The Internet is replete with gripes, complaints, accusations and grievances directed toward corporations. Such negative opinions are usually posted by unhappy customers, disgruntled former employees or other discontented individuals who feel somehow wronged by the particular corporation. A nominal fee and simple registration procedure will confer upon the cybergriper the domain name (the unique on-line identifier of a Web site, e.g., sgrlaw.com) of his/her choice, which is generally identical to the corporation's trademark.
The Internet is replete with gripes, complaints, accusations and grievances directed toward corporations. Such negative opinions are usually posted by unhappy customers, disgruntled former employees or other discontented individuals who feel somehow wronged by the particular corporation. The Internet provides an open and public forum for voicing these opinions in newsgroups, blogs and other interactive Web sites. With increasing frequency, proactive critics are also creating dedicated gripe sites to attack targeted corporations. A nominal fee and simple registration procedure will confer upon the cybergriper the domain name (the unique on-line identifier of a Web site, e.g., sgrlaw.com) of his/her choice, which is generally identical to the corporation’s trademark, a slight variation on the corporation’s trademark or the corporation’s trademark suffixed with a pejorative term such as “sucks” or “blows.”
Forbes.com recently published a list of the top nine1 corporate gripe sites, based on criteria such as hostility level (the angrier the better) and frequency of updates. The list included the following domain names: KBHomeSucks.com, PayPalSucks.com, AllstateInsuranceSucks.com, MS-Eradication.org (offered by The Microsoft Eradication Society), ameXsuX.com, Walmart-Blows.com, Verizonpathetic.com, Untied.com (targeting United Airlines) and UnitedPackageSmashers.com (targeting United Parcel Service).2
A corporation targeted by such gripe sites clearly has a cause for concern from a public relations standpoint, and may also have a cause of action for the unauthorized use of its trademark in a domain name under the Lanham Act, which contains the federal statutes on trademark law. The cybergripers, on the other hand, may seek to invoke First Amendment protection for their choice of domain name and their negative gripe site content.
Bally Total Fitness brought one of the first gripe site lawsuits in 1998 against a disgruntled customer who created a gripe site at compupix.com/ballysucks.3 The domain name in this case was “compupix.com,” and the post-domain path was “ballysucks.” A post-domain path indicates how sub-domains and Web pages are stored on the host computer and need not be unique across domains (i.e., whereas there may be only one registered “compupix.com” domain, any number of domains on the Web may have a “ballysucks” post-domain path). The gripe site prominently displayed Bally’s name and logo and was dedicated to criticizing Bally’s services. The court ruled that the gripe site was “a consumer commentary” whose content was a form of noncommercial expression protected by the First Amendment. That “Bally” was used as part of the post-domain path rather than in the site’s domain name factored into the court’s decision in favor of the cybergriper.
A plaintiff corporation must establish that any expression embodying the use of its trademark by the cybergriper is commercial speech in order to bring the claim within the jurisdiction of the Lanham Act.
More recently, the court in Taubman Co. v. Webfeats4 found that “the domain name is a type of public expression, no different in scope than a billboard or a pulpit, and [the defendant] has a First Amendment right to express his opinion about [the plaintiff], and as long as his speech is not commercially misleading, the Lanham Act cannot be summoned to prevent it.”
Because First Amendment law allows commercial speech to be regulated in ways that would be impermissible if applied to noncommercial expressions, a plaintiff corporation must first establish as a threshold matter that any expression embodying the use of its trademark by the cybergriper is commercial speech in order to bring the claim within the jurisdiction of the Lanham Act.
The basic focus of trademark protection is preventing the use of identical or similar marks in a way that confuses the public about the source of goods and services. The owner of a registered trademark may bring suit against a cybergriper for infringement of the mark under 15 U.S.C. §§ 1114 and 1125(a). The touchstone of a trademark infringement claim is the likelihood of consumer confusion caused by the unauthorized use of the mark. As mentioned above, however, a court will analyze a defendant’s use of a trademark for likelihood of confusion only if it first finds the use to be commercial.
