Purge IT registered names including DirectLineSucks.com, DixonsSucks.com, FreeserveSucks.com and NatwestSucks.com. The company registered the dot.com names of 18 well-known UK businesses with the addition of “sucks” in May 1999.
In the cases before WIPO, the major companies asserted that the name with the “sucks” extension was “identical or confusingly similar” to their trade marks, that Purge IT had no legitimate interest in the names, and that the names were registered in bad faith and for financial gain because Purge IT was trying to sell them to the trade mark owners – the practice known as cybersquatting.
Purge IT denied acting in bad faith and said the domain names had not been used. Although “under construction” sites exist, Purge IT said it presumed that these were created by the ISP. The company said that the names were not intended to form web sites and that they only intended to transfer the names to the trade mark owners, to “protect” these companies from anyone seeking to host complaints against them. Purge IT also argued that mere registration cannot amount to use.
In considering whether the trade marks were infringed, the panel felt that the addition of “sucks” would be interpreted in different ways by different people. Some would dissociate it from the proper company; but others would be confused about the potential association with the company. Accordingly, the panel felt that the major companies had rights in the “sucks” names.
The panel also felt that by offering the names for sale at a premium to the major companies involved, Panel IT’s argument that it was protecting against the names falling into the wrong hands, failed. In fact, Purge IT wanted a “five figure sum” transferred to a charity of Direct Line’s choice. When Direct Line contacted Purge IT in response to the demand, a person at the company allegedly suggested that a payment of £5,000 directly to Purge IT would be adequate alternative compensation. Accordingly, the WIPO Panel found that Purge IT had registered the names for profit and in bad faith, and it said that according to the rules, this was sufficient for a finding of both “registration and use” of the name in bad faith.
Similarly, Purge IT sought a premium on the transfer of DixonsSucks.com and others.