When two or more fundamental rights or freedoms conflict, the principle of proportionality applies. Intellectual property rights may have a tumultuous relationship with some other rights or freedoms of their rank. Disputes relating to domain names are strongly imbued with such conflicts. The opposition between trademark rights and freedom of expression is one of them.
Less than a year after the entry into force of the principles governing the out-of-court settlement of disputes relating to domain names (Uniform Domain Name Dispute Resolution Policy or UDRP), Walmart had to face domain names reproducing its brand associated with the word “sucks”, such as walmartcanadasucks.com or wallmartcanadasucks.com (respectively WIPO, D2000-0477, Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, July 20, 2000, transfer and WIPO, D2000-1104, Wal-Mart Stores, Inc. v. Wallmartcanadasucks.com and Kenneth J. Harvey, November 23, 2000, transfer).
1. Everything.sucks: a description
Since then, this method has been used on numerous occasions, in good faith or bad faith, to the extent that a Canadian company named, not to say self-proclaimed, Vox Populi Registry, Inc., acquired the top-level domain .SUCKS. At the heart of the debate is Pat Honey Salt, a company which would have its head office in the Turks and Caicos Islands (recognized as a tax haven), which raises transparency concerns. Pat Honey Salt registered numerous .STUCKS domains. These domain names include, among others, tedbaker.sucks, uniroyal.sucks, eleclerc.sucks, mandmdirect.sucks, bforbank.sucks, statoil.sucks, sanofi.sucks, bouygues.sucks, bureauveritas.sucks, trivago.sucks, tetrapak.sucks, lockheedmartins.sucks, cargotech.sucks or mirapex.sucks, all of which have been the subject of UDRP procedures. Pat Honey Salt, Inc. is also the owner of many other domain names such as louisvuitton.sucks or disney.sucks.
This company ensures that it is making these domain names available to a non-profit organization called Everything.sucks, Inc., the purpose of which would be to offer the public a multitude of micro-websites on which anyone could pour out the hatred he feels at a particular brand. At least, it is surprising that this non-governmental organization, supposedly a philanthropist, did not question its benefactress, whose head office appears to be incorporated in a tax haven.
Each micro-site is made up of several sections. Steadfastly, it displays a list of hostile, anonymous, and undated comments allegedly made by customers, employees, or former employees. In some cases, this micro-site may also have a “Social Media” section. These comments, imported from third-party sites (such as Glassdoor, Indeed, or Trustpilot), are invariably antagonistic. It is also very likely that the consent of the authors and editors of the source sites was not adequately obtained (WIPO, D2021-0796, Equinor ASA v. Redacted for Privacy, Privacy Hero Inc. / Pat Honey Salt, Honey Salt ltd, May 17, 2021, statoil.sucks, transfer). In addition, each micro-site includes a division composed of hypertext links whose titles are identical to other brands. Finally, each site displays a box offering, to whoever wishes, the possibility of obtaining the corresponding domain name, free of charge.
Altruistic or greedy? The method has been the subject of numerous UDRP proceedings.
As a result of these decisions, the business model adopted by Pat Honey Salt and Everything.sucks violates the contractual provisions governing the registration of .SUCKS domain names. According to the case law, it is contrary to UDRP principles (2).
In addition, it should be added that the means employed violate the registration agreement as it should emerge from the registry agreement between ICANN and the Vox Populi Registry, Inc. (3).
2. The violation of UDRP principles
Case law based on the use of the .SUCKS gTLD by Everything.sucks and Pat Honey Salt holds that the exercise of freedom of expression is not genuine, which excludes any legitimate interest (2.1). The facts reveal greed (2.2). The effect generated by the micro-sites’ configuration can be considered a denigration operation (2.3). Finally, freedom of expression, which is not absolute, cannot be used as a pretext to conceal greedy intent (2.4).
2.1. Not genuine, not legitimate
Disputes relating to .SUCKS domain names are governed by the UDRP principles. By virtue of these principles, the onus is on the complainant to prove that the domain name holder has no right or legitimate interest over the disputed domain name and acted in bad faith. Regarding legitimate interest, the defense of the domain name holder inevitably relies on freedom of expression. However, extrajudicial case law is clear:
“2.6.1 To support fair use under UDRP paragraph 4(c)(iii), the respondent’s criticism must be genuine and noncommercial; in a number of UDRP decisions where a respondent argues that its domain name is being used for free speech purposes the panel has found this to be primarily a pretext for cybersquatting, commercial activity, or tarnishment” (WIPO Jurisprudential Overview 3.0., para. 2.6.1.).
