"Sucks" Domains

[d97]

Hi all,

I'm wondering if it's illegal to register domains with "sucks" in it...like hpsucks.com? The content is going to obviously be related to the domain name. A friend of mine wants me to by a domain and build a site for him...just wondering if the actual company will come after me and try to sue...

Thanks

[copper]

"Sucks" Sites Don't Violate US Trademark Law"

We hold today that the noncommercial use of a trademark as the domain name of a website - the subject of which is consumer commentary about the products and services represented by the mark - does not constitute infringement under the Lanham Act.
So says the 9th Circuit in Bosley Medical Institute v. Kremer, decided yesterday.

It's important to keep decisions like this in mind when dealing with WIPO's Borg-like attempts to route around US trademark law by trying to "restate" or "explain" the UDRP, the arbitration-like system which ICANN has imposed on domain name disputes. WIPO is trying to get its arbitrators to think that either they or WIPO are the source of the substantive law that applies in domain name disputes. But that's not what the UDRP says -- it clearly refers to the national law that would be applied against a defendant in a court case. WIPO opposed that rule during the drafting of the UDRP but was forced to accept it. It's been chipping away at it ever since.

Notice "noncommercial use".

Here are some better known gripe sites.

http://www.walmart-blows.com/
http://www.paypalsucks.com/
http://www.bestbuysux.org
http://www.oreilly-sucks.com/
http://survivorsucks.com/

[INFORG]

Never a guarantee that they can't come after you, but sucks sites are usually fairly safe as long as you follow a few simple rules.
1. Non-commercial - no ads, products for sale, etc.
2. Be careful with the copyrighted images, logos, etc.

A good resource and some additional advice about how to stay out of trouble with this type of site is at:

www.eff.org (Electronic Frontier Foundation)

Worth checking out that site for any developer, blogger, or domain speculator.

[rns621]

i work for a small phone system tech shop that registered avayasucks.com back in 2001 and i'm not exactly sure if avaya threatened legal action, but avaya has it now. Avaya tends to keep a pretty close watch on us as it is though and it is obviously a TM....

[draggar]

I think Verizon has filed some WIPOs in the past (and/or sued) and won many domains in regards to their company and products.

A lot of times, though, people get abmitious and start throwing ads on the site which is what gets them in trouble.

[Gerry]

Many of these "customer complaint" sites have been protected by law.

Yes, they may warrant unwelcomed legal action.

The most infamous example that comes to mind involved Ryan Air. Ryan Air lost that case.

[d97]

Great, thanks for the responses. I'm assuming the laws would be the same in Canada towards these actions, correct?

[d97]

While i'm on topic, is it illegal to take pictures of the business and post them on this particular domain?

[draggar]

While i'm on topic, is it illegal to take pictures of the business and post them on this particular domain?

In the US if it is in a public place / easily viewable from the public (like most B&M stores) then yes, it is legal (if it wasn't then Google maps would be in a heap of trouble) - just be careful about captioning etc..

Also, your biggest legal issue would be with complaints of slander (well, libel since it will be written). Stick to the facts and if you post an opinion, clearly state it as an opinion.

Say you take a picture of a McDonalds at 5th Ave and Main Street.

"This is the McDonalds at 5th Ave and Main St." would be a legal caption.
"This is the McDonalds at 5th Ave and Main St where I got a horrible meal" would be a legal caption
"This is the McDonalds at 5th Ave and Main St where the food sucks" could be considered libel.
"This is the McDonalds at 5th Ave and Main St where I think the food sucks" would most likely be legal.

(Please note: This is only used as an example, I picked "5th Avenue" and "Main Street" as street examples - if there is a McDonalds somewhere on 5th Ave and Main Street - this post is NOT about them).

[stewie]

I won't be eating at McDonalds on 5th and Main St.

[Gerry]

Great, thanks for the responses. I'm assuming the laws would be the same in Canada towards these actions, correct?

I would be leery to ever assume that laws are the same, courts are the same, and judges would rule the same in all cases.

