www.rivkinradler.com August 9, 2005   Reprinted with Permission from the August 9, 2005 Issue of the New York Law Journal   Cyber-Gripes How Courts are Handling Complaints Against Critical Web Sites   By: Shari Claire Lewis     [Author Bio: Shari Claire Lewis, a partner at Rivkin Radler LLP, specializes in litigation in the areas of internet, domain name, and computer law as well as professional liability and medical device and product liability. She may be reached at shari.lewis@rivkin.com.]   Just as computer users have to deal with spam and viruses, businesses that consider the Internet to be one of the best-ever marketing and sales tools are finding it has drawbacks, too. Internet "gripe" or "complaint" sites are a growing problem. They are established by customers or former employees for the purpose of criticizing a company's products, service or management. Usually, a gripe site's URL uses a domain name that includes the company's trademark, either alone or with a pejorative term, such as trademarksucks.com or ihatetrademark.net.[1] These sites are the virtual equivalents of picket lines, pamphleting, and other exercises of free speech in the real world. Thus, the right of the Internet user to post critical commentary, including parody or satire, is limited only to the extent that it invades the virtual property interests (that is, the intellectual property) of the business or otherwise crosses the line into business defamation or tarnishment.[2] Accordingly, like "brick and mortar" businesses, one of the tools that can be mobilized to challenge a gripe site is the federal trademark law known as the Lanham Act, which among other things prohibits uses of trademarks, trade names, and trade dress that are likely to cause confusion about the source of a product or service or in a way tarnishes the trademark.[3] As recent cases suggest, however, courts are divided on the ability of a company to rely on the Lanham Act unless all of the traditional criteria for application are met in the virtual world. Consider the recent decision by the U.S. Court of Appeals for the Ninth Circuit, in Bosley Medical Institute, Inc. v. Kremer.[4] This case arose after a patient became dissatisfied with hair restoration services provided to him by the Bosley Medical Institute, Inc. The patient started a site, at www.BosleyMedical.com, that was uncomplimentary of the institute. The institute then brought suit against the patient for trademark infringement, noting that "Bosley Medical" was its registered trademark. It also brought a cybersquatting claim under the Anticybersquatting Consumer Protection Act,[5] an amendment to the Lanham Act. Recognizing that the First Amendment would prohibit regulation of non commercial speech, the Ninth Circuit boldly stated that the sine qua non of the infringement claim is commercial use of the trademark. Thus, the interest of free speech is balanced, in the commercial arena, by the law's purpose to protect consumers who have formed particular associations with a trademark from buying a competing product using the same or substantially similar mark and to allow the trademark holder to distinguish its product from that of its rivals. The test, the Ninth Circuit continued, was whether the customer's use of Bosley Medical as his domain name was "in connection with a sale of goods or services." If it was not, the circuit court added, then the use was "noncommercial" and did not violate the Lanham Act. The institute argued that it met the commercial use requirement in three ways. First, it argued that a trademark used in an otherwise noncommercial Web site or as a domain name for an otherwise noncommercial site was nonetheless used in connection with goods and services where a user could click on a link available on that site to reach a commercial site. In addressing this argument, the Ninth Circuit noted that the patient's Web site contained "no commercial links,"[6] but only contained links to a discussion group, which in turn contained advertising. This "roundabout path" to the advertising of others was too attenuated to render the site commercial, the Ninth Circuit ruled. The Institute pointed out that the patient's site contained a link to the public interest group representing the patient in the litigation, but the Ninth Circuit held that the patient's identification of his lawyers and his provision of a link to them "did not transform his noncommercial site into a commercial one." Adding that the site did not offer for sale "any product or service or contain paid advertisements from any other commercial entity," it rejected the institute's first argument.