Gripe Sites Pit Trademark Rights versus Free Speech

Companies have become increasingly aggressive in opting to sue domain name owners who include their company name or other trademark in the url. According to USA Today and the National Law Journal there are currently 12 "gripe site" cases pending in courts around the country.

These cases pit trademark rights verus free speech and could potentially require Supreme Court intervention dependent upon their outcome in each jurisdiciton, i think its important that we take a look back at how some previous cases have resolved in both the courts and through WIPO domain name arbitration.

Continue reading "Gripe Sites Pit Trademark Rights versus Free Speech"

In one such case, a WIPO ICANN UDRP panelist transferred natwestbanksucks.com to the Natwest Bank despited that the site was used as a criticism site. The panelist ruled that other domains could be registered to engage in criticism and that a disclaimer on the site served "little or no purpose."

In a case where you'd expect a similar outcome, it was the exact opposite result. In this case, trademark owner filed a UDRP complaint and the respondent failed to answer. WIPO issues a certification of default, right? Wrong. A panel determined that Asda Group Limited (UK) could not stop a disgruntled former employee from using asdasucks.net despite the fact that they never responded to the complaint. The panel found that the domain name "contained a selection of material directed at the management of the Complainant, which can only sensibly be described as scandalously and disgustingly abusive," was not confusingly similar to the "asda" trademark.

In another domain name arbitration case of interest, Dustin Diamond aka Screech from Saved by the Bell, lost dustindiamond.com to a parodist where the panel held that . . . . .

The last case is more in line with recent decisions from the 5th and 6th Circuit where the Courts have held that non-commercial sites commenting or complaining are protected; see:

In Taubman v. Webfeats, the Sixth Circuit held that defendant's registration of gripe sites incorporating plaintiff's trademarks into the domain names (shopsatwillowbendsucks.com; theshopsatwillowbendsucks.com; willowbendmallsucks.com; and willowbendsucks.com) was protected by the First Amendment: although economic damage might [result], the First Amendment protects critical commentary when there is no confusion as to source, even when it involves the criticism of a business...as long as his speech is not commercially misleading, the Lanham Act cannot be summoned to prevent it.

In Lucas Nursery & landscaping v. Grosse, (Mar 5, 2004) the 6th Cir. held that a domain name registrant of the domain name "lucasnursery.com", who used the site to detail her complaints against plaintiff, did not violate the Anticybersquatting Consumer Protection Act because plaintiff did not prove bad faith, multiple sites were not registered and because the practice of informing fellow consumers of one's experience with a particular service provider is not inconsistent with the ACPA's main objectives.Previously, in Taubman v. Webfeats, the 6th Circuit held that the registration of several gripe sites incorporating plaintiff's trademarks into the domain names was protected by the First Amendment. I know that these cases may seem bad for business owners, especially ones who may be slow in registering their domain names, but it seems to me that the 6th Circuit is clearly getting these cases right.

TMI Inc. v. Maxwell, (5th Cir. 2004) Non-commercial gripe site (no bad faith intent to profit) did not violate the anti-dilution or the ACPA or the Texas Anti-Dilution statute.

Cf. In J.K. Harris v. Taxes.com (ND Cal), defendant was not proscribed from using its competitors' trademark in a nominative manner to criticize the competitor where the defendant had gathered the facts and declared them to be factually correct.

Related Articles: Trademark versus Free Speech / Young Cybersquatter's Handbook

see also British Meat Commission Gets Cooked: "In a UDRP decision released by WIPO November 4, Britain's Meat and Livestock Commission failed in its case against the operator of a protest website critical of the British meat industry. WIPO Panelist Jonathan Turner found that registrant David Pearce had rights and legitimate interests in using BritishMeat.com and BritishMeat.org in connection with a non-commercial website critical of BRITISH MEAT."

[thanks to Enrico Schaefer for the NLJ link]

Help support TechLawadvisor!