In this increasingly “on-line” world, clients’ rights in their valuable trademarks are at risk from disgruntled customers or ex-employees who publish gripe websites on the internet. Today, anyone with a computer and ten dollars can purchase a domain name and publish a gripe website, in some cases using your client’s own trademarks to trash it on-line.
Use of its trademark to identify a gripe website implicate clients’ rights under the Lanham Act on the one hand, and the cyber-griper’s First Amendment right to free speech on the other. Therefore, it is important to understand how courts have balanced these competing interests, as well as knowing other steps which can be utilized to help a client avoid being the victim of a cyber-griper, or at least to minimize the impact if such an event happens.
In order to establish a claim for trademark infringement under the Lanham Act, (15 U.S.C. sections 1125(a) and 1114), a trademark holder must establish an unauthorized “commercial” use of the trademark, which is likely to cause confusion to potential customers about the source of goods and services. Accordingly, in order to implicate the Lanham Act, the defendant’s use of the trademark must be commercial. If the gripe website’s purpose is only to publish critical commentary about the trademark holder and not to sell goods or services associated with the cyber-griper, “fair use” may well defeat a Lanham Act claim. However, if the trademark holder can show that the cyber-griper intended to profit from the use of the trademark, the courts will find that the trademark holders’ rights in its intellectual property prevail over the cyber-griper’s First Amendment right to free speech.
Additionally, if a client’s trademark is “famous,” the trademark holder may have a claim under the Federal Trademark Dilution Act (15 U.S.C. section 1125(c)) which protects a famous mark from having its distinctive quality diluted. Similar to the trademark infringement claim, a plaintiff pursuing a claim for dilution must show: (1) its trademark has been used by the defendant for a commercial use in commerce; and (2) its trademark is famous. However, the requisite level of “fame” is extraordinarily high, and unlikely to be satisfied unless the goods or services are household names.
Finally, in cases where the cyber-griper has identified the offending website with a domain name which incorporates a client’s trademarks, a claim may arise under the Anti-cybersquatting Act (15 U.S.C. section 1125(d)). In an Anti-cybersquatting case the trademark holder must establish both that the domain name is identical, confusingly similar to, or dilutive of, a trademark, and that the cyber-griper has a bad faith intent to profit from the good will established by the trademark holder in the trademark. Text book examples of a bad-faith intent to profit are when the cyber-griper: (1) registers the domain name and offers to sell it to the trademark owner, its potential rivals, or the highest bidder; or (2) registers the domain name and erects a site with objectionable content to give the trademark owner a special incentive to buy the domain name from the cyber-griper quickly and at a high price.
However, thoughtful planning can at least prevent a cyber-griper from using the client’s trademarks to identify a gripe website. Clients who have trademarks should spend the few dollars necessary to register their trademarks as domain names and all reasonable “typos” of such trademarks with all of the applicable suffixes, i.e., .com, .org, .net, .info, .biz, etc. Once a gripe website has been published, clients can attempt to minimize the damage by bringing an administrative action against the cyber-griper under the Uniform Domain Name Dispute Resolution Policy (“UDRP”). The UDRP provides an expedited procedure for trademark holders in certain cases to force the registrar to transfer the offending domain registration to the trademark holder. Finally, if a client is stuck with the cyber-griping website being on-line and it is damaging enough, the client may consider setting up a rebuttal website.
Planning ahead and understanding the law can greatly assist clients in protecting their valuable intellectual property rights from cyber-gripers in the on-line world.