"This Panel’s view is that it is not helpful to characterize 'sucks' as a generic term in the same way earlier cases have held 'buy-', 'cheap-', '-online' and numerous similar terms to be non-distinctive," said the ruling. "The virtually universal finding of confusing similarity in those cases is based on the primacy accorded to a complainant’s (usually well known) trademark over added matter of no source distinguishing value."
Instead of treating the 'sucks' part of the name as generic and therefore declaring the domain
name 'confusingly similar' to Red Bull's trade mark, the panel followed the guidance of a
previous case in which that rule was defined more broadly.
"The Panel understands the phrase 'identical or confusingly similar' to be greater than the sum of its parts," said the panellist in that previous case, which involved shop chain Wal-Mart and Richard MacLeod. "The Policy was adopted to prevent the extortionate behavior commonly known as 'cybersquatting', in which parties registered domain names in which major trademark owners had a particular interest in order to extort money from those trademark owners. This describes Respondent’s behavior," it said.
"Thus, the Panel concludes that a domain name is 'identical or confusingly similar' to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name. In other words, the issue under the first factor is not whether the domain name causes confusion as to source (a factor more appropriately considered in connection with the legitimacy of interest and bad faith factors), but instead whether the mark and domain name, when directly compared, have confusing similarity," said that ruling.
Instead of treating the 'sucks' part of the name as generic and therefore declaring the domain
name 'confusingly similar' to Red Bull's trade mark, the panel followed the guidance of a
previous case in which that rule was defined more broadly.
"The Panel understands the phrase 'identical or confusingly similar' to be greater than the sum of its parts," said the panellist in that previous case, which involved shop chain Wal-Mart and Richard MacLeod. "The Policy was adopted to prevent the extortionate behavior commonly known as 'cybersquatting', in which parties registered domain names in which major trademark owners had a particular interest in order to extort money from those trademark owners. This describes Respondent’s behavior," it said.
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