Gripes, impersonation, and the UDRP
For the most part, the Internet is a wilderness of free speech, properly so, I think. Sites like RipOffReport.com and the legion of consumer advocacy sites like it offer consumers a place to vent their frustrations about the companies they’ve dealt with, whether those complaints or gripes are really justified or not. That’s been businesses’ chief complaint about this activity — at worst, unfounded complaints can be fostered by competitors to tarnish or damage their brand and business, and the sites that host the complaints are both shielded from liability for the content and offer corporate sponsorship services (for a substantial fee) to help a company maintain control over its image, clean up the complaints, what have you. I’m not denigrating the consumer advocacy part of this, I’m merely presenting the other side of the issue; as with most things, I think the truth is somewhere in the middle. Certainly some of these sites have purely pecuniary motives and care not a whit for the consumer in reality, they merely want to extort money from business, and certainly there are many, many businesses (“too big to fail” banks, for example!) who care not a whit for their customers, and are only after a quick sale.
In any case, it’s fairly well settled that gripe sites are mostly immune from attack from a trademark perspective. But the UDRP offers another avenue, to obtain transfer of a domain name: all a complainant has to do is satisfy the three prongs of the UDRP. In certain situations, this might be easier than you might think.
For example, in looking at WIPO’s Overview of WIPO Panel Views on Selected UDRP Questions 2.0, see #2.4. Note that
There are many UDRP decisions where the respondent argues that the domain name is being used for a free speech purpose but the panel finds that it is primarily a pretext for commercial advantage.
So one (probably large) category of these sites is immediately removed from the general defense of a legitimate use. Next, there are two other views about these domains:
In the event that a domain name identical or confusingly similar to a trademark is being used for a genuine noncommercial free speech website, there are two main views. In cases involving only US parties or the selection of a US mutual jurisdiction, panelists tend to adopt the reasoning in View 2 (though not universally). . . .
View 1: The right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant’s trademark. That is especially the case if the respondent is using the trademark alone as the domain name (i.e, <trademark.tld>) as that may be understood by Internet users as impersonating the trademark owner. Where the domain name comprises the protected trademark plus an additional, typically derogatory term (e.g., <trademarksucks.tld>), some panels have applied View 2 below.
Relevant decisions:
(omitted)
View 2: Irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is fair and noncommercial.
Relevant decisions:
(omitted)
Additional considerations: Some panels have opted to assess questions of whether a respondent may have a legitimate interest in using a trademark as part of the domain name of a criticism site by reference to additional considerations, including whether: (i) the domain name has been registered and is used genuinely for the purpose of criticizing the mark owner; (ii) the registrant believes the criticism to be well-founded and lacks intent for commercial gain; (iii) it is immediately apparent to Internet users visiting the website at the domain name that it is not operated by the owner of the mark; (iv) the respondent has refrained from registering all or most of the obvious domain names reasonably suitable for the owner of the mark; (v) where appropriate, a prominent and appropriate link is provided to the relevant trademark owner’s website; and (vi) where there is a likelihood that email intended for the complainant will use the domain name in issue, senders are alerted in an appropriate way that their emails have been misaddressed. (emphasis added)
Where a complainer registers a domain name that consists only of a trademark, without the “sucks” or other term appended (or prefixed), there may be a high likelihood of confusing similarity and an inference of bad faith activity. Essentially, the argument that the Complainant would make is that the registrant is impersonating me or my brand in order to unfairly tarnish it. This isn’t an anti-free speech argument, of course, because there is, at root, an element of fraud inherent in this kind of impersonation, and fraud isn’t protected speech. But note: don’t be confused by actual parody or satire, which would probably be okay.
So, if the facts of your case fit into this category, I think you’ve at least got some solid arguments to make under the UDRP for transfer of the domain name. However, the bad faith argument is still complex, and depends on a lot of factors, so be sure to seek guidance on that point.
Tagged bad faith registration and use, confusion, fair use, gripe sites, rights or legitimate interests, WIPO