YourTrademarkSucks.com

Originally published August 2004

Cybergripers are people who register domain names using the trademarks of others, with or without adding a disparaging term such as "sucks" or "bites", e.g., yourtrademarksucks. com. The corresponding Web sites may be parody sites, or more often than not, forums for complaints about the applicable trademark owner.

The courts have increasingly been siding with cybergripers when trademark owners protest. The cybergriper is said to have a First Amendment right to own the domain name because it uses the site to communicate a noncommercial message; there is no commercial activity on the gripesite to support the trademark owner's claim of dilution and trademark infringement. Accordingly, individuals and businesses have increasingly been attempting to protect themselves by registering offensive domain names based on their marks.

Trademark owners have three ways to attempt to stop cybergripers: 1) file a federal law suit under the Federal Trademark Dilution Act ("FTDA"); 2) file a federal lawsuit under the Anticybersquatting Consumer Protection Act ("ACPA"); or 3) bring a proceeding under the Uniform Domain-Name Dispute-Resolution Policy ("UDRP").

Under the FTDA, a trademark owner must prove that: 1) its mark is both distinctive and famous; 2) the cybergriper is using the owner's mark commercially; 3) such use began after the mark became famous; and 4) the cybergriper's use of the mark has diminished its ability to distinguish the trademark owner's goods and services from those of others. The FTDA expressly excludes bringing action against the "noncommercial use of a mark."

Two of the most well-known cases under the FTDA were decided in 1997 and 1998 in favor of the trademark owners: Planned Parenthood Federation of America v. Bucci and JewsforJesus v. Brodsky. In both cases, defendant cybergripers unsuccessfully argued that their use of plaintiffs' marks was free speech protected by the First Amendment. Key to both cases was the defendants' commercial use of plaintiffs' marks. In Planned Parenthood, defendant registered the identical trademark www.plannedparenthood.com, as a domain name. The Court determined that defendant's sale on its web site of an antiabortion book and its attempt to harm plaintiff commercially were enough to satisfy the commercial use requirement of the FTDA. In the other case, the sale of items and links to other commercial sites supported the Court's determination that defendant's registration of the www.jewsforjesus.org domain name, also incorporating the famous trademark of another, was unlawful under the FTDA.

Accordingly, most gripesites today do not register as domain names trademark owners' marks alone for commercial purposes. However, a subsequent decision, Bally Total Fitness Holding Corp. v. Faber, identified circumstances under which cybergriping could escape judicial censure. In that case, the defendant's ballysucks Web-page was found to be noncommercial use of plaintiff's trademark and therefore protected under the First Amendment. The highlight of the Court's opinion was its comment that "no reasonably prudent Internet user would believe that 'Ballysucks.com' is the official Bally site or is sponsored by Bally." In addition, the Court noted that "'sucks' has entered the vernacular as a word loaded with criticism."

The ACPA provides to an owner of a trademark that is not necessarily famous the opportunity to sue a person who registers, traffics in or uses a domain name that is identical or confusingly similar to the owner's, if the owner can show that the defendant had a bad-faith intent to profit from the mark. Thus, unlike the FTDA, actual commercial use by the cybergriper is not required.

In the 2000 case of Northland Ins. Companies v. Blaylock, a disgruntled customer previously insured by Northland registered the identical trademark www.northlandinsurance.com domain as a gripesite. The court held that the defendant did not have a "'bad faith intent to profit since, unlike in typical cybersquatting cases, the defendant did not seek financial gain through and offer to sell the domain name. The court was also reluctant, absent extraordinary circumstances, to chill free speech by granting a preliminary injunction."

Since Northland, there have been several other cases decided in favor of cybergripers. In Lucent Technologies, Inc. v. Lucentsucks.com, the Court stated that "defendant [cybergriper] argues persuasively that the average consumer would not confuse lucentsucks.com with a Web site sponsored by plaintiff." In the 2003 case of Taubman Co. v. Webfeats, the Court stated that "Mishkoff's use of Taubman's mark in the domain name 'taubmansucks. com' is purely an exhibition of Free Speech, and the Lanham Act is not evoked...Mishkoff is 'free to shout Taubman Sucks! from the rooftops...'."

In 2004, the Sixth Circuit Court of Appeals ruled for the cybergriper in Lucas Nursery and Landscaping, Inc. v. Grosse, holding:

[p]erhaps most important to our conclusion are Grosse's actions, which seem to have been undertaken in the spirit of informing fellow consumers about the practices of a landscaping company that she believed had performed inferior work on her yard. One of the ACPA's main objectives is the protection of consumers from slick internet peddlers who trade on the names and reputations of established brands. The practice of informing fellow consumers of one's experience with a particular service provider is surely not inconsistent with this ideal.

A trademark owner's final and most efficient option is a UDRP proceeding, in which it must, after establishing its own right to the mark, prove that the registrant: 1) registered a domain name identical or confusingly similar to the owner's mark; 2) has no rights or legitimate interest in the domain name; and 3) registered and is using the domain in bad faith. These hurdles are similar to those in an FTDA and ACPA action with one salient difference: First Amendment considerations are not involved.

The decisions have typically depended on a panel deciding the case. Some used an objective test, "where the mark was incorporated into a domain name, regardless of whether additional words or letters were added, the domain and the mark were held to be confusingly similar." While others used a subjective standard, "would a user confronted with the domain name at issue likely be confused as to the source or sponsorship." Adding the "sucks" suffix makes it very difficult to believe any confusion would be likely. Having a gripesite to express your opinion may be considered a legitimate interest.

For the minimal yearly cost of a domain name, trademark owners should consider preempting potential gripesites by registering derogatory variations of its name and mark before anyone else does.