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October 19, 2010 / Nate Harris

HBT Investments v. Bussing

Summary of HBT Investments, LLC d/b/a Valley Goldmine v. Christopher T. Bussing
(WIPO Case No. D2010-1326)

Filed: August 5, 2010; Decided: September 24, 2010 (Panelist: Maxim H. Waldbaum)

Disputed domain name: <valleygoldminesucks.com>

valleygoldminesucks.com

valleygoldminesucks.com

The Parties

Complainant HBT Investments, LLC d/b/a Valley Goldmine (“Valley Goldmine”) of Phoenix, Arizona has a business of exchanging gold into cash through locations in Arizona and five other states.Valley Goldmine owns a trademark registration for the mark VALLEY GOLDMINE and began using the mark in early 2008.

Respondent Christopher D. Bussing is the principal owner of GSFC, LLC d/b/a Gold Stash for Cash (“Gold Stash”), which is a direct competitor of Valley Goldmine and also based in “metropolitan” Phoenix. [Is Phoenix a metropolis? I’ve never been.]

In 2009, a local news channel ran a hidden camera investigative piece in which they brought gold to various gold exchangers (including the parties here) to see what offers they could solicit. According to the report, Valley Goldmine offered the most, while Gold Stash offered a much lower amount.

Mr. Bussing’s spouse then apparently posted a series of accusatory comments about Valley Goldmine on the news channel’s website. Shortly thereafter, she used a proxy domain registrant to register the disputed domain, which points to a blog containing posts that accuse the news channel and Valley Goldmine of collusive, dishonest, and unethical behavior.

Valley Goldmine brought a defamation suit against the then-unknown owner of the disputed domain, which allowed it subpoena the proxy domain registrant’s records and identify Mr. Bussing as the owner. This complaint was filed shortly thereafter, and the case is still pending.

Procedural Issues

Paragraph 18(a) of the Rules allow the Panel to suspend or terminate the proceeding in its discretion where the disputed domain is the subject of other legal proceedings. However, neither party has requested that the proceedings be suspended or terminated. Therefore, they are not.

Identity or Confusing Similarity

The disputed domain name incorporates Valley Goldmine’s mark, and adds the term “sucks.” In the Panel’s view, the disputed domain was registered with the specific intent that it be confusingly similar to Valley Goldmine’s mark. Thus, this prong is satisfied.

Rights or Legitimate Interests

Panels have long held the view that the right to express one’s views is not the same as the right to use another’s trademark as the platform for expression. See Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case No. D2000-0299. This is particularly the case where the website at the Disputed Domain Name is operated by a direct competitor of complainant, as is the case here. Although cloaked in the mantle of a gripe site, Respondent’s website is quite clearly a platform for Respondent to cast aspersions on the reliability of a report that portrayed his company in a negative light and his competitor in a positive light, and to otherwise sling mud.

Bad Faith

The Panel finds that Gold Stash intentionally registered the disputed domain name for the purpose of disrupting Valley Goldmine’s business, not for the “legitimate free speech purpose” claimed by Gold Stash. The Panel notes that Gold Stash intentionally concealed its identity on the site, posing instead as a concerned citizen. Further, Gold Rush performed search engine optimization in order to rank high in Google searches for “Valley Goldmine.” Accordingly, Gold Stash registered the disputed domain in bad faith.

Decision

The Panel orders that the disputed domain name be transferred to Valley Goldmine.

Commentary

This is largely a run-of-the-mill “sucks” case (yes, it’s a recognized genre), but it got me thinking: is it the purpose of the site or the content of the site that should be relevant in cases like this? The Panel’s focus is clearly on the fact that the complainant and the respondent are competitors. But does the respondent’s identity change the free speech analysis? In other words, could a “sucks” site run by a competitor nonetheless be a “legitimate noncommercial or fair use” of the mark under Paragraph 4(c)(iii) of the Policy? The answer is no, at least as Paragraph 4(c)(iii) is currently written:

you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

“Misleadingly divert[ing] consumers” is clearly problematic, but if you are raising legitimate questions about your competitor’s business, should it matter whether your intent is to tarnish their mark?

A more pedestrian question is why this domain was transferred rather than cancelled. I doubt Valley Goldmine will be using it.

Epilogue

<valleygoldminesucks.com> still points to the “sucks” site.

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3 Comments

  1. Julia Mathis / Oct 19 2010 2:06 pm

    “if you are raising legitimate questions about your competitor’s business, should it matter whether your intent is to tarnish their mark?”

    As a competitor you certainly may have other motivations in raising legitimate questions about your competitor’s business. However, you are not likely to do it by creating a website using your competitor’s mark plus a “sucks” attached.

    For example, as an organic farmer in Massachusetts you start a website because you are concerned about a competing farm’s falsely advertised organic farming practices. Let’s call the competitor Stony Brook Farms. If your intent is legitimate you are likely to register “concerned-organic-farmers.com.” But if you intent to attack a specific mark you’re more likely to name it “stonybrookfarmsucks.com.”

  2. Michael / Oct 19 2010 3:45 pm

    Iniially, on first reading the headline, I thought this was an aberration of a case, but, in fact, it seems to align with cases that allow consumers to express opinions, but not to allow others to use the mark to their commercial advantage. A particularly good analysis is done by the Panel in Mercury Radio Arts, Inc. v. Eiland-Hall, WIPO Case No. D2009-1182 (the Glenn Beck case). The Panel there stated, “When confronted with domain names incorporating well-known marks appended with additional pejorative terms, panelists assessing confusing similarity under the Policy typically prefer to assess the legitimacy of the registration under the criteria of rights or legitimate interests, or bad faith, rather than under the criterion of confusing similarity.” The Panel then went on to find bad faith, as many other cases have, but refused to transfer the domain name because the Registrant/Respondent did not make commercial use of the domain, as required for the domain to be transferred. To put Mercury Radio Arts into a similar factual situation as the instant case, we’d need to say that, for example, without putting it on the Website, MSNBC created the Website to direct people away from watching Glenn Beck and to instead watch their competing news commentary programs. If that were true, MSNBC would be making commercial use of the domain, and I believe the Panel would have transferred in that case.

    Yes, subjective intent is relevant, and should be relevant.

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