paragraph 4(b)(i) of the Rules.
In cases where there is no explicit evidence that a domain name is officially
for sale, some panels have found that the passive holding of a domain name may
give rise to an inference that the Respondent registered the site for the purpose
of sale. In Vivendi Universal v. Jay David Sallen, WIPO
Case No. D2001-1121, the panel stated that "mere passive holding of
a domain name can qualify as bad faith if the domain name owner’s conduct creates
the impression that the name is for sale." Thus, the fact that the owner
of <vivendisucks.com> responded to Complainant’s cease and desist letters
by saying that he did not have time to deal with their request at the moment
because he was too busy trying "to make a living", was taken as evidence
that the Respondent was willing to sell the domain name.
In addition to the fact that the Respondent may be either actively or passively
offering the domain name for sale, many panels point to the fact that a Respondent
has posted embarrassing or offensive material on the site in order to force
the Complainant to make the purchase, as evidence of bad faith. For example,
in Stop & Shop Supermarket Co. v. Ian Anderson, NAF Case No. FA0211000133637,
the Respondent, a former employee of Stop & Shop, posted confidential information
on his site, "www.stopandshopsucks.com", which advised the public
on the best ways to steal from the Complainant’s stores. The website also made
"false and defamatory statements about the employees of Complainant".
The panel found bad faith from the fact that the Respondent designed the website
"to be as offensive as possible in an attempt to coerce Complainant into
purchasing the domain name".
Another rationale for a finding of bad faith or no legitimate interest is that
the Respondent uses the "-sucks.com" site in order to direct traffic
to other commercial sites. For example, in ADT Services AG v. ADTSucks.com,
WIPO Case No. D2001-0213, the Respondent
used the "www.adtsucks.com" website, along with several other similar
sites, to divert traffic to his own "www.erealestate.com" site, which
provided links to several other commercial and pornographic websites. This practice
falls within the definition of bad faith in Paragraph 4(b)(iv) of the Rules,
and as the panel noted, the mere "fact that Internet users are diverted
to the Respondent’s sites is evidence of bad faith".
Some panels have found bad faith when the "-sucks.com" domain name
was registered by a competitor of the Complainant in order to draw away business.
In BRIO Corp. v. Spruce Caboose, NAF Case No. FA0205000114419, the Respondent
registered <brio-sucks.com> and several other similar domain names, and
used them to link to another of Respondent’s sites, which was then linked to
Respondent’s "www.sprucecaboose.com" website, which sold products
that directly competed with the complainant. The panel found that this behavior
constituted "an opportunistic attempt to trade on the goodwill of the BRIO
mark", and therefore was evidence of bad faith registration and use.
A final rationale for finding bad faith is that the Respondent registered the
domain name in response to some action taken by the Complainant. In Diageo
v. John Zuccarini, WIPO Case No. D2000-0996,
the Respondent registered several variations of the domain name <guinness-sucks.com>
after the Complainant initiated an UDRP proceeding to have the Respondent’s
domain name <guinnes.com> transferred. The panel found that Respondent
had no legitimate interest in the domain names and had registered them in bad
faith because the domain names were registered "with the intention of harassing
the Complainant for its attempts to enforce its trademark rights and to tarnish
the Guinness trademark."
In contrast to those cases finding bad faith are decisions finding that the
Respondent has a legitimate interest in the Domain Name. In Bloomberg L.P.
v. Secaucus Group, NAF Case No. FA0104000097077, the panel found that Respondent’s
website, "www.michaelbloombergsucks.com", was confusingly similar
to the Complainant’s trademark. However, the panel noted that the Respondent’s
website directed users to the site "www.sucks.com", which was a legitimate
protest site that provided a forum for criticism of a number of U.S. companies.
Thus, the panel found that when the Respondent’s site is a legitimate criticism
site, "the rights of the registrant have been uniformly upheld as a reasonable
exercise of free speech rights, as well as a fair use of the person’s or company’s
Federal Court decisions involving similar domain names are also instructive.
Recently, In Taubman v. Webfeats, 319 F.3d 770 (6th Cir. 2003),
the Court held that the inclusion of the suffix "sucks.com" for a
protest site was a protected speech, even if there was economic damage, stating:
"We find that Mishkoff’s use of Taubman’s mark in the domain name <taubmansucks.com>
is purely an exhibition of Free Speech, and the Lanham Act is not invoked. And
although economic damage might be an intended effect of Mishkoff’s expression,
the First Amendment protects critical commentary when there is no confusion
as to source, even when it involves the criticism of a business. Such use is
not subject to scrutiny under the Lanham Act."
"Hence, as per the language of the Lanham Act, any expression embodying
the use of a mark not ‘in connection with the sale . . . or advertising of any
goods or services,’ and not likely to cause confusion, is outside the jurisdiction
of the Lanham Act and necessarily protected by the First Amendment."
We conclude, based on the evidence before us, that the Complainant has failed
to meet its burden of proving bad faith registration and use. The website appears
to be a legitimate protest site, used to inform current and potential students
about Complainant’s school. The website primarily contains negative and positive
reviews and opinions about the school, ostensibly from current or former students.
The site does not appear to be commercial in nature since it does not offer
or propose the sale of any goods or services to visitors of the site. Although
Complainant alleges that Respondent is using the website for the express purpose
of diverting prospective and current students to a competing enterprise for
commercial gain, there is insufficient evidence on the record before the Panel
to support such a conclusion.
There is no indication here that the Domain Name was registered and used with
the intent to sell the Domain Name for profit. Similarly, there is no indication
that the Registrant engages in a pattern of unfair conduct to prevent others
registering domain names that correspond to their trademarks.
Complainant argues that the site is commercial in effect because it discourages
persons from using Complainant’s services. That, however, is not sufficient
to constitute bad faith use for the reasons noted in the Taubman decision.
Such criticism is allowed under U.S. law and therefore is not a basis alone
for finding bad faith use.
Complainant contends that the Domain Name should be considered bad faith use
because it seems to be connected with a competitive school. While a competitor’s
use of a Domain Name for a site to disparage a competitor might be viewed as
bad faith commercial use, Complainant has failed to prove that the Domain Name
is registered and used by a competitor to disrupt Complainant’s business. Although
Respondent seems evasive on this point and has not fully explained his intent
in operating the site, there is insufficient evidence to find for Complainant
on this point.
Finally, the fact that Respondent has succeeded in obtaining a prominent position
in search engine results does not provide an independent basis for a finding
of bad faith.
In summary, the evidence indicates that the Domain Name is used for a non-commercial
commentary about Complainant’s business, and the allegations of bad faith are
not supported by sufficient evidence to support a finding in Complainant’s favor
on bad faith. In reaching, this conclusion we again note that our inquiry is
limited in scope and is based on a limited record.
For all the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
G. Gervaise Davis III
Dated: October 3, 2003