www.YourCompanySucks.com: Trademark Liability of Internet Gripe Sites By David McKone[*]
Comments about this article should be sent to mttlr@umich.edu.
February 2, 2001
I. INTRODUCTION
When the web site "www.aolsucks.com" is opened in a browser window, it presents the viewer with the AOL logo in a red circle with a line through it. Next to this logo, the words "The truth will prevail" appear prominently, followed by an invitation to click on a banner to enter the "AOL Watch" web site. As the viewer proceeds to open the "AOL Watch" web site, the web site presents the viewer with articles critical of AOL, along with a banner advertisement for Earthlink, a competitor to AOL. It is hard to imagine that AOL has sponsored this site, or that consumers would be confused and think that they did. It seems more logical that Earthlink would be the sponsor of the site, possibly in an attempt to generate more business. Furthermore, the material on the site, which is critical of AOL, could potentially harm this Internet access provider. Should this use of AOL's trademark in the domain name of a consumer criticism site be protected under the First Amendment, or has the owner of this site crossed the line into the commercial use of the mark against which the Lanham Act protects?
The owner of "www.walmartsucks.com," a web site dedicated to consumer criticism of Wal-Mart, is considering selling anti Wal-Mart mugs and T-shirts over this web site.[1] At what point has this individual crossed the line between protected speech and illegal use of a trademark?
This note discusses the potential trademark liability of those operating the so-called gripe sites, using for example, "www.YourCompanySucks.com," "www.IHateYourCompany.com," or "www.YourCompanyStinks.org" as domain names for web pages that criticize companies' commercial practices. Part II will discuss infringement liability, Part III will discuss dilution liability, and Part IV will discuss liability under the Anticybersquatting Consumer Protection Act ("ACPA")[2].
II. INFRINGEMENT LIABILITY OF GRIPE SITES
If the owner of a website uses on his website the trademark of a company in such a way as to cause a likelihood of confusion, he may be found liable for trademark infringement.[3] However, the conventional wisdom is that the use of "www.YourCompanySucks.com" or the like in a domain name will not subject the owner of the web page to infringement liability.[4] The leading case on this issue, Bally Total Fitness Holding Corp. v. Faber[5], held that the defendant's use of "ballysucks" in the sub-domain[6] name was not an infringing use of the mark because there was no likelihood of confusion, since "no reasonably prudent Internet user would believe that "Ballysucks.com" is the official Bally site or is sponsored by Bally".[7] Furthermore, the nature of the defendant's speech was protected by the First Amendment, and thus there was no bad faith in adopting the mark, weighing against the plaintiff in the likelihood of confusion analysis.[8]
The court in the Bally case noted in its decision that "ballysucks" was used in a sub-domain rather than a domain name.[9] However, the court implied that even if "ballysucks" was used in the domain name of the web site instead of a sub-domain name, there still would be no confusion, although it leaves that question open.[10] Still, it's difficult to see how one could mistakenly think that a domain name of "ballysucks.com" would be sponsored or endorsed by Bally. It's even more unlikely that someone would type in "ballysucks.com" in an attempt to reach Bally's official website.
The opinion in Bally is not inconsistent with other similar cases. For example, in Planned Parenthood Federation Of America, Inc., v. Bucci, where the court did find the defendant liable, the defendant registered and used the domain name "www.plannedparenthood.com" for a website critical to Planned Parenthood.[11] This use of the identical or nearly identical trademark in the domain name, unaltered by another term such as "sucks" is much more likely to be confusing.[12] It is unlikely that a court will find infringement liability when a website owner operates a gripe site under the domain name of "YourCompanySucks.com" or the like.
Still, there is no guarantee that a court will not find infringement. Some courts have established a very low standard for likelihood of confusion. For example, in Mutual of Omaha Insurance v. Novak, the court found that the defendant's T-shirts, featuring a parody of Mutual of Omaha's logo with the words "Mutant of Omaha" and an emaciated human head in place of the trademarked Indian head, caused a likelihood of confusion because consumers might think that Mutual of Omaha "'goes along' with the T-shirts 'in order to make people aware of the nuclear war problem.'"[13] However, as Bally points out, use of a trademark in a gripe site is consumer commentary and deserving of greater First Amendment protection than the sort of use in Mutual of Omaha.[14] Therefore, the use of "www.YourCompanySucks.com" for the domain name of a legitimate gripe site is probably safe from infringement liability.