For what its worth, pursue at your own risk...

[marcorandazza]

Hi all,

I'm wondering if it's illegal to register domains with "sucks" in it...like hpsucks.com? The content is going to obviously be related to the domain name. A friend of mine wants me to by a domain and build a site for him...just wondering if the actual company will come after me and try to sue...

Thanks

The first issue is whether or not your website will really be to criticize the company or whether the "sucks" is just a pretext. I have seen domainers who think they are cute, registering a TM + Sucks and saying "but it is just free speech." For example, I once represented Golden Palace against a fool who registered goldenpalacesucks.com and forwarded the domain to her eBay store where she sold cowboy paraphernalia. That was not "free speech." Of course, upon getting a demand letter from us, she forwarded the domain to "gamblers anonymous," but by then it was too late -- the pretextual nature of the use was already established.

Of course, there are less blatant ways to engage in pretextual use. For example, you could register TM + Sucks and then put up a BS page, throw some PPC links on it, and try and argue that it is a legitimate criticism site. But, if the primary goal is traffic, not criticism, most triers of fact can see through that -- even when it is well masked.

So, lets presume that you are going to launch a legitimate criticism site. A legitimate criticism site will usually be protected in US courts. Fair use of a trademark includes using it to criticize it. That doesn't mean that they won't be able to find an unethical bottom feeder to sue you, but you would at least feel comfortable that after you blow a ton of money defending yourself, you will get a piece of paper that says you were right. You could, in very egregious circumstances, collect attorneys fees from the plaintiff -- but I would never presume that this will be the outcome.

Lets talk UDRP now:

When it comes to "Sucks" domains (and other criticism domains) there is a split of authority in the WIPO decisions. See “WIPO Overview of WIPO Panel Views on Selected UDRP Questions,” at Paragraph 2.4.

View 1 states: “The right to criticize does not extend to registering a domain name that is identical or confusingly similar to the owner’s registered trademark or conveys an association with the mark.”

View 2 states: “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 the use is fair and non-commercial.”

View 2 is the prevailing view of American panelists and panels that apply American law to UDRP proceedings. View 1 seems to be more popular with international panelists and panels that apply European law.

Accordingly, you may still get tapped with a UDRP complaint, and if you get tapped with one, you may wish for an American panelist.

---------- Post added at 08:05 PM ---------- Previous post was at 08:04 PM ----------

"This is the McDonalds at 5th Ave and Main St where the food sucks" could be considered libel.

Wrong.

[owntag]

I run a sucks site for years, no commercial ads, no issue.

[HolyRoller]

I guess you need to balance the risk with the potential reward. Yes if done correctly there is a reasonable chance you will have no issues, but with something like this there is always a risk. Also financial rewards may be very little if any.

If you get pleasure out of letting people know about bad service you and others have received that may be enough to justify the time and expense spent on the domain/site.

[jberryhill]

"This is the McDonalds at 5th Ave and Main St where the food sucks" could be considered libel.
"This is the McDonalds at 5th Ave and Main St where I think the food sucks" would most likely be legal.

Both of those are fine. Since there is no objective measure of whether the food "sucks", then saying "where the food sucks" cannot be an objectively false statement, and is inherently a statement of opinion.

If you said, "where the food contains poison", that would be another story.

[draggar]

Both of those are fine. Since there is no objective measure of whether the food "sucks", then saying "where the food sucks" cannot be an objectively false statement, and is inherently a statement of opinion.

If you said, "where the food contains poison", that would be another story.

Ah, thank you for the clarification.

But saying "...where my meal tasted like it was poisoned" or "...where I got food poisoning" (assuming you did get some sort of food poisoning) would be OK?

[jberryhill]

Yes.

But, in general, I can never understand the fascination with "-sucks" domains among domainers. Now, yes, THIS thread was started by someone who has been asked to design a site. However, the time that domainers spend obsessing over this topic is way out of proportion to its relevance.

[fab]

But, in general, I can never understand the fascination with "-sucks" domains among domainers.

Probably Freudian.