[7] The institute's second argument that the patient's site satisfied the Lanham Act "in connection with the sale of goods or services" requirement was that the patient created the site "to enable an extortion scheme in an attempt to profit from registering BosleyMedical.com." The Ninth Circuit rejected this argument, finding no evidence that the patient had been trying to sell the domain name.[8] The institute's final argument as to the commercial use requirement was that the patient's registration of its trademark was a commercial use in that it prevented users from obtaining the institute's goods and services. The Fourth Circuit, in People for the Ethical Treatment of Animals v. Doughney,[9] had accepted that argument, but the Ninth Circuit rejected it , stating that that approach would bar most critical, otherwise protected consumer commentary under the Lanham Act.[10] It also pointed out that the patient's use of the Institute's trademark was not in connection with a sale of goods or services -- it was in connection with the expression of his opinion about the institute's goods and services. Simply put, the patient's use of the Institute's mark "simply cannot mislead consumers into buying a competing product." Any harm to the institute arose from the patient's criticism of its services; however, the circuit court ruled, the Institute could not use the Lanham Act either as a shield from the patient's criticism, or as a sword to shut the patient up. Anticybersquatting But, the Ninth Circuit reached a dramatically different conclusion as to the Anticybersquatting Consumer Protection Act (ACPA) claim against the patient. It initially ruled that there was no commercial use requirement under the ACPA and that the institute should be permitted to proceed in its efforts to prove that its patient had registered the domain name with a bad faith intent to profit. Interestingly, that was the issue in a recent case decided by a federal district court in New Jersey.[11] Here, the plaintiff challenged the Internet domain name "mayflowervanlinebeware.com," the home page of which was headlined "Beware of Lincoln Storage Warehouse. Beware of Mayflower Van Line," and stated, "If you are thinking about moving or had a bad experience moving with Mayflower Van Lines or Lincoln Storage Warehouses then please read on." The court examined the nine statutory factors enumerated in the ACPA to determine whether the defendant's actions amounted to bad faith but primarily focused on the fourth factor -- whether the defendant had a "bona fide noncommercial or fair use of the mark" - and stated that it demonstrated why the defendant could not be held liable under the ACPA. The court explained that the purpose of this element was to protect domain name registrations and users engaged in protected activities "such as critical commentary." According to the court, the totality of circumstances in this case demonstrated that the defendant's motive for registering the disputed domain names and posting his criticism was to express his customer dissatisfaction through the medium of the Internet. Defendant's "cyber-griping," the court ruled, was a "far cry" from the "squatting" activity made illegal by the ACPA, in which a person purchases numerous domain names of prominent companies cheaply with the purpose of selling the domain names at a higher price to those companies. It therefore concluded that the defendant's actions did not fall within the ambit of the ACPA.[12] Other Strategies As these cases suggest, it may be difficult to persuade a court to bar a gripe site where its owner is not seeking financial benefit. Conceivably, a company may be able to successfully challenge a domain name registration under the Uniform Domain Name Dispute Resolution Policy, or UDRP. However, the UDRP recognizes the right of consumer criticism as constituting a fair use exception to the registration of a company's trademark and therefore will include in its analysis whether the domain name has been actually used in association with non-commercial, original content.[13] One of the factors that has been considered in this context is the extent to which the domain name is identical to the trademark or otherwise signals criticism of the trademark owner. Thus, in considering the likelihood of a successful challenge to a domain name registration, a company has a greater objection as to registration of "trademark.com," as it is plainly foreseeable that consumers will be misled as to the source of the site accessed by that domain name. In contrast, a domain name that includes critical terms in the domain name (trademarksucks.com) will rarely be inherently confusing as its critical aspect is conveyed from the outset.[14] Pragmatically, rather than engage in expensive and perhaps futile litigation, a company may choose to preemptively register domain names that incorporate its trademark in those top level domains that the company wishes to protect.