“PROTEST” DOMAIN NAMES AND SITES
IVAN HOFFMAN, B.A., J.D.
“Sucks” and similar terms that might be deemed “protest” sites present legal issues under the Uniform Domain Name Dispute Resolution Policy (“UDRP). Overall, the legal resolution of these issues turns on whether or not, in the opinion of the Panel, the domain is identical or confusingly similar to that of a trademark or rights in trademark owned by a claimant and whether or not, by the nature of the site and the conduct of the registrant, the registrant can claim to have “legitimate interests” in the domain because of the “protest” nature of the site. (Read “Legitimate Interests in Domain Name Disputes.”) In addition to those issues is the question of the intent of the registrant. (Read “Motivation and Intention in UDRP Actions.”)
There are many cases dealing with this topic but I believe at least some of the issues presented can be discussed within the parameters of a few such cases.
The Wal Mart Cases
In one of the earlier cases dealing with these issues, Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, Case No. D2000-0477 the domains in dispute were “walmartcanadasucks.com”, “wal-martcanadasucks.com”, “walmartuksucks.com”, “walmartpuertorico.com” and “walmartpuertoricosucks.com.” There were many issues in this decision including those involving an earlier and related case but I wish to focus on the issues related to the claim made by the registrant of the domains that such domains were protected as an act of free speech and thus the domains were not “identical or confusingly similar” to the acknowledged trademark rights of the complainant in “Wal-Mart.” Thus, this article deals only with domains involving the additional language “sucks.”
The Panel reviewed the above “protest” sites and stated:
The Respondent stated its position in regard to the within issues as follows:Respondent has not established websites at the addresses identified by the domain names “wal-martcanadasucks.com”, “walmartpuertorico.com” and “walmartpuertoricosucks.com”.
The “walmartcanadasucks.com” and “walmartuksucks.com” web pages each state that “This is a freedom of information site set up for dissatisfied Walmart Canada [or UK, respectively] customers.” Each site invites visitors to “Spill Your Guts” with a “horror story relating to your dealings with Wal-Mart Canada [or UK, respectively]”. On the “walmartcanadasucks.com” website, Respondent has posted “Wal-Mart Horror Story #1” which recounts his version of events in respect to the “walmartcanada.com” domain name. Each website posts a photograph of Respondent, labeled “President”, and Respondent’s biography. Each “Spill Your Guts” page indicates “If we feel your story is interesting, it might be included in award-winning author Kenneth J. Harvey’s forthcoming book – ‘Wal-MartCanadaSucks.com’ [or, on UK page, ‘about Walmart’]”.
The Panel stated in part:As with WALMARTCANADASUCKS.COM, WALMARTCANADASUCKS.COM, WALMARTUKSUCKS.COM and WALMARTPUERTORICOSUCKS.COM, the use of the SUCKS.COM suffix attached to a company name has become a standard formula for Internet sites protesting the business practices of a company. For instance, the use of WALMARTCANADASUCKS.COM would, in no way, be confused as a site run by Wal-Mart.
The Panel then analyzed, in traditional trademark law terms, the questions about whether or not the domains in issue were confusingly similar to the “Wal-Mart” trademark. The Panel stated in part:Respondent has appended the term “-sucks” to domain names that are, in the absence of that term, confusingly similar to Complainant’s mark. The addition of the pejorative verb “sucks” is tantamount to creating the phrase “Wal-Mart Canada sucks” (and comparable phrases with Respondent’s other “-sucks” formative domain names). The elimination of the spacing between the terms of the phrase is dictated by technical factors, and by the common practice of domain name registrants. The addition of a common or generic term following a trademark does not create a new or different mark in which Respondent has rights.
The Panel stated further, quoting from another case:The question whether a domain name and a trademark are confusingly similar involves the application of a multifactored test exemplified in the decision of the U.S. Court of Appeals for the Ninth Circuit in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979). The Sleekcraft factors are directed to whether there is a “likelihood of confusion” between two marks. While developed in the context of comparing two trademarks, the Sleekcraft factors have more recently been employed by the federal courts to compare domain names to trademarks, and domain names to domain names. The Sleekcraft factors were, for example, employed by the federal district court in Bally Total Fitness discussed infra. The Sleekcraft factors were relied upon by the Court of Appeals for the Ninth Circuit in Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036, 1053-61 (9th Cir. 1999).
In Sleekcraft, the Court of Appeals for the Ninth Circuit enumerated eight factors to be weighed on the question of likelihood of confusion. These are: (1) strength of the mark; (2) proximity of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be exercised by the purchaser; (7) defendant’s intent in selecting the mark; and (8) likelihood of expansion of the product lines [fn].
