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Misusing Pejorative Plus Trademarks for Commercial Gain or to Denigrate a Competitor

Trademark + pejorative signaling criticism of the goods or services of a trademark holder are a powerful irritant. If the composition complies with the privilege of fair use a pejorative is an affirmative defense. However, the rules are unaccommodating for any infraction. This has been illustrated in a number of UDRP cases unsuccessfully defended. In HBT Investments, LLC d/b/a Valley Goldmine v. Christopher D. Bussing, D2010-1326 (WIPO September 24, 2010) the pejorative is a simple “sucks”, <valleygoldminesucks.com>, but the Respondent (after a successful mandatory injunction action) was revealed to be a competitor. A more factually complicated case was recently decided in a Nominet proceeding, Ryanair Limited v. Robert Tyler, 00008527 (October 7, 2010)(scroll to bottom of page) suffixing the term “I hate” to the trademark, <ihateryanair.co.uk>. Both Respondents forfeited their domain names, but for different reasons.

The purpose of a pejorative domain name is to call attention to itself and to engage the Internet user in communicating dissatisfaction. In this respect, the Respondent in HBT Investments is correct in arguing that “no reasonable consumer would think that a domain name with a pejorative word attached to a trademark would believe that the associated website was operated by the trademark owner.” And, for this reason, a domain name that leads to a faux website is liable under the theory of initial interest confusion. Certainly, the Respondent in Ryanair makes no bones about admitting that he comes not to praise Ryanair for its services but to bury it.

As a general rule, a trademark holder has no actionable claim against a respondent complying with paragraph 4(c)(iii) of the Policy and (although there are differences in wording and standards) the comparable provision in the Nominet policy. Public policy grants respondents a legitimate interest in expressing their dissatisfaction as long as the website is not designed for commercial gain. In HBT Investments the commercial gain (which may not be measurable in dollars) accrues to the Respondent from its denigration of the Complainant. Denigration per se is not an element of bad faith; but it is abusive when the Respondent’s purpose is to derive  a commercial benefit. The question is, how much “gain” from a legitimate free speech site warrants forfeiture? The answer (at least under UDRP and Nominet) is very little.

Ryanair is different because (clearly) the Respondent’s “primary purpose” was to deliver his message. Citing an earlier case, the Panel noted that “[p]rotest sites classically carry personal, emotive versions of events, often expressed in deliberately shocking or vitriolic terms intended to attract attention to the cause. The statements may well be libelous in legal terms, but it is unlikely to be possible or appropriate for the Expert to determine in the context of the paper based DRS whether the statements are in fact true so that the defence of justification would be available.” However, the Respondent also received some (but very minimal) commercial gain. The Panel’s view of this is generally consistent with UDRP decisions in finding for the Complainant, although the result may very well be different under the ACPA. Nevertheless, the Panel view in Ryanair is worth quoting. Criticism sites should be pure. In deciding on forfeiture, the Panel held that any commercial use falls afoul of the DRS Policy, although

it should be made perfectly clear that if the commercial links had never appeared on the website then the Expert would have had no hesitation in finding for the Respondent on the basis that he was (and now is) making fair use of the Domain Name by pointing it to a non commercial website operated solely in criticism of a business.

According to this view even minimal commercial use has consequences. The domain name is not forfeited for the speech content of the website but for its impurity of purpose. “Websites that are not operated solely in criticism of a person or business are not necessarily completely excluded under the Policy, but it is less likely that they will be seen as fair.”

Levine Samuel, LLP <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com

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