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<< Settling Disputes << Previous | Next >> Reference >> Fan and Gripe SitesSo what if you want to gripe about a company. What if some company delivered shoddy service and you believe the world will be better if you share your misery with others. And if in the process of sharing your misery you not only kvetch about the company, but establish a web presence using that company’s name in the domain name (along the lines of cannonsucks.com). In theory, ACPA clarifies that it does not alter the ability of individuals to make legitimate uses of trademarks including fair use and free speech. [ACPA Sec. 3008]. Where the use of a domain name is a part of such commentary, and where the necessary element "intent to profit from the mark" [15 USC § 1125(d)(I)(A)] is absent, this has been considered by courts as a fair use exception to the ACPA. [Coca-Cola 778] [HER § 1 (where gripe site was in direct commercial competition with plaintiff, and gripe domain direct visitors to defendant's commercial site, gripe-fair-use exception did not apply)] [See also Is it Legal to Link (discussing use of trademarks in links and metatags)] Michelle Gross felt that way. She thought the world would be better if she set up lucasnursery.com to share her story of her experience with Lucas Nursery and Landscaping, Inc. Lucas Nursery did not at the time have its own website; thus it could not be said that Gross was seeking to divert traffic from its website. It was perfectly clear to any visitor that Gross was griping, and was not seeking to mislead consumers that she was the real Lucas Nursery website. Gross did not offer the domain name for sale to Lucas Nursery. She did not attempt to settle with them. After receiving a letter from the nursery directing her to take down the site, she checked and confirmed that Lucas Nursery had not established a trademark for its name. She only registered one domain name (she did not warehouse). [Toronto] In this situation, the court concluded
[Lucas] Next Case: When Bell Atlantic became Verizon, Verizon apparently sought to stifle critics by registering domain names such as "verizonsucks.com." They also sent out cease and desist letters to anyone using "Verizon" in a domain name. This led to the registration by the hacker magazine 2600 of the domain name "verizonreallysucks.com" which led to another cease and desist letter which led 2600 to register VerizonShouldSpendMoreTimeFixingItsNetworkAndLessMoneyOnLawyers.com. It would be hard to suggest that these critical sites could be confused with the actual mark, nor were they taking away domain names that Verizon might legitimately want to use. Rather, these were within the bounds for First Amendment speech. Verizon withdrew its cease and desist letters from these domain name owners and was quoted as saying that the whole thing was just a “misunderstanding.” [Verizon] See also [Lucent] [Bally] [Falwell]. See Also UDRP.
A final requirement of the ACPA is the impact on the trademark:
The guidelines for consideration (these are court created guidelines not listed in the statute) "are
[Greenpoint] There is some overlap between these factors and the ACPA bad faith factors. Let’s look at a case where the domain name holder actually won. In Greenpoint Financial Corp. v. S & H Greenpoints.com, a Brooklyn bank sought to challenge the use of the greenpoints.com domain name by the defendant. Defendant was known for its green stamps marketing program back in the 60s and 70s. Both companies had established intellectual property in the term “greenpoints” although defendant’s use came after plaintiff’s. So this was not exactly a great challenge for plaintiff. Both parties had interests in the term and the term itself was somewhat generic. For plaintiff, Greenpoint is simply the neighborhood in Brooklyn where the bank was located. Furthermore the Brooklyn phone book showed that 50 other companies had Greenpoint somewhere in their name. But looking specifically at the issue of the likeliness of confusion, the court concluded that the name was geographically descriptive and therefore not strong, the services provided by the companies is distinct, it is unlikely that the two companies will directly compete, and there was insufficient evidence of actual confusion. For these and other reasons, the Court denied Greenpoint Financial Corp. attempt to challenge S&H Greenpoints.com use of the domain name. [Greenpoint]
Disclaimers: "Courts have concluded that the use of a disclaimer does not save a domain name from cybersquatting liability as the internet user must access the site before seeing the disclaimer." [Coca Cola 783 ("material on site is not relevant to whether the domain name and mark are confusingly similar")] [Anlin Slip 10].
