Wednesday, October 22, 2003

When your website is designed to criticize a company online, name your site

The Detroit Free Press reports in an article Canton woman caught in web of cyber justice, that a disgruntled customer published a disparaging website about a company and used that company’s name as the URL. The company apparently did not register its name as a trademark at the federal level, and the customer won at the District Court level. The company has appealed to the Sixth Circuit.

My Prediction: The Sixth Circuit will likely overrule the district court.

Had the customer named the site she likely would have won based on previous case law that free speech allows for critical or satirical websites and such names do not dilute trademarks(see Ford Motor Co v Enters, 177 F Supp 2d 661 (ED Mich 2001)).

Instead, she simply used the company name, and this likely will prove her undoing. In E. & J. Gallo Winery v Spider Webs, Ltd, 286 F3d 270 (5th Cir, 2002), Spider Webs registered the domain name and made it into a site that disparaged the wine maker. The court held that this violated the Anticybersquatting Consumer Protection Act, 15 USC 1125 (ACPA), as it was confusingly similar (in fact the same) as the trademarked name and it was in reality established for commercial reasons.

The ACPA declares that such an activity is improper. The act also prohibits the registration or use of a domain name that is the same or confusingly similar to a mark that was distinctive or famous at the time the name was registered.

The interplay between the fact that she did not create it for profit, and that the company name was apparently not registered federally, as well as the role that Michigan’s trademark and servicemark dilution laws may play in the case should make this an interesting cyber-case to watch.

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