The Panel stated Respondent’s position as follows:We thus turn to intent. “The law has long been established that if an infringer ‘adopts his designation with the intent of deriving benefit from the reputation of the trade-mark or trade name, its intent may be sufficient to justify the inference that there are confusing similarities.’” Pacific Telesis v. International Telesis Comms., 994 F.2d 1364, 1369 (9th Cir. 1993) (quoting Restatement of Torts, § 729, Comment on Clause (b)f (1938)). An inference of confusion has similarly been deemed appropriate where a mark is adopted with the intent to deceive the public. See Gallo, 967 F.2d at 1293 (citing Sleekcraft, 599 F.2d at 354).…
The Panel rejected this argument as applied to the facts of this case. It stated, in part:Respondent argues that addition of the word “sucks” to the base names “walmartcanada”, “wal-martcanada”, “walmartuk” and “walmartpuertorico” causes such names to lose their confusing similarity with Complainant’s “Wal-Mart” trademark. Respondent contends that because an Internet user or consumer viewing a “-sucks” formative domain name would assume that Complainant is not the sponsor of or associated with a website identified by such address, Respondent’s “-sucks” formative marks cannot be confusingly similar to Complainant’s mark.
In support of this argument, Respondent refers to Lucent Technologies, Inc., v. Lucentsucks.com, 95 F. Supp. 2d 528 (E.D.Vir. 2000). It is first important to note that the observations made by Judge Brinkema in the Lucentsucks.com opinion regarding the issue of confusing similarity are in the nature of dicta, since the court dismissed the action against defendant for lack of jurisdiction 10. Judge Brinkema’s opinion in Lucentsucks.com, and one decision on which she relies, Bally Total Fitness v. Faber, 29 F. Supp. 2d 1161 (C.D. Cal. 1998), each lend some support to Respondent’s position. However, both cases are distinguishable. [emphasis added. See discussion below]
It stated further:Respondent has in his own words characterized himself as a “domain name consultant” who is acting in Complainant’s interests, and who is seeking compensation for “the pivotal role [he has] played in protecting Wal-Mart from future difficulties”. In his own words, he registered “walmartcanadasucks.com” and “other names that [he] presently holds” to “intentionally highlight[ed] the fact that Wal-Mart does not hold rights to basic Internet domain names that other large corporations have purchased (in their names) years ago”. Subsequent to the initiation of this proceeding – and subsequent to his claimed development of the “walmartcanadasucks.com” website – he has demanded payment for “consulting services” from Complainant.
By his own words, Respondent established the “walmartcanadasucks.com” website for a commercial purpose: to demonstrate to Complainant that it was not adequately protecting its trademark interests. He registered the other names he holds – note that all of the disputed domain names were registered prior to transmittal of his June 3 message – in his self-defined role as domain name consultant. He has sought compensation from Complainant for his activities.
Respondent’s claim to a “freedom of expression” interest in establishing the “walmartcanadasucks.com” and “walmartuksucks.com” websites is contradicted by his own words. A demand for payment from the potential and actual subject of critical sites is fundamentally inconsistent with the right of free expression.
However, the Panel stated:Respondent registered the disputed domain names, and demanded consulting fees from Complainant as compensation for his actions. Implicit in such demand is that Respondent would forego using the disputed domain names, or would transfer them to Complainant, if his consulting demands were met. Complainant would not reasonably be expected to pay a consultant to disparage its mark. The Panel determines that Respondent registered the disputed domain names for the purpose of selling or otherwise transferring rights in them to the Complainant for consideration in excess of his out-of-pocket costs directly related to the names. This constitutes bad faith within the meaning of paragraph 4(b)(i) of the Policy.
However, in a subsequent case involving essentially the same issues and same parties, Wal-Mart Stores, Inc. v. wallmartcanadasucks.com and Kenneth J. Harvey, D2000-1104 the domain at issue was “wallmartcanadasucks.com.”The Panel stresses that this decision does not address legitimate freedom of expression sites established by parties critical of trademark holders. The Panel is aware that there are numerous websites identified by “-sucks” formative domain names, including “walmartsucks.com”. The Panel anticipates that Respondent (and others) may choose to characterize this decision as seeking to stifle freedom of expression on the Internet by ordering the transfer of “-sucks” formative names. Certain trademark holders might choose to characterize this decision as supporting action against “-sucks” formative domain names in other contexts. The Panel intends this decision to serve neither of these aims. This decision is directed to a blatant case of abuse of the domain name registration process -- no more, no less.
The Panel stated Respondent’s position as follows:
The Panel analyzed issues and cases related to “protest,” “parody” or “criticism” sites. The Panel discussed at length Bally Total Fitness Holding Corp v. Faber. The Panel concluded that using the above “Sleekcraft” factors, the use of the term “Bally Sucks” use did not violate the rights of the trademark owner. As to the issue of the right of “protest” the Panel quoted the Bally Court as follows:The Respondent asserts that wallmartcanadasucks.com is run as a freedom of expression site.