The notions of honesty and rectitude are inseparable from those of loyalty and transparency. Here, there are reasons to doubt the honesty of the domain names holder and the publisher of the micro-sites. Honesty can only be sought in the parties involved and not in an intermediary such as the holder of the domain name, who is external to the relationship that gave rise to the criticism. Consequently, the domain name holder is, de facto, unable to provide genuine information or assessment. As a result, Pat Honey Salt and Everything.sucks does not exercise their freedom of expression (see e.g. WIPO, D2020-2517, Compagnie Générale des Établissements Michelin and MC PROJECTS BV Maastricht v. Pat Honey Salt, Honey Salt Limited, March 12, 2021, bfgoodrich.sucks and uniroyal.sucks, transfer; WIPO, D2020-3398, Tetra Laval Holdings & Finance SA v. Privacy Hero Inc / Pat Honeysalt, Honey Salt Ltd., March 9, 2021, tetrapak.sucks, transfer).
In addition, nothing guarantees the accuracy and integrity of the data collected until such data has been verified and certified by a trusted third party. Indeed, these micro-sites deliver anonymous, undated, and unreferenced information so that the reader ignores the source. In this regard, some panelists even doubt the existence of these comments, which could have been generated through software (WIPO, D2021-0186, Association des Centers Distributors E. Leclerc – ACD Lec. V. . Privacy Hero Inc. / Honey Salt ltd, Pat Honeysalt, April 16, 2021, eleclerc.sucks, transfer). However, in all likelihood, this data is imported from third-party sites. Some third-party decision-makers, based on the investigative power conferred on them by the UDRP procedural rules, discovered that the information provided came from third-party sites (WIPO, D2020-2545, M and M Direct Limited v. Pat. Honey Salt, Honey Salt Limited, May 13, 2021, mandmdirect.sucks, transfer). In the same vein, comments imported to Everything.sucks had been published in 2012 and 2013, several years before the registration of the disputed domain name and the creation of the micro-site (WIPO, D2020-2545, M and M Direct Limited v. Pat Honey Salt, Honey Salt Limited, May 13, 2021, mandmdirect.sucks, transfer). In any case, whether human hands wrote them or whether an algorithm generated them, these comments do not come from the domain name holder, which is enough to rule out the holder’s legitimate interest in the domain name. In short, the lack of legitimacy echoes the lack of honesty, loyalty, and transparency.
Moreover, the process of restricting the importation of data to the most unfavorable comments violates the transparency requirement, which is fundamental for a respectable debate. “The one who lies and the one who hides the truth are both guilty: one, because he does not want to be useful; the other because he seeks to harm”. By choosing to publish only the most hostile comments, the domain name holder and the publisher are deliberately providing incomplete information, taken out of context (WIPO, D2021-0769, Bureau Veritas v. Pat Honey Salt, Honey Salt Ltd, May 5, 2021, bureauveritas.sucks, transfer) and therefore misleading. Note that the misleading nature also stems from the fact that the comments were not posted directly on the micro-site (ibid.). In other words, each micro-site gives the public a misleading impression.
2.2. Bait of gain
Each micro-site has a section that includes an authentication code intended to facilitate the transfer of the domain name to anyone interested and free of charge. Well-inspired third-party decision-makers took part in the game. Having followed the procedure indicated by Everything.sucks and the registrars concerned, they were able to certify that the domain names in question could indeed be transferred, not for free, but for several thousand dollars (WIPO, D2020-2545, M and M Direct Limited v. Pat Honey Salt, Honey Salt Limited, May 13, 2021, mandmdirect.sucks, transfer). In other cases, it could be established that the disputed domain name was for sale (WIPO, D2020-3398, Tetra Laval Holdings & Finance SA v. Privacy Hero Inc / Pat Honeysalt, Honey Salt Ltd., March 9 , 2021, tetrapak.sucks, transfer).
Several panelists criticized the holder of the Everything.sucks’ domain names for inserting a section with numerous hyperlinks named after brand names, many of which are well-known. Indeed, the method is questionable since it seems that its only function is to generate traffic (see for example: WIPO, D2020-2517, Compagnie Générale des Établissements Michelin and MC PROJECTS BV Maastricht v. Pat. Honey Salt, Honey Salt Limited, March 12, 2021, bfgoodrich.sucks and uniroyal.sucks, transfer; WIPO, D2021-0769, Bureau Veritas v. Pat Honey Salt, Honey Salt Ltd, May 5, 2021, bureauveritas.sucks, transfer).
