The Power of Internet Gripe Sites

Legitimate Interest in Using the Domain

A legitimate interest in registering and owning a domain can be proved by the following:

1. use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
2. being commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
3. noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.⁷

As one panel stated, “neither the courts in the United States of America nor panels in [Uniform Dispute Resolution] Policy proceedings have reached a clear consensus as to whether a critic may use her subject’s trademark as a Web address to post critical commentary, even when (as in this proceeding) the gripe site is entirely non-commercial.⁸ However, it is noteworthy that all of the UDRP complaints that were filed against general gripe sites serving as opinion forums resulted in the complaint being denied, presumably because, as another panel put it, “protest and commentary is the quintessential noncommercial fair use envisioned by the Policy.”⁹

If a Web site is a bona fide protest site that does not derive revenue from its existence, it constitutes legitimate use of the domain and can therefore remain with the party that registered it. One decision specifically states that the UDRP is not a way to “insulate” trademark owners from criticism.¹⁰ The same panel that claimed that any beginning linguist would be able to distinguish a “sucks” domain from the official brand site also had some choice words for complainants trying to transfer legitimate gripes sites. In its decisions, the panel stated that, “Complaining has long been a favorite pastime of humanity and the Internet has not changed that” and “[the] Respondent is actually using Complainant’s trademark correctly because Respondent is referring to Complainant and its business.”¹¹

It is important that brand owners understand fair use and what it means for their brand enforcement strategy. Cybersquatters and many legitimate third-party registrants are well read on policy and understand both their vulnerabilities and a brand’s. For example, the owner of virginmediasucks.com has set up a gripe site about Virgin Media’s service, and has included a note to lawyers at the bottom of his site declaring that he is “very well aware of WIPO regulations and trademark laws” and asks that they not send any “pointless threatening letters.¹² Brand owners should be just as aware of their rights, so that they can properly enforce their brand and avoid allocating resources to UDRPs that won’t be resolved in their favor. If brands are armed with sufficient regulatory knowledge, perhaps they can preempt the need for a UDRP altogether and register valuable sites that, once lost, are unlikely to be regained.

The UDRP decision surrounding “salvationarmysucks.com” is interesting because it seemed as though the Respondent did express a legitimate interest in developing the site in precisely a way that would insulate it from complaint. Upon its registration, the Respondent sent the Complainant (the Salvation Army) a letter stating that his intentions were to have the Web site act as a “free speech” zone where criticisms of the Salvation Army could be posted. This letter was sent in July of 2000, well before the March 2001 filing date of the complaint. However, the registrant’s offer to sell the domain to the Complainant in return for silence was enough to disprove his claims of ‘legitimate interest.’

In the Respondent’s letter, it was written that he “will agree not to publish a derogatory article singularly about [the Complainant’s] client with regard to this topic, if this matter is handled as [he has] outlined in this letter."¹³ The Respondent goes on to attempt to dissuade the Complainant from filing a complaint, by claiming that litigation will cost more than just buying the domain according to the terms outlined in the letter. As the panel in Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico points out, “it is as if a newspaper were to approach the potential subject of an adverse investigative report to propose that for an appropriate fee the report could be avoided. This would not be characterized as ‘free speech’ activity. It would rather be characterized as ‘extortion’.”¹⁴

While our UDRP decision data set provided insight into what Web site content can be considered proof of legitimate interests, it also provided a glimpse into what the absence of content can prove. There was one “brandsucks” UDRP filed for a domain name that was not developed into a site. According to the panel of Quilogy, Inc. v. Rodney Ruddick, the fact that the Web site was undeveloped constituted “passive holding” of the domain, which “does not give rise to rights or legitimate interests.”¹⁵ The domain was ultimately ordered for transfer.

This question of whether the mere registration of a domain name without any active use can possibly constitute a lack of legitimate interest or bad faith registration has been a point of contention among UDRP panels. There are panels that believe that it is bad faith unless there is active use that rises to the level of a right or legitimate interest, but others feel that the UDRP requires active use of the site in order to judge the validity of a complaint. Many cybersquatters look to avoid enforcement by leaving their domains undeveloped because of those panels that require an active use of the site to consider intent. All of the sites in our data set that are owned by Dan Parisi, for example, do not resolve. These panels may also cause brands to doubt the utility of filing a complaint and make them hesitant to pursue infringements. However, in light of decisions such as Quilogy, Inc. v. Rodney Ruddick, infringements of domains—especially those committed by serial infringers—can be pursued with the UDRP.

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