III. DILUTION LIABILITY OF GRIPE SITES
In order to prevail on a claim of trademark dilution, the owner of a famous and distinctive mark or trade name must show that the defendant made commercial use in commerce of the mark that dilutes its distinctive quality.[15] The statute, however, allows the defenses of fair use and non-commercial speech.[16]
As is the case in trademark infringement actions, one starts with the premise that the use of "www.YourCompanySucks.com" and the like in a domain name is not subject to trademark dilution liability.[17] Again, the Bally case, where the court similarly decided that the defendant's use of "ballysucks" in a sub-domain name of a web site did not subject him to trademark dilution liability,[18] is the leading authority on this issue. Here, the court rested on the much more tenuous ground that the defendant did not make commercial use of the mark in commerce.[19] The court reasoned that the defendant, a web site developer, was not using the Bally mark to sell his services or to identify his goods in commerce.[20]
However, other courts have articulated much lower standards for meeting the commercial use requirement for dilution liability. For example, in Planned Parenthood, the court suggested that even if the offending web site was not using the mark in a commercial manner, the defendant could still be subject to liability if the web site was connected with a larger effort to solicit funds. [21]In Planned Parenthood, the defendant was a radio show host who used his radio platform to oppose Planned Parenthood's efforts.[22] He registered "www.plannedparenthood.com" and put up a web site at that web address purporting to be the official web site of Planned Parenthood.[23] Since the web site was connected to the defendant's radio show efforts, and the defendant solicited funds through the radio show, the web site was therefore using the Planned Parenthood mark in commerce.[24] Similarly, in Jews For Jesus, the court found that the defendant's registration and use of "www.jewsforjesus.org" for a website critical of the Jews for Jesus organization was a commercial use in commerce because the website contained a hyperlink to the Outreach Judaism Organization Internet site, which solicited funds through the sale of merchandise.[25]
This willingness to find that a mark has been used in commerce sharply contrasts with the court's reasoning in Bally. For instance, the court in Bally acknowledged that the defendant was using the ballysucks website to promote his business of designing websites.[26] The court likened that site, in conjunction with several others, to a resume,[27] yet found that First Amendment concerns dictated that this was not the kind of use that was intended to be covered within the scope of commercial use.[28] Thus Bally seems at odds with cases like Jews for Jesus and Planned Parenthood.
Furthermore, the court in Planned Parenthood stated that the defendant would be using the mark in commerce if his "actions are designed to, and do, harm plaintiff commercially."[29] Here, the court relied on the fact that defendant registered as his own domain name the trademark of Planned Parenthood and purported to be planned parenthood, thus diverting those seeking information on Planned Parenthood and consequently hurting the plaintiff commercially.[30] However, the offending conduct that the court cited centered around the defendant's intent to divert those who intended to view a website sponsored by Planned Parenthood to a website that criticized the organization.[31]
The conduct of the defendant in Bally, although it was designed to, and possibly did harm Bally commercially, was different in character from that of the defendant in Planned Parenthood. In Bally, the defendant made no attempt to divert unwary consumers interested in visiting an official Bally website. His website domain name was compupix.com, and the sub-domain was "ballysucks," which makes it clear that the website was intended to criticize Bally's.[32] Extending this to examples such as using "www.aolsucks.com" as a domain name, it is clear that these sites are not purporting to be official sites sponsored by the companies they criticize. Furthermore, the Lanham Act was not intended to prohibit non-commercial expression such as consumer criticism.[33] Thus, something more than merely using the domain name "www.YourCompanySucks.com" and the like are probably required for trademark liability.
However, as demonstrated by the Planned Parenthood and Jews for Jesus cases, some courts may not require much more before finding that the trademark use is commercial use in commerce. In Jews for Jesus, it was enough that there was a hyperlink to another website that did solicit funds. And in Planned Parenthood, it was sufficient that the website could be connected with a larger effort to promote a message, where that larger effort did collect funds through other channels. Thus in AOL's case, the fact that the website contains a banner advertisement that hyperlinks the viewer to a competitor of AOL would probably be enough to constitute commercial use in commerce under Jews for Jesus.
