FirstMerit Corporation of Akron, Ohio, sent its lawyers – guns blazing – after the owner of a protest site, operating from firstmeritsucks.com.
Typically, domain names that belong in the “sucks” category are treated as vehicles of free speech.
Most UDRP cases involving “sucks” domains that have been decided on behalf of the Complainant, involved the non-use of the domain.
Protest sites can make fair use of existing trademarks.
In the case of firstmeritsucks.com, there is an active web site that in part states the following:
“I’m looking to bring a Class Action Lawsuit against FirstMerit Bank, First Merit, FirstMerit Corporation, and/or it’s holdings for the way they handle OverDraft Fees on their “Free” checking accounts.”
In his response, the Respondent expressed his rights to freedom of speech, as follows:
“Respondent indicates that both Parties are located in the state of Ohio, and Respondent is using the Domain Name to exercise his rights of free speech, enshrined in the First Amendment to the United States Constitution. Respondent argues that Complainant is attempting to use this case to accomplish what it could never accomplish in a United States court, namely, to silence Respondent.”
The WIPO panel agreed that the Complainant’s trademark has been infringed in this case, however, it stated no fewer than 6 reasons why the Respondent has legitimate rights in the domain:
- The Domain Name does not consist purely of Complainant’s FIRSTMERIT trademark or, even, Complainant’s trademark plus an anodyne descriptive term; rather, it includes the derogatory term “sucks”, thereby signaling its likely purpose.
- There is no evidence that Respondent has derived any commercial advantage from the website linked to the Domain Name.
- There is no evidence that the website reflects anything other than Respondent’s genuine views, albeit views that are challenged by Complainant.
- The evidence suggests, on the balance of the probabilities, that the Domain Name was registered and is being used by Respondent genuinely for the purposes he has described.
- It is clear to Internet users visiting the website linked to the Domain Name that it is not operated by Complainant.
- Respondent has refrained from registering other domain names reasonably suitable for Complainant’s use.
Eventually, the Panel decided that the domain firstmeritsucks.com should remain with the Respondent. For the full text of the UDRP, click here.