2.3. Denigration
Beyond the misleading nature of the information published on the disputed micro-sites, the intention to harm resulting from the choice to publish only comments hostile to the trademark should also be taken into consideration. The intent to harm is so unambiguous that freedom of expression cannot seriously be claimed. On the contrary, these means amount to publicly discrediting a multitude of brands, thus constituting a vast operation of denigration. The fact of discrediting a brand does not and should not confer any legitimate right (WIPO, D2010-0547, Wine & Spirit Education Trust (WSET) v. Domains by Proxy, Inc / Larry Johnson, July 30, 2010, no-wset-wine-course.com, transfer). Discrediting is an act of bad faith justifying the transfer of the domain name (WIPO, D2011-0907, We Buy Any Car Limited v. Roger Masih, July 7, 2011, webuyanycarforcashtoday.com, webuyanycarnostress. com, webuyanycarrightnow.com, webuyanycarscam.com and webuyanycarstoday.com, transfer). Also, it is worth recalling that many States’ laws and case law consider denigration as a tort.
2.4. Freedom of expression as a pretext for concealing greedy intent
The .SUCKS gTLD is intrinsically linked to the exercise of freedom of expression. However, the country in which freedom of expression would be absolute does not exist. Therefore, the use of .SUCKS domain names is naturally bounded by the same boundaries as those which limit the exercise of freedom of expression. Hence, choosing domain names with the .SUCKS gTLD does not authorize the publication of any information and especially not misleading information. In this case, Pat Honey Salt and the so-called NGO Everything.sucks have deployed a business model which, in reality, is only a fallacious pretext (see for example: WIPO, D2020-2517, Compagnie Générale des Établissements Michelin and MC PROJECTS B.V Maastricht v. Pat Honey Salt, Honey Salt Limited, March 12, 2021, bfgoodrich.sucks and uniroyal.sucks, transfer ; WIPO, D2021-0186, Association des Centres Distributeurs E. Leclerc – A.C.D. Lec. v. Privacy Hero Inc. / Honey Salt ltd, Pat Honeysalt, April 16, 2021, eleclerc.sucks, transfer ; WIPO, D2020-2545, M and M Direct Limited v. Pat Honey Salt, Honey Salt Limited, May 13, 2021, mandmdirect.sucks, transfer ; WIPO, D2021-0765, BforBank v. Privacy Hero Inc. / Pat Honey Salt, Honey Salt ltd, May 5, 2021, bforbank.sucks, transfer ; WIPO, D2021-0796, Equinor ASA v. Redacted for Privacy, Privacy Hero Inc. / Pat Honey Salt, Honey Salt ltd, May 17, 2021, statoil.sucks, transfer ; WIPO, D2020-2836, Sanofi v. Privacy Hero Inc. / Honey Salt ltd, pat honey salt, February 11, 2021, sanofi.sucks, transfer ; WIPO, D2020-2517, Compagnie Générale des Établissements Michelin and MC PROJECTS B.V Maastricht v. Pat Honey Salt, Honey Salt Limited, March 12, 2021, uniroyal.sucks, transfer) in an attempt to legitimize one of the largest known cybersquatting operations. The absence of legitimate interest is striking, just as much as bad faith. Accordingly, the transfer of such domain names is inevitable. Obviously, given the number of UDRP decisions ordering the transfer of the disputed domain names, panelists now consider that Pat Honey Salt has adopted a pattern of conduct that has led to a series of abuses. which in itself constitutes an indication of bad faith (e.g. WIPO, D2020-2517, Compagnie Générale des Établissements Michelin and MC PROJECTS B.V Maastricht v. Pat Honey Salt, Honey Salt Limited, March 12, 2021, bfgoodrich.sucks and uniroyal.sucks, transfer ; WIPO, D2021-0186, Association des Centres Distributeurs E. Leclerc – A.C.D. Lec. v. Privacy Hero Inc. / Honey Salt ltd, Pat Honeysalt, April 16, 2021, eleclerc.sucks, transfer).
3. A system contrary to the registry agreement
The registry agreement between the Internet Corporation for Assigned Names and Numbers (ICANN) and Vox Populi Registry, Inc. obliges the latter to impose on registrars a clause according to which holders of .SUCKS domain names undertake not to use them to promote “fraudulent or deceptive practices” (.SUCKS Registry Agreement, Specification 11, Art. 3.a and 3.e). Given the deliberately misleading nature of the Everything.sucks sites, it seems possible to argue that the holder of these domain names is violating the conditions of the registration contract. As a result, such domain names could be subject to suspension or even cancellation. In the event that the breach occurs upstream, particularly in the contractual relationship between ICANN and the registry, a PICDRP (Public Interest Commitment Dispute Resolution Process: icann.org) could be considered.
