“Occupy” is the new “Sucks”
Friday, July 20th, 2012
The term “occupy” can be similar to “sucks” in a domain name — an indication of a gripe site.
The first element of the uniform domain name dispute resolution policy (UDRP) that a complainant must prove is that the domain name is identical or confusingly similar to a trademark in which the complainant has rights.
But what about when it comes to satirical or gripe sites?
Generally speaking, the first element of the policy can be overcome by the respondent if the domain name alone contains something that makes it clear that it’s not owned or operated by the complainant.
So if you owned CokeSucks.com, it’s pretty clear that any site attached to that isn’t owned by Coke.
But if you own CokeSite.com and had a gripe site on it, it’s not clear until you visit the site that it’s not owned by Coke.
The first domain should be considered not confusingly similar but the second would. (That’s not to say the second wouldn’t fail on another element.)
You can throw words like blows.com, losers.com, etc. in replacement to sucks.com as examples of words that would indicate the site isn’t run by the complainant.
Now you can add “occupy” to that list, at least according to one panelist.
Panelist Michael A. Albert just handed down a ruling in a case for occupychicagotribune.org and occupiedchicagotribune.org. He found that the domain names are not identical or confusingly similar to the Chicago Tribune mark:
Given the circumstances of this case and in particular the heavy and nearly universal coverage of the Occupy Movement within the national and local media, the Panel holds that the Occupy Movement is so well known within the relevant area (both parties being from Chicago, Illinois, in the United States) that the Domain Names are not confusingly similar to Complainant’s mark. The Panel agrees with Respondent’s assertion that no reasonable person in the Chicago area would confuse the Domain Names with Complainant or Complainant’s publication.