Right to freedom of speech or mere free-riding

Recently, the WIPO Arbitration and Mediation Center has issued a domain name decision concerning the domain “sanofi.sucks” registered by Privacy Hero Inc. among other companies.

The domain was used for a blog in which third parties left comments and criticisms about the practices of the French pharmaceutical company SANOFI. It even contained links to other websites with the same purpose of leaving criticisms but directed at other companies.

In this situation, the pharmaceutical company SANOFI filed a complaint before WIPO alleging that the website http://sanofi.sucks represented an illegitimate use of its trademark. The complaint was based on the fact that the domain name diluted and tarnished the well-known SANOFI trademark and involved an economic advantage to the Respondent.

The Respondent alleged that it was exercising its right to freedom of speech and that there was no commercial purpose (fair use). Furthermore, it argued that “-sucks” was included at the end of the domain name, so no likelihood of confusion or association with the SANOFI trademark existed.

WIPO considered that the following facts were present in this case:

1) The domain name fully reproduced the SANOFI trademark.

2) The links to other sites increased the traffic to the website, which in turn increased the price of the domain name (during the proceedings the Respondent admitted its interest in selling the domain name).

Therefore, WIPO concluded that the Respondent’s practice was a pretext to create the impression that there was legitimacy in the registration and use of the domain name; however, the real purpose was to increase its sale price. Finally, WIPO determined that the Respondent was acting in bad faith.

This case is a good example of how parasitic practices can be hidden behind an apparent exercise of fundamental rights.

The decision can be found at the following link:

https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2020-2836

Written by Mercè hernández, Lawyer of CURELL SUÑOL SLP