As with wallmartcanadasucks.com, the use of the sucks.com suffix attached to a company name has become a standard formula for Internet sites protesting the business practices of a company. For instance, the use of wallmartcanadasucks.com would, in no way, be confused as a site run by Wal-Mart. “Anyone with even the tiniest speck of intelligence would realize that Wal-Mart would never be running a site called: wallmartcanadasucks.com. In fact, the only reason Wal-Mart wishes to own the disputed domain name is to take it out of circulation. They do not wish to use it, but wish to keep it from individuals who wish to use it to post complaints against them.”
In citing to Lucent Technologies, Inc. v. Lucentsucks.com, a case brought under the Anticybersquatting Consumer Protection Act (ACPA) and which case was distinguished and thus not followed by the first Panel in the above case, this Panel quoted from that case as follows. It should be noted that even this Panel said that the language in the Lucent case dealing with this issue was what the law calls “dicta” since it was not part of the basis for the court’s decision. However, this Panel quoted the Lucent case as follows:Here, Faber purposely chose to use Bally’s mark to build a “web site that is ‘dedicated to complaint, issues, problems, beefs, grievances, grumblings, accusations, and gripes with Bally Total Fitness health clubs.’ “ Faber, however, is exercising his right to publish critical commentary about Bally. He cannot do this without making reference to Bally. In this regard, Professor McCarthy states:
“The main remedy of the trademark owner is not an injunction to suppress the message, but a rebuttal to the message. As Justice Brandeis long ago stated, “If there be time to expose through discussion the falsehood and fallacies, to avert the evil by the process of education, the remedy to be applied is more speech, not enforced silence.” 5 McCarthy, § 31:148 at 31-216.
Applying Bally’s argument would extend trademark protection to eclipse First Amendment rights. The courts, however, have rejected this approach by holding that trademark rights may be limited by First Amendment concerns.
Thus the issue was whether or not the domain and site were in fact critical sites or were merely trading on the name and reputation of the mark. The Panel analyzed several cases and concluded, in this matter, that in fact the site and the domain were legitimate “protest” sites. In this regard, the Panel distinguished the above Wal-Mart case on the facts and the nature of that other Panel’s decision. This Panel stated:Trademark law more generally recognizes a privilege for use of marks for parodic or critical purposes. Often, such a purpose influences the likelihood of confusion analysis.
The Restatement [a legal treatise] recognizes the special position that criticism occupies in trademark law:“One who uses a designation that resembles the trademark, trade name collective mark or certification mark of another, not in a manner that is likely to associate the other’s mark with the goods, services, or business of the actor, but rather to comment on, criticize, ridicule, parody, or disparage the other or the other’s goods, services business, or mark, is subject to liability without proof of the likelihood of confusion only if the actor’s conduct meets the requirements of a cause of action for defamation, invasion of privacy, or injurious falsehood.” (Footnote 22)”
The Panel analyzed cases dealing with “parody” and “comment” sites and other uses of trademarks and stated in part:The analysis in Case No.D2000-0477 concentrated on distinguishing the Lucent sucks and Bally sucks cases. It did not consider more broadly the law relating to critical or parodic uses of domain names and trademarks. Professor Abbott distinguishes Bally on the grounds that it did not involve using ballysucks as a domain name, but rather the word ballysucks on a Web page accessible under a different domain name. (Footnote 33) This distinction does not dilute the effect of the Bally court’s analysis of the relationship between parody or criticism and trademark infringement.
Professor Abbott did not find that use of a “sucks” domain name never would be permissible, but he declined to find a general immunity for use of the “sucks” suffix. On the record before him, which included use of several domain names not involving the suffix “sucks,” and which were likely to create consumer confusion, he extended his finding of bad faith, associated with these confusingly similar domain names, to the domain name including “sucks.”
As to the fact of whether or not the conduct of the registrant was to seek payment for the domain and thus nullify any claim of legitimate interests and support the claim of bad faith, this Panel declined to make the same finding as the prior panel. This Panel stated:Thus whether wallmartcanadasucks is effective criticism of Wal-Mart, whether it is in good taste, whether it focuses on the right issues, all are immaterial; the only question is whether it is criticism or parody rather than free-riding on another's trade mark.
One of the factors to be considered under the ICANN Policy in determining bad faith is whether the Respondent has solicited payment for transfer of the accused domain name. The record associated with the first two disputes between this complainant and this Respondent included a letter sent by the Respondent to the complainant asking for payment for consulting services relating to identification of domain names that Wal-Mart should register. Wal-Mart, and the sole panelist in Decision No. 2000-477 concluded that this request for payment satisfied the requirement of subparagraph 4 (b)(i).
