Companies should proactively guard against spiteful customers skewering their brand with pejorative Web domains and respond with public relations when it does occur, advises an intellectual property lawyer – and resist the temptation to serve a cease and desist letter.
As other companies that have dealt with so-called “gripe sites” can tell you, any strong-arm legal letters sent to an angered customer operating a Web site with the sole purpose to criticize will almost certainly ended up posted for everyone to see. Take for example this letter from Samsung Corp. asking for the removal of images and details of upcoming phone releases in January 2008 posted to Mobiledia.com. Or when Forever 21 had its letter demanding fashion blogger Rachel Kane take down her satirical WTForever21.com was posted online and quickly spread virally in June.
When company executives learn their trademark is being undermined by another Web site like this, their first reaction is often to want to bring down the hammer, says Shane Hardy, a lawyer with Cassels, Brock & Blackwell LLP. But now that you can expect that letter to be posted on the Web site you’re complaining about, the game has changed.
“It might seem like a reasonable approach at first blush, after all that’s what trademark holders have done for years and years and years,” he says. But “default litigation reactions should not be your default reaction to a gripe site. You have to step back and take a measured approach.”
First, be proactive and register every domain name that could obviously be used to mock your company, Hardy advises. Simply use the formula of your company name plus some obvious pejorative terms and consider all the top-level domains (dot-com, dot-net, dot-org, etc.) Ford Motor Company did this effectively to protect its brand, and it’s not too expensive. Also have people on staff or hire an outside service to monitor the Web for domains registered that may be used to attack your company. The sooner you know, the better.
Also have a Canadian trademark registration, a U.S. registration, and a registration in every other country you do business, he says. Without a registered mark, it’s hard to argue you have a legitimate claim to a Web domain.
Of course, with many options to create an online presence these days, you can’t guard against every possible attack vector. The difficulty will only increase once the Internet is opened up to new top-level domains beginning next year, making for limitless new domain name possibilities.
“The ability of gripers has gone ballistic. It hasn’t got any better or any easier,” Hardy says. “Blogs, Facebook accounts, who knows what’s coming next?”
If a griper does get to the point of launching a critical Web site, consider non-legal approaches first, Hardy says. Consider the advice offered up by some former gripers.
“Do something crazy and reach out and contact the griper,” he says. “What was it that caused them to launch into this tirade? There’s some anecdotal evidence that this has worked.”
Or perhaps the best response is to do nothing at all, Hardy says. Approach it as a public relations problem and consult with this department at your firm. Perhaps the gripe site isn’t a big problem because it is not getting much traffic – the Internet is becoming somewhat desensitized to this.
Sometimes a gripe site could be shut down on something as simple as a technicality. Try reading the terms of service of the registrar that the site is registered with – if the griper hasn’t provided contact information, that may be grounds for the registrar to deny service after a period of giving notice. There could also be other ways to make life difficult for the griper.
For companies seeking to claim rights to a Web site with a Canadian registrar, the Canadian Internet Registration Authority (CIRA) offers a Domain Name Dispute Resolution Process, referred to simply as a CDRP. It is offered through two service providers – one in Vancouver, and one in Toronto.
Hardy points to one case where the process ended in favour of a company being targeted by a gripe site. McKee Homes Ltd. took on Gerlinde Honsek for registering mckeehomes.ca and planning to use the site to detail the home buying experience from a customer’s point of view. “The new website will provide a forum where all Canadian consumers can detail their buying experience with their home builders,” read the site, underneath an “under constructuction” notice.
It was an interesting case that pitted free expression against a trademark owner’s rights, Hardy says. These can be the toughest cases to win for a company. But in the end, the panel found McKee Homes complaint to be valid, and awarded the company control of the domain.
The panel found the domain name to be confusingly similar with the established McKee Homes trademark, and also found the registrants were acting in bad faith. Honsek was “competing with the Complainant for Internet traffic by capitalizing on consumer confusion,” states the panel’s written decision.
Companies will only have a harder time dealing with Internet-based retaliations from aggrieved customers as new top-level domain addresses open up, the laywer says. It’s possible a company could start a business model around gripe sites with a dot-sucks domain, for example.
“We have to keep this top of mind and worry about it going forward,” he says. “Five or six years ago, I wasn’t worried about what might show up on someone’s Facebook Page.”
Still, the most success fighting gripe sites will come from non-legal solutions, Hardy says.