[15] Although it is impossible to register every variant of the trademark, as the options are infinite, those domain names that are likely to be most confusing may be made unavailable to the company's critics in this manner. Another option a company may choose is trying to ensure that its own site is at the top or among the top of search results in the major search engines. In one case involving a critical site using a college's "scad" trademark, the court pointed out that it was "unlikely that a prospective student or faculty member" searching the Internet for information about the college would be confused by the challenged site "because a search using one of the Internet search engines would display the scad.edu result, which ranks as the number one search result, before scad.info or scad-and-us.info." The court observed that the evidence at trial, "as well as common experience," indicated that search engines such as "Yahoo!" and "Google" are commonly used to assist users intending to access a party's products or services on the Internet. It observed that searches for the college's official page on these search engines listed the college's site as the first or second "hit." Indeed, it added, a search using the term "scad" in the Yahoo! search engine yielded 141,000 results with the college's site appearing as the first result. The challenged sites were not within the first 10 search results, the court noted. It therefore followed that any reasonable user desiring information on the college "would simply click on the first search result, i.e., the result for scad.edu, to obtain the information sought."[16] By the same token, as a practical matter, a company that ends up at the top of a search engine listing may have less concern about critical Web sites than if the critical sites appeared higher in the search than the company's site itself. - top - NOTES: [1]See, e.g., www.mysuzukilemon.com; www.theshopsatwillowbendsucks.com; see, also, www.taubmansucks.com (gripe site posted against the law firm Gifford, Krass, Groh, Sprinkle, Anderson & Citkowski). The inclusion of these sites are for illustration only and do not reflect any endorsement of their contents. [2]See, e.g., Taubman Co. v. Webfeats, 319 F.3d 770 (6th Cir., 2003) discussing the competing interests of the protection of speech under the First Amendment and protection of the company's intellectual property regarding the use of its trademark as a domain name for a gripe site. [3]See 15 U.S.C. §§ 1114, 1125(a). [4]403 F.3d 672 (9th Cir. 2005). [5]15 U.S.C. § 1125(d). [6]See TMI, Inc. v. Maxwell, 368 F.3d 433 (5th Cir. 2004) (holding that the commercial use requirement is not satisfied where defendant's site had no outside links). [7]Cf. Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002 (9th Cir. 2004) (commercial use found where core function of defendant's site was to advertise his computer business and defendant placed links to other commercial businesses directly on site). [8]Cf. Panavision International, L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998) (defendant's commercial use was his attempt to sell trademarks themselves); Intermatic Inc. v. Toeppen, 947 F. Supp. 1227 (N.D. Ill. 1996) (intention to arbitrage domain name constituted a commercial use). [9]263 F.3d 359 (4th Cir. 2001). [10]Other courts also have rejected this theory. See, e.g., L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26 (1st Cir. 1987). [11]Mayflower Transit, LLC v. Prince, 314 F. Supp. 2d 362 (D.N.J. 2004). [12]See, also, Lucas Nursery & Landscaping, Inc. v. Grosse, 359 F.3d 806 (6th Cir. 2004) (holding "cyber-griper" liable would "stretch the ACPA beyond the letter of the law); Rohr-Gurnee Motors, Inc. v. Patterson, 2004 U.S. Dist. Lexis 2068 (N.D.Ill. Feb. 9, 2004). [13]See, e.g., Wal-Mart Stores, Inc. v. Jeff Milchen, Case No. D2005-0130 (WIPO, April 10, 2005) (respondent had not associated any original content in the use of domain name but merely expressed intention to create a gripe site in connection therewith in the future). Also, note that because of the inherently international nature of the Internet, U.S. standards as to free speech may not by applied in all UDRP proceedings. [14]See, e.g., Harrison v. Microfinancial, Inc., 2005 U.S. Dist. LEXIS 2804, 9-10 (D. Mass., 2005); Taubman Co. v. Webfeats, 319 F.3d 770, 777-78 (6th Cir. 2003). Nevertheless, the contents of the associated Web site could, themselves, satisfy the factors necessary for an infringement, dilution, or tarnishment claim. [15]For example, , , , trademark.uk.co, etc. [16]Savannah College of Art and Design, Inc. v. Houeix, 369 F. Supp. 2d 929 (S.D. Ohio 2004).