If a plaintiff succeeds in establishing a violation of the ACPA, the court may
The ACPA includes provisions covering situations where the true owner of the domain name is unknown or is not within the reach of US jurisdiction. In these cases, the plaintiff can initiate an in rem proceeding against the domain name itself. [In Rem Cases] Notice of the action to the domain name owner must be attempted by sending a notice of the alleged violation to the postal and email address of the owner (this type of information is maintained in the WHOIS database). 15 U.S.C. § 1125(d)(2)(A)(ii)(II)
Many ISPs and Internet ventures have now revised their business plans to include becoming domain name registries. There was a time when NSI, the former sole .com registry, spent a significant amount of legal resources attempting to not get caught in the middle of any domain name litigations. The policy of NSI was that it just registered domain names – it did not nor was it responsible for ensuring that the domain names registered did not infringe on the rights of any third party (a task that would be insurmountable). Learning from experience, Congress included a provision in the ACPA attempting to make clear that domain name registries and registrars are not liable for the infringement of trademark owners rights by domain name holders. A domain name registry or registrar who removes, disables, cancels, or refuses to register a domain name is not liable if the registrar or registry (a) acts in accordance with a court order or (b) implements a policy of refusing to register domain names that are identical to, similar to, or violate the trademark of a trademark owner (regardless of intent of registrant). 15 USC § 1114(D)(i). If, however, the registry or registrar fails to act, it can be subject to injunctive relief. 15 U.S.C. § 1114(D)(ii). If, however, the registry or registrar acts with a bad faith intent to profit from such registrations, then it can be liable for damages. 15 U.S.C. § 1114(D)(iii).
So does the domain name holder have any rights? Liability: If the registry or registrar acts based on a knowing and material misrepresentation, the person making the misrepresentation can be liable to the domain name holder for monetary damages including attorney’s fees. The court can order the transfer or reactivation of the domain name. 15 U.S.C. § 1114(D)(iv). Reactivation: Domain name holders who have had their domain names affected by the ACPA may go to court to get a ruling that their domain is “not unlawful” and to have their domain name reactivated. 15 U.S.C. § 1114(D)(v). Rights Preserved: The ACPA states that it does not alter the ability of individuals to make legitimate uses of trademarks including fair use and free speech. ACPA Sec. 3008. Historic Preservation: The ACPA also amends the National Historic Preservation Act to include language that buildings and properties
may retain their names. ACPA Sec. 3007 codified at 16 U.S.C. § 470a(a)(1)(A).
Individual seeking to gain control of domain name: Individuals also receive some protection under the ACPA for personal names. However, this protection is far more limited. The ACPA protects personal names where the domain name holder has the specific intent to profit from the sale of the domain name. 15 U.S.C. § 1129 (ACPA Sec. 3002(b)) (See exceptions in ACPA Sec. 3002(b)(1)(B) including domain names related to literary works. Also note that personal names themselves can also be trademarks and receive the rights and protections as trademarks). There are numerous exceptions to this provision, not the least of these is that the domain name holder registers the name but does not attempt to sell it, the ACPA creates no cause of action. [See also Falwell] An example of this has been the gwbush.com domain name which was not owned by the Gov. George Bush presidential campaign. gwbush.com is a parody site offering opinion and commentary on then presidential candidate George W Bush. Gov. Bush does not have trademark rights to his name and the domain name holder was not attempting to sell the domain name. Furthermore, as the gwbush.com website is a political parody site, it is exactly the type of political discourse that should be protected under the First Amendment. The campaign was unable to stop the use of this domain. For more on this controversy, see Content Regulation: Federal Election Commission. Damages here include injunctive relief, forfeiture, monetary damages, and attorneys fees. ACPA Sec. 3002(b)(2). Individual seeking to retain control of domain name: In disputes under the ACPA, where the domain name owner’s personal name is the same or similar as the domain name, that is a factor in consideration of whether the owner is engaged in bad faith. 15 U.S.C. § 1125(d)(1)(B)(i)(II). If, for example, I were to register cannon.org, the fact that “cannon” is my own name would be a factor indicating that I was not engaged in bad faith if, say, Cannon Towels sought to gain the domain name from me under the ACPA. See also PTO Guidance, Marks Composed, in Whole or In Part, of Domain Names: Surnames (1999). [ Settling << Previous :: Next >> References >>] |
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