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December 16, 2010 / Nate Harris

Is it Generic, or Does it Just Suck? A Plain Reading of Domain Names Under the UDRP

Bret Moore of udrp-attorney.com wrote a great post analyzing a recent WIPO decision that denied a complaint by Hoffman-La Roche (the owner of ACCUTANE) to transfer buygenericaccutane.org. Mr. Moore considers this a good decision, in that “buy generic” serves to differentiate ACCUTANE enough to avoid confusing similarity (not to mention identity). In other words, consumers will recognize that “generic Accutane” is different than (i.e., comes from a different source than) Accutane.

I see his point, but I don’t see how you can square this decisionwith the majority view in so-called “sucks” cases. As the WIPO Overview of WIPO Panel Views on Selected UDRP Questions explains it, there are many reasons why a negative term (such as “sucks”) paired with a trademark is not enough to disclaim an association with the mark:

Confusing similarity has been found because the domain name contains a trademark and a dictionary word; or because the disputed domain name is highly similar to the trademark; or because the domain name may not be recognized as negative; or because the domain name may be viewed by non-fluent English language speakers, who may not recognize the negative connotations of the word that is attached to the trademark.

If we’re operating under the assumption that consumers might think a trademark owner is saying their product sucks, then how can we turn around and say they’re sophisticated enough to understand the distinction between name brand and generic drugs?

I agree with Mr. Moore that a “plain reading” of the language of the domain name is useful in determining whether it is confusingly similar to a complainant’s trademark. However, the majority of Panels addressing the closely-related “sucks” cases have come out the other way. In the interest of (albeit informal) stare decisis, the two lines need to be harmonized.

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One Comment

  1. Bret Moore / Dec 16 2010 5:30 am

    Yeah, you nailed it, those positions are logically inconsistent. FWIW, I don’t think the “majority view” on sucks cases is correct.

    I think it’s time we (native English-speakers) recognize that most foreign countries probably speak better English than we do. People are perfectly capable of differentiating terms this way. In my mind, gripe sites seem to qualify for fair use – and they probably would in a trademark lawsuit, I think – so why is the UDRP arriving at a different result?

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