Under the Lanham Act, any person who “use[s] in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive” may be held liable for such use.5
“Commercial Use” Requirement. In Planned Parenthood Federation of America v. Bucci,6 Planned Parenthood brought an action against an anti-abortion activist who registered and maintained an anti-choice Web site at plannedparenthood.com. The court found the “commercial use” requirement of the Lanham Act was satisfied in three ways: (1) the defendant’s Web site promoted the sale of his anti-abortion book; (2) the Web site communicated that abortion was morally wrong, which constituted an informational service; and (3) the defendant’s use of the mark would prevent some users from reaching Planned Parenthood’s own Web site at ppfa.org, thereby constituting interference “in connection with” the plaintiff’s distribution of services. The court thus entered a preliminary injunction enjoining the defendant from using the PLANNED PARENTHOOD mark, or any colorable imitation thereof, to identify his Web site.
A corporation targeted by a gripe site may have a cause of action under the Lanham Act.
The court in Jews for Jesus v. Brodsky7 applied analogous reasoning to find the “commercial use” requirement satisfied by a Web site with the domain name jewsforjesus.org, which was nearly identical to the plaintiff organization Jews for Jesus’ Web site’s domain name, jews-for-jesus.org, and which promoted views antithetical to those espoused by the plaintiff organization. The court held that the defendant’s conduct met the Lanham Act’s jurisdictional prerequisite of acting “in connection with” goods or services because the defendant’s Web site provided a single hyperlink to another Web site that sold merchandise such as audiotapes and books, and because the use of the JEWS FOR JESUS mark in the domain name was likely to prevent consumers from accessing the plaintiff’s own Web site.
Similarly, in PETA v. Doughney,8 the court found that the defendant’s unauthorized use of the PETA mark in his registered domain name peta.org — a site that featured materials on eating meat, wearing fur and leather, and hunting — was “in connection with” goods and services because the use could intercept consumer attempts to access the Web site of the animal rights organization People for the Ethical Treatment of Animals, commonly referred to as “PETA.”
Some courts have declined to find commercial use under the Planned Parenthood reasoning, and thus have refused to find that the offending site gives rise to a cause of action under the Lanham Act. For example, in Taubman, the Sixth Circuit refused to hold that an unauthorized use of a protected mark in conjunction with a cybergriping site is a commercial use and “in connection with the sale of goods,” or to hold that providing information on a Web site constituted a service under 35 U.S.C. § 1114. Similarly, in Bosley Medical Institute, Inc. v. Kremer,9 the court found that the defendant’s gripe site, which contained links to a discussion group, which in turn contained advertising, was not commercial.
Likelihood of Confusion Standard. Each of the Planned Parenthood, Jews for Jesus and PETA cases involved Web sites with domain names identical to, or nearly identical to, the plaintiff organization’s trademark but with content disparaging of the viewpoint of the plaintiff organization. Relying primarily on the identical-domain-name factor, the court in each of these cases found that a likelihood of consumer confusion existed regarding the source of the defendant’s Web site. For example, the Planned Parenthood court analyzed the domain name independently from the Web site content and held that the defendant had employed the domain name as a confusing and misleading source identifier, rejecting the defendant’s argument that the domain name was part of a communication protected by the First Amendment.
By contrast, in Lamparello v. Falwell,10 decided in August 2005, the United States Court of Appeals for the Fourth Circuit looked beyond the defendant’s domain name, fallwell.com, which was virtually identical to the plaintiff’s mark, FALWELL, and considered the content of the defendant’s Web site to find no likelihood of confusion. The court reasoned, “After even a quick glance at the content of the website … no one seeking Reverend Falwell’s guidance would be misled by the domain name — www.fallwell.com — into believing Reverend Falwell authorized the content of that website.”
Relying primarily on the identical-domain-name factor, the court in each case found that a likelihood of consumer confusion existed regarding the source of the defendant’s Web site.