I am unwilling to extend that inference from the earlier cases to this case. There has been no demand for payment for transfer of walmartcanadasucks.com. Nor has there been any request for payment for consulting services in connection with walmartcanadasucks.com. The inference of a demand for payment for transfer of the domain name was only weakly supported in the earlier cases, and there is no basis for it in this case. The letter regarding consulting services made no reference to transfer of domain names, and has not been renewed.
In The Stanley Works v. McNeil & Associates the domains at issue were stanley-proto.com, stanley-husky.com, stanley-tools.com and stanley-hardware.com. The complainant is the owner of various trademarks with “stanley,” “proto” and “husky.” The respondent also had a domain “stanleysucks.com.” As stated by the Panel,
The Panel stated:Respondent’s primary contention is that he uses these Stanley related names to promote his anti-Stanley website <stanleysucks.com>. Respondent contends that such use constitutes legitimate, non-commercial and fair use of the domain names and that such use is protected by the First Amendment. Respondent alleges fraud, estoppel, and equitable grounds for denying the transfer; however, these claims are beyond the scope of an ICANN proceeding.
Domain names ... per se are neither automatically entitled to nor excluded from the protections of the First Amendment, and the appropriate inquiry is one that fully addresses particular circumstances presented with respect to each domain name.” Name.Space Inc. v. Network Solutions, 202 F.3d 573, 585 (2d Cir. 2000). Although the content of Respondent’s site may be entitled to First Amendment protection, his use of Complainant’s trademark in the domain name of his site is not so protected. Since Respondent’s domain name merely incorporates Complainant’s trademark, it does not constitute a protectable, communicative message. See OBH, INC v. Spotlight Magazine, Inc., 86 F. Supp. 2d 176, 197 (W.D.N.Y. 2000) (“Whether a particular domain name is entitled to protection under the First Amendment depends on the extent of its communicative message.”).
Use of a Complainant’s mark to deceive Internet users into believing they are accessing Complainant’s website is not protected by the First Amendment. Morrison & Foerster LLP v. Wick, 94 F. Supp. 2d 1125 (D. Colo. 2000). “Use of another’s trademark is entitled to First Amendment protection only when the use of that mark is part of a communicative message, not when it is used merely to identify the source of a product.” OBH, 86 F.Supp.2d at 197-198 (citing Planned Parenthood Federation of America, Inc. v. Bucci, 1997 WL 133313, 42 U.S.P.Q.2d 1430 (S.D.N.Y.1997)). Respondent’s use of Complainant’s mark as the domain name for his website is more analogous to source identification than to a communicative message. See OBH, 86 F.Supp.2d at 198. The domain name identifies the website as being that of Stanley. Free speech rights do not extend to labeling or advertising products in a manner that conflicts with the trademark rights of others. See Yankee Pub. Inc. v. News America Pub. Inc., 809 F.Supp. 267, 275-276 (S.D.N.Y.1992).
Because Respondent’s use of Complainant’s mark in a domain name is not part of a communicative message, his use of Complainant’s mark is not protected by the First Amendment. [emphasis added] See Gucci America, Inc. v. Hall & Associates, 135 F.Supp.2d 409, 60 U.S.P.Q.2d 1714 (S.D.N.Y. 2001). Respondent’s domain names in question do not involve the use of a trademarked term that has an additional expressive element or was part of a communicative message that goes beyond commercial identification of the source of a product. The domain names link to <stanleysucks.com>, a domain name which has critical content in the name. However, the domain names in question have no critical content so as to distinguish Respondent from Complainant. [emphasis added]
While the content of Respondent’s website may enjoy First Amendment and fair use protection, those protections do not equate to rights or a legitimate interest with respect to a domain name which is confusingly similar to another’s trademark. [emphasis added] See Spence-Chapin Services to Families and Children v. Spence-Chapin, LLC, FA 105945 (Nat. Arb. Forum May 6, 2002). (Respondent is free to criticize, but the right to criticize does not extend to using the same or similar domain name, without any immediate element to distinguish Respondent, as an entity, from Complainant). Although, Respondent may have a right to refer to the mark in critical content, the wholesale appropriation of Complainant’s mark in a domain name, without any distinguishing material, creates confusion with Complainant’s business and is not fair use merely for the purpose of criticism. Council of Am. Survey Research Org. v. Consumer Info. Org., LLC, D2002-0377 (WIPO July 19, 2002). No criticism is apparent from the domain name itself; it is not sufficient that the criticism may be apparent from the content of the site. Id.
As you can see, the issues
about using a trademark in a domain name, in whole or in part, are, like
many other areas of the law, not always subject to bright line rules.
The cases discussed, while certainly not the extent of all such cases,
point out some but not all of the issues so presented.
© 2002 Ivan Hoffman. All Rights Reserved.