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If you’re a well-known company or a prominent “dot-com,” odds are that someone has registered a domain name using both your trademark and a less than flattering term, such as “sucks.” And if they’re using the site to offer the public a heaping helping of anger and sarcasm directed at your company then — congrats — you’re the target of a “hate site.” (Just think of it as the Internet equivalent of a rite of passage.) Targets of hate sites, however, hardly take it as a compliment or a joke. In fact, some have filed suit, claiming trademark infringement and dilution. The formula for a hate site is easy and relatively standard: Start with a recognized trademark, add “sucks” and end with dot-com. Popular examples include disneysucks.com, walmartsucks.com, aolsucks.com and chasebanksucks.com. (Fair warning: chasebanksucks .com features some less-than-tasteful animation.) Variant formulas also exist, such as etradestinks.com and other “colorful” — in other words, unprintable — verbs. But “suck” remains the norm, and the variants don’t garner the same amount of disgruntled traffic. More than 2,000 registered domains end in “sucks.com.” To find out if your company is listed, you need to run what’s known as a “Whois” search. “Whois” is a database maintained by Network Solutions; it lists all registered .com, .net and .org domains. You can check specific domain names by running a “Whois” search at NetSol.com. But I recommend Whois.net, an unrelated site that offers a more searchable interface of the Whois database. Whois.net enables you to run a search of a certain trademark to generate a list of all domains. For instance, a search of “jackinthebox” reveals 11 domains, including jackintheboxsucks.com. Suppose your search turns up a hate site (or other infringing domain) using your marks. What can you do about it? Here are a few options: THROW MONEY AT IT You can always buy the domain at a negotiated price. It’s a sure-fire solution, but potentially costly. Plus, purchase of the domain may be viewed as an invitation to other would-be Internet consumer activists to line up at your door with their hate site variant in hand. (If you’ve ever thrown bread to sea-gulls, you know how this works.) Throwing money at a “cybersquatter” isn’t always preferable, but it is effective. As always, threatening litigation remains a popular alternative. The success of actual litigation, however, is debatable. The few published cases addressing hate site suits tend to favor the right to free speech over potential trademark concerns. The most well-known hate site case is Bally’s Total Fitness Holding Corp. v. Faber, (1998), a U.S. District Court for the Central District of California opinion. As alleged in the complaint, Andrew Faber, an irate customer, tried to cancel his Bally’s membership only to be charged the entire membership fee again. Faber alleged that his months of frustration led him to launch a site called Bally’s Total Fitness Sucks. The top of the page featured the trademark Bally’s logo with the word “sucks” scrawled across it, the opinion noted. Bally’s sued, alleging trademark infringement. But infringement requires a showing of consumer confusion, and the court rejected Bally’s claim since no consumer would associate Bally’s with “Bally’s Sucks.” Bally’s also asserted a claim for trademark dilution, which does not require a showing of confusion, but focuses on “blurring” caused by overuse of a mark. The court bounced Bally’s dilution claim since Faber’s site made no commercial use of the mark — a required element of dilution. In fact, the court went out of its way to emphasize Faber’s free-speech rights and encouraged him to seek summary judgment against Bally’s. The Bally’scase is only an example. There may be other circumstances involving hate sites that warrant a trademark infringement or dilution action. The recent enactment in November 1999 of the federal Anticybersquatter Consumer Protection Act might also provide ammunition to trademark holders, especially if the hate site owner is looking to make a quick buck by selling the domain name. Nonetheless, the free-speech issues raised in the Bally’scase are sure to play a part in any hate site suit. Litigation raises other issues, too, such as whether the defendant is subject to personal jurisdiction in a convenient forum, not to mention the expenses and time lengthy litigation can demand. But there’s an alternative. ALTERNATIVE DISPUTE REACTION Everyone who registers a domain name automatically agrees to abide by the Uniform Dispute Resolution Policy enacted by ICANN — the group that oversees the Internet’s domain name system. The policy is designed to be cheaper — filing fees can be as little as $750 — and easier than litigation, with minimal forms to fill out. And, since each registrant consents to the policy, registrants can’t play the personal jurisdiction card. But the policy’s biggest advantage is its speed. Decisions are usually handed down within one month. The policy is fairly new; it was enacted on January 1, 2000. In an unscientific survey of three users that have used the policy, it received glowing reviews. (All three also happened to win their respective arbitrations. Feel free to draw your own conclusions.) Visit www.ICANN.orgto read specifics on the policy. You can always beat potential “hate siters” to the punch and register all domain names that are likely targets. Already burned once by chasebank sucks.com, Chase Bank took this preventative approach and registered chasesucks.com and chasestinks.com. When Hewlett-Packard spin-off Agilent changed its name, it grabbed agilent sucks.com. Even presidential candidate George W. Bush registered dozens of sites before he hit the campaign trail, including bushsucks.com and bushbites.com, according to registration information and the Web site wired.com. But spending a thousand dollars on potential suck sites isn’t a cure-all. Need proof? Visit bushsuckz.com, the site that got away. There are, of course, other considerations raised by hate sites, such as public relations. Action against a hate site may raise PR concerns, and the resulting publicity often generates even more traffic to the hate site. Even if you choose not to pursue any trademark claims, there may be other legal issues raised by the hate site, such as copyright or libel. John Patton is an associate in the information technology section of Hughes & Lucein Dallas, and the founder of LawSpider.com, an online resource for attorneys. He may be reached at [email protected], or (214) 939-5450.

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