What do you do when someone registers the domain name [yourbrand]sucks.com? What should you have done before it got registered?
Apparently, more than 20,000 domain names take the form [yourbrand]sucks.com. Sometimes, the person that registers it is just after your money (and lots of it); sometimes, they have a very serious grievance with your company and they want to air all the dirty details out there in cyberspace.
When they’re just after lots of your money, WIPO’s Overview of WIPO Panel Views on Selected UDRP Questions indicates that a majority of panellists will probably find the name is confusingly similar to your domain name (but by no means all), but your chances on the other 2 requirements are very hard to predict. Compare para. 1.3 to 2.4.
In Australia, it is likely that a genuine gripe site won’t infringe your trade mark for the simple reason that the griper is not using your trade mark as a trade mark. (I’m not sure if it would fall within s 122(1)(b), but s 120 specifically requires use as a trade mark and the cases derived from Irving’s Yeastvite v Horsenail indicate that use to refer to the trade mark owner’s own product marked with the trade mark is not use as a trade mark). Of course, the griper might be engaging in defamation or slander of goods or something similar.
Now, Fairwinds Partners, who are Internet Strategy Consultants, have published a report via brandchannel (pdf) on this issue from a marketing perspective. The report looks at what’s happening including the clever, but nonetheless brave, strategy adopted by Loews to use the name to field and address their customers’ concerns.
Brave because there aren’t that many brand owners who are going to want to see that word “sucks” joined with their prized asset; clever because … well, they are doing what the customer wants in the main: finding out about the problem and dealing with it.