Using other people's trade marks in 'gripe' sites - 09/09/2008

In the first case, a Mr Patel had registered allostherapeutics.com as a domain name, in order to set up a criticism or 'gripe' site against Allos Therapeutics Inc. These sites are increasingly common - disgruntled customers, suppliers, ex-employees set up sites under domain names that use the target's trade mark in the name, usually qualified by words such as 'sucks', eg michaelbloombergsucks.com Mr Patel was acting from personal motives - there was no intention to make a financial gain.

However, the criticism site was never set up, and Allos successfully applied under the Uniform Dispute Resolution Procedure (UDRP), a process that resolves domain name disputes, to have the domain name transferred into its ownership.

Mr Patel went to court, arguing that the UDRP process infringed his human right to freedom of expression. Allos claimed that Mr Patel had no case.

The court agreed with Allos and gave some useful guidance regarding criticism sites and freedom of expression.

• It was generally in the public interest to allow free speech forums on the internet, and this could include criticism sites.
• It was always difficult to challenge a UDRP decision in the UK courts, as an applicant has to re-argue the case for retaining his domain name, on its merits.
• Where the target's trade mark is used in the domain name of a criticism site, some additional indication in the name that it is a criticism site will help the domain name owner.
• There should be an active criticism website - for example, a mere holding page is unlikely to be sufficient.
• It should be clear from the site's contents that it is a criticism site.

The decision indirectly flagged up that a trade mark owner bringing a UDRP case against a domain name owner could be accused of making 'groundless threats of infringmenet proceedings' which is unlawful under UK trade mark law.

Recommendations

• Monitor the domain name registries for domain names that comprise, include or are similar to your trade marks - eg your business, brand and trading names.
• Monitor the internet for criticism sites that target your business.
• Consider using commercial services that will do this for you.
• Take early action against the owners of the domain names and/or criticism sites.
• Take advice to ensure you are not inadvertently making 'groundless threats'
• Operators of critisim sites must also take care not to fall foul of libel laws

Related Resources

in the Muckle LLP Resource Centre

• ICO guidance on managing a data security breach
• Case law: registered trade mark not infringed by sponsored online search results
• Owners must act faster as trade mark registration opposition procedures change
• European case shows that research using a third party database can infringe their 'database right'