Indeed, even an identical domain name is not dispositive on the likelihood of confusion issue. In Nissan Motor Co. v. Nissan Computer Corp., the Ninth Circuit held that, while automobile advertising on defendant Nissan Computer’s nissan.com Web site caused consumer confusion as a matter of law, the plaintiff carmaker was not entitled to injunctive relief as to non-automobile advertising on the Web site. Nor was the carmaker entitled to an injunction prohibiting the defendant’s use of the domain name nissan.com. Today, Internet users can follow the ongoing litigation in the case on the very Web site at issue: nissan.com.
Pejorative domain names, on the other hand, generally are not considered by courts to have a likelihood of confusing the consumer. Lucent Technologies, Inc. v. Lucentsucks.com11 and Taubman established a bright-line rule that domain names with “sucks” and other pejorative suffixes cannot be confusingly similar to the target trademark. The court in Lucent found that the defendant had argued “persuasively that the average consumer would not confuse lucentsucks.com with a web site sponsored by plaintiff.” Similarly, in Taubman, the court found that the use of that critical pejorative term “removes any confusion as to source.”
Thus, while a claim of trademark infringement would have a chance of success where the Web site has a commercial use and the domain name is identical to the target trademark, trademark owners are unlikely to prevail in court against noncommercial gripe sites with pejorative domain names that do not cause consumer confusion.
In 1996, Congress amended Section 43 of the Lanham Act to provide a remedy for the dilution of a famous mark: the Federal Trademark Dilution Act (FTDA).12 The FTDA provides that “[t]he owner of a famous mark shall be entitled, subject to the principles of equity and upon such terms as the court deems reasonable, to an injunction against another person’s commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark. …” With the FTDA, the Lanham Act now protects against consumer confusion as to source as well as against trademark dilution by providing injunctive relief if a famous trademark is commercially used in commerce in such a way as to dilute the mark’s distinctive quality. Two types of dilution traditionally have been recognized: blurring and tarnishment. Blurring occurs when a particular use of a mark weakens that mark’s ability to serve as a unique source identifier. Tarnishment occurs when a famous mark is improperly associated with an inferior or offensive product or service. In addition to the FTDA’s jurisdictional “commercial use in commerce” requirement, the statute also contains an additional express exemption for “noncommercial use of a mark.”
Commercial Use and Famousness Requirements. In order to prevail on a claim for trademark dilution, a plaintiff must first establish “commercial use in commerce” of its trademark, roughly analogous to the commercial use requirement for trademark infringement discussed above. This precondition, as in the case of infringement, puts most cybergriping sites out of reach of the FTDA. If a plaintiff is able to establish commercial use, then the other primary requirement for invoking liability under the FTDA is that the mark be famous. However, this requirement may be even more difficult to establish than the likelihood of confusion: “[B]ecause protection afforded a mark under the FTDA is much broader than that under a likelihood of confusion standard, the class of marks entitled to protection under the FTDA is limited to highly distinctive, famous trademarks which the public recognizes as signifying something unique, singular, or particular.”13 Congress established a list of eight factors to be considered in determining whether a mark is distinctive and famous, including “the degree of inherent or acquired distinctiveness of the mark”; “the duration and extent of use of the mark in connection with the goods or services with which the mark is used”; “the duration and extent of advertising and publicity of the mark”; and “the geographical extent of the trading area in which the mark is used.” In consideration of these factors, the marks AOL for Internet services,14 BARBIE for dolls,15 FORD for motor vehicles,16 and POLO for wearing apparel17 have been held to be famous. By contrast, the marks CLUE for board games,18 TREK for bicycles,19 WE for magazines20 and WE’LL PICK YOU UP for auto rental services21 were held not to qualify as famous.
