Parody sites sucked into cybersquatting squabbles

In January, the Internet Corporation for Assigned Names and Numbers (ICANN) instituted a new resolution policy for domain name disputes, ordering conflicts into binding arbitration. Since then, arbitrators have sided with trademark holders in nine out of 11 domain name disputes involving "-sucks" variations on corporate names, according to records on ICANN's Web site. The two cases out have not yet been resolved.

Despite a growing number of decisions on "-sucks" registrations, domain name watchers say it is too soon to tell whether arbitrators are biased against parodists, noting that no clear-cut precedent has come down for or against the right to register spoofs of trademarks.

"There just hasn't been a really totally clear-cut case yet where someone registers a protest name without any commercial interest," said Dan Tobias, who runs a Web site that follows legal and policy developments involving domain names.

Tobias said ICANN's dispute procedures have tended to favor parties that challenge domain name registrations, which are usually corporations. But he said many defendants lose because they do not bother to oppose the action.

In the first "-sucks" dispute decided under the new dispute policy, an arbitration panel on May 31 ordered respondent Kenneth Harvey to transfer five variations on the Wal-Mart name to the company, including "walmartcanadasucks.com" and "walmartpuertoricosucks.com."

In his defense, Harvey cited two domain name lawsuits in which the courts refused to order defendants to take down "-sucks" Web pages: Lucent Technologies v. Lucentsucks.com and Bally Total Fitness v. Faber.

But arbitrators hearing Harvey's case found that neither applied, reasoning that the judge had rejected the Lucent case on technical grounds, and that the Bally case did not involve a domain name registration but simply the use of "ballysucks" on a Web site.

In the decision, the arbitrators emphasized that their findings were not meant to serve as broader precedents on the validity of "-sucks" domain names.

"The Panel stresses that this decision does not address legitimate freedom of expression sites established by parties critical of trademark holders," the decision reads. "This decision is directed to a blatant case of abuse of the domain name registration process--no more, no less."

New strategies
The run on "-sucks" domains comes as corporations are employing new tactics to thwart online critics, including registering potentially offensive domain names themselves.

In November 1999, Congress passed the Anti-Cybersquatting Consumer Protection Act, which made it easier for companies or powerful individuals to assume domain names that include trademarked brands or names. It made it more difficult for individuals to retain domain names that included references to corporations or brands such as Microsoft, Coca-Cola or Jeep, as well as to celebrities such as Julia Roberts--no matter how much the individual had paid for the name, what they did with it, or how long they had owned it.

Tactics such as claiming potentially offensive variations are being used in a bitter land dispute under way in Southern California, according to environmentalists who are battling to keep Washington Mutual Bank from developing the Ahmanson Ranch area outside of Los Angeles.

A group called Save Open Space registered the domain "ahmanson.org" to oppose development on the plot, which they say is home to endangered species of plants and animals. But Washington Mutual, which wants to build some 3,000 homes on the plot, has since launched a cyberattack on the group, environmentalists say.

In addition to trying to take away the environmentalists' domain name, the developers have registered a handful of potential protest domain names, including "saveahmansonranch.com" and "stopahmansonranch.com."

Washington Mutual brought its case before the World Intellectual Property Organization (WIPO), one of several arbitrators approved by ICANN to hear domain name disputes.

While most cybersquatting disputes involve people who register a famous name and then sell it to make a quick buck, environmentalists are complaining that this dispute represents a classic case of "reverse-cybersquatting."

"I think it's really an attempt by (Washington Mutual) to stop our freedom of speech," said Paul Nicholson, a Save Open Space volunteer who created the Web site. "We're not using (the domain name) in any commercial sense. We're using the name Ahmanson because it relates to an area as it's known to the public."

Tim McGarry, vice president of corporate public relations at Washington Mutual, said the company acquired H.F. Ahmanson and Co. in 1998. The Ahmanson land company is now a subsidiary of Washington Mutual, so the bank owns the Ahmanson Ranch region.

"The key factor here is that this is trademark infringement, which we don't believe we can let stand," McGarry said. "It could harm our ability to market houses on the Ahmanson Ranch over time, and so we want to get our trade name back."

McGarry said Washington Mutual also filed another case with the WIPO regarding the names "ahmansonranch.com" and "ahmanson-ranch.com." The owner of those names is Vince Curtis, former assistant director of Save Open Space.

Neil Smith, an intellectual property lawyer with Limbach & Limbach who also serves as an arbitrator for domain name disputes with WIPO, said reverse-cybersquatting is not the issue.

"The issue before WIPO is whether the registrant of the domain is registering in bad faith, and that's really the issue they're supposed to decide," Smith said. "It sounds like (Save Open Space) would have a fair reason to want to use the domain name that would not typically be cybersquatting."

Other cases in the wings
Trademark attorneys say the issue of fair use has become a major battleground in domain name disputes. While offline companies have strict limits over the extents of their trademarks, the same is not necessarily true in cyberspace.

"Non-Internet companies have to deal with 42 categories of trademarks where they can't necessarily assert a claim," said G. Gervaise Davis III, an attorney with Monterey, Calif.-based law firm Davis & Schroeder. "United Airlines can't tell United Donuts they can't use their mark; it doesn't apply because they are in different businesses."

Davis added that the same is not true in cyberspace, where corporations have hastened to lay claims in all markets without regard for limits established offline.

He said proposals to expand the number of domain name categories--such as top-level domains ".com," ".net" and ".org"--are being considered to help alleviate the problem. But Davis said he believes that new top-level domains will quickly be colonized by trademark holders, creating another set of problems.

Domain name watcher Tobias agrees.

"People are in a mind-set now that they feel entitled to every possible variation on their trademark," he said. "People will rush to register their trademarks in all the new (domain categories)."

Still, he said, protesters and parodists are best served by responding with humor to the new run on domain names.

If recent history is any example, attempts to preempt parodists face a steep uphill climb.

Bell Atlantic, for example, which became Verizon Communications upon its merger with GTE, owns the registration for "verizonsucks.com."

That hasn't stopped parodists, however. In May, Web publisher 2600.com registered the domain name "verizonreallysucks.com"--and was hit with a letter from Verizon's legal team asking it to hand over the domain.

2600 responded by registering the domain name "VerizonShouldSpendMoreTimeFixingItsNetworkAndLessMoneyOnLawyers.com."

A Verizon spokesman said the dispute was a misunderstanding. He said the company dropped the matter after it discovered the name had been registered by a publisher and was not an attempt to profit off the name.

But he said Verizon is actively pursuing trademark infringers and is in discussions with some 400 alleged violators of its trademarks.

"Some are pejorative, but some are spelling mistakes," said Verizon spokesman Larry Plumb. "But most are attempts to cash in on the mark by selling it. Congress passed anti-cybersquatting legislation for a reason."