Vulgarity Saves Domain Name
I am old enough to remember when “computerized” legal research was a new thing. We had one terminal at the law firm where I first started practicing dedicated to us whippersnappers who preferred not to lug the heavy volumes off the shelves. And I worked with a guy who enjoyed putting dirty words into the search, just to see how many times courts actually had to deal with whatever four letter word popped into his mind. Was it childish? Yes. Was it distracting? Of course. Did it inevitably keep us occupied for long stretches at a time? Sadly, yes.
And so, I came upon a recent UDRP arbitration decision which denied an effort by Calvin Klein to shut down a Web site using that the domain name f*$kcalvinklein.com. Because this is a family friendly blog, we edited the domain name. The original does not incorporate the * or the $.
ICANN – the Internet Corporation for Assigned Names and Numbers – provides an arbitration service under the Uniform Domain-Name Dispute-Resolution Policy (“UDRP”). Folks who think their legitimate domain names are being used in bad faith by another party can bring the dispute to an arbitrator and receive a decision that will require the user to transfer the name, or allow its continued use. I’ve represented clients in dozens of these things, and it is really efficient.
Very simply, the arbitrator needs to decide two issues – is the offending domain name confusingly similar and was it registered in bad faith? If the complaining party establishes both, the domain name get transferred. If the complaining party fails to establish one or the other element, the offending party can continue using the name.
So in Calvin Klein’s case, the arbitrator found that the domain name wasn’t confusingly similar “because the message conveyed by the vulgarity “f*$k” in the disputed domain name makes it clear that there is no association with Complainant.” The arbitrator cited as precedent previous decisions which ruled that adding the word “sucks” to the end of a trademark in a domain name made the offending domain not confusingly similar. And once it found no similarity, the arbitrator didn’t have to rule on the bad faith issue.
My old colleague would have loved this one.