Should your corporation find itself the target of a gripe site that does not clearly infringe upon or dilute the corporation’s trademark in violation of the Lanham Act, the following strategies for combating the offending cybergriper, and preventing future cybergripers, are nevertheless available:
– Consult your attorney about bringing an administrative action against the cybergriper under the Uniform Domain Name Dispute Resolution Policy (UDRP). The UDRP provides for an expedited administrative procedure for clear cases of abusive registrations and use of domain names (e.g., cybersquatting). All accredited registrars in the .biz, .com, .info, .name, .net and .org top-level domains must agree to abide by decisions rendered under the UDRP.
– Consult your attorney about writing a letter to the cybergriper warning that legal action may be taken should the cybergriper further infringe upon or dilute your company’s trademark.
– Create a rebuttal Web site to the gripe site (for example, in response to Walmart-Blows.com, Wal-Mart set up a rebuttal Web site at Walmartfacts.com).
– Monitor known gripe sites for commercial use, which may then give rise to a Lanham Act action.
– Use a trademark-watching service to receive notifications of new gripe sites.
– Preemptively register common pejorative domain names.
While it may be impossible to prevent the creation of all corporate gripe sites, by being mindful of the above tips, companies can limit potential damage caused by cybergripers.
The authors would like to thank Weilyn Pa for her assistance in the preparation of this article.
- There were 10 sites cited by Forbes.com, but the tenth was inactivated, for reasons unknown, before the Forbes.com article was published. ↩
- Charles Wolrich, Top Corporate Hate Websites, Forbes.com, March 8, 2005, at http://forbes.com/2005/03/07/cx_cw_0308hate_print.htm (last visited July 28, 2005). ↩
- 29 F. Supp. 2d 1161 (C.D. Cal. 1998). ↩
- 319 F.3d 770, 778 (6th Cir. 2003). ↩
- 15 U.S.C. § 1114(1)(a) (emphasis supplied). ↩
- No. 97 Civ. 0629 (KMW), 1997 WL 133313 (S.D.N.Y. March 24, 1997), aff’d 152 F.3d 920 (2d Cir. 1998). ↩
- 993 F. Supp. 282 (D.N.J. 1998). ↩
- 113 F. Supp. 2d 915 (E.D. Va. 2000), aff’d 263 F.3d 359 (4th Cir. 2001). ↩
- 403 F.3d 672 (9th Cir. 2005). ↩
- 420 F.3d 309 (4th Cir. 2005). ↩
- 95 F. Supp. 2d 528 (E.D. Va. 2000). ↩
- See 15 U.S.C. § 1125(c). ↩
- Blossom Lefcourt, The Prosecution of Cybergripers Under the Lanham Act, 3
CARDOZO PUB. L. POL’Y & ETHICS 269, 290 (2004) (quoting 2002 Federal Trademark Dilution Act: Hearing Before the Subcomm. on Courts, the Internet and Intellectual Property of the House Comm. on the Judiciary, 107th Cong. 26 (2002) (statement of Ethan Horwitz, Partner, Darby & Darby, P.C.)). ↩
- America Online, Inc. v. IMS, 24 F. Supp. 2d 548 (E.D. Va. 1998). ↩
- Mattel Inc. v. Jcom Inc., 48 U.S.P.Q.2d 1467 (S.D.N.Y. 1998). ↩
- Ford Motor Co. v. Lloyd Design Corp., 184 F. Supp. 2d 665 (E.D. Mich. 2002). ↩
- Polo Ralph Lauren L.P. v. Schuman, 46 U.S.P.Q.2d 1046 (S.D. Tex. 1998). ↩
- Hasbro, Inc. v. Clue Computing, Inc., 232 F.3d 1 (1st Cir. 2000). ↩
- Thane Int’l, Inc. v. Trek Bicycle Corp., 305 F.3d 894 (9th Cir. 2002). ↩
- WE Media, Inc. v. General Elec. Co., 218 F. Supp. 2d 463 (S.D.N.Y. 2002), aff’d, 94 Fed. App’x 29 (2nd Cir. 2004). ↩
- Advantage Rent-A-Car, Inc. v. Enterprise Rent-A-Car, Co., 238 F.3d 378 (5th Cir. 2001). ↩