However, a key difference between the Bally case and the Jews for Jesus and Planned Parenthood cases was the intention of the defendants. In Jews for Jesus and Planned Parenthood, the defendants intended to deceive potential customers of the plaintiffs, and to divert them to a critical website by using as the domain names the plaintiffs' trademarks.[34] In Planned Parenthood, the defendant went a step further and continued to deceive the consumers once they arrived at the website by continuing to purport to be the official website and sponsored by Planned Parenthood.[35] Thus, in these cases, the courts may have been reluctant to afford the defendants any First Amendment protection. In Bally, on the other hand, the defendant probably did not have the same intent to divert potential Bally customers who were intending to visit an official Bally site.[36] Thus, the owner of a website dedicated to consumer criticism may be able to avoid trademark liability by using a domain name similar to "www.YourCompanySucks.com," since it is not an attempt deceive website visitors. However, there is no requirement in the Lanham Act that consumers be confused to subject a defendant to dilution liability.[37] Thus, the website owner who makes an unauthorized use of a trademark in a domain name, whether "sucks" is appended to it or not, is walking a fine line.
IV. LIABILITY OF GRIPE SITES UNDER THE ACPA
Under the ACPA, it is unlawful to register, with the bad faith intent to profit, a domain name that is confusingly similar to a trademark or that dilutes a famous trademark.[38] As with infringement and dilution liability, leading scholars suggest that genuine gripe sites are protected under the ACPA.[39] As discussed above, a gripe site using as it's domain name "www.YourCompanySucks.com" probably will not generate a likelihood of consumer confusion, although it is far from certain whether that same use will result in trademark dilution. However, it may be difficult to establish bad faith use of the mark, especially since the owner of the domain name and offending web site can probably claim good faith reliance on the protection of the First Amendment.[40]
Additionally, non-commercial use is a factor listed in the statute as weighing against bad faith intent.[41] But, as discussed above, different courts have outlined very different criteria for establishing whether this use is commercial or non-commercial use. In one case, the mere registration of a domain name in the hopes that the trademark owner would want to buy it was enough to establish a commercial use sufficient to invoke the ACPA.[42] It has been suggested that some "YourCompanySucks.com" web sites are actually an attempt to get the trademark owner to buy the domain name in order to silence the criticism.[43] Thus relying on non-commercial use for protection from ACPA liability may not be a safe route for the would-be gripe site owner. However, at least one court has addressed this very issue in dicta, stating "A successful showing that lucentsucks.com is effective parody and/ or a web site for critical commentary would seriously undermine the requisite elements for the causes of action at issue in this case."[44]
Furthermore, another requirement for liability under the ACPA is that the mark be "identical or confusingly similar."[45] It is hard to see how a domain name that consists of a trademark with "sucks," "stinks," or "Ihate" appended to it could be confusingly similar to a trademark; and it is certainly not identical.[46] Therefore, registering "www.YourCompanySucks.com" for a gripe site will probably not subject one to liability.
V. CONCLUSION
A website owner who distributes critical information about a trademark owner using a website with the domain name of "www.YourCompanySucks.com" and the like are at risk of incurring trademark dilution liability, and possibly, although not as likely, infringement or ACPA liability. In light of several cases hostile to owners of critical websites, it is not safe to rely on the Bally case as protection from liability.
However, in resolving these issues, it is important to keep in mind the interest of the public. A major concern influencing the Bally decision was the consumers' right to have a forum for critically discussing the business practices of corporations, and that in order for consumers to be able to find this forum, the defendant would have to be able to use Bally's trademark.[47] In fact, these domain name conventions are becoming a popular method of distributing critical information about corporations.[48] And in some instances, the result has been positive for consumers, resulting in consumer friendly changes in corporate business practices.[49] Prohibiting the use of company trademarks in the domain names of critical web sites when used according to this developing "sucks" convention will thus deprive consumers of a valuable tool for driving pro-consumer corporate change.