Wednesday, 23-Jul-2014 06:54:19 CDT


Frequently Asked Questions on Domain Name Disputes & Issues



Many people have written regarding domain name issues and copyright/trademark law. This site is allowed to use the "paypalsucks.com" and "nopaypal.com" domains (and others) because it's free speech and there are exceptions to the trademark/copyright laws that allow for such use. (Satire, parody, criticism, news gathering & social commentary value, etc.) If you are involved in a domain name dispute, you can use the sites below to learn about the law and maybe find an attorney to help you. Just realize, not every domain is protected. It has to be used, it has to be used in a way consistent with the law, and you should have the site up and running immediately, not wait till their attorney contacts you.

Since putting up this site 5+ years ago, I've become very knowledgeable about this area of domain name disputes. So if you have found yourself in a similar situation, here is my advice:

  1. I'm not an attorney. None of this is legal advice, but only general advice. Use the links above to find a real attorney to help you.

  2. This advice applies only to "Companysucks.com," "CompanyBlows.com," "IHateCompany.com," etc. type domains.

  3. When you register the domain, put up a site immediately. The more you put into the site, the better your case is to defend it. A page of links is a start, but don't depend on it. You should have more. Forums and guestbooks are required in my opinion. You need to be able to let others have their say too. Thus, not only does the domain in question allow you your freedom of speech, but it also facilitates that right in everyone, and that pretty much guarantees a First Amendment defense success.

  4. Always state your gripes directly and without a lot of emotion. Eliminate the cursing and vulgarity if you want to be taken seriously. Don't put up a naked picture of a person with the CEO's head superimposed on it. Very bad form.

  5. Read the sites listed above. There are a lot of laws in your favor. In fact, the only sites I'm aware of that have been taken down are those that didn't respond to the WIPO complaint or threat letters from the lawyers, and those that simply redirected the domain to a porn site.

June 2002 - PayPal's attorneys send threat email!

Quote:

    We are intellectual property counsel to PayPal, Inc. of Palo Alto, California. As you are well aware, PayPal provides financial services under the PAYPAL name and service mark and owns and operates the website at . Our client's name, service mark and website are among its most valuable assets.

    We have recently been made aware of your operation of two websites, and , that infringe our client's service mark rights in the PAYPAL mark. Printouts of your websites are attached to the confirmation copy of this letter. We further understand that these websites provide a forum to criticize PayPal, Inc. Our client respects your right to do so--provided your websites do not contain any false, disparaging or defamatory statements. We must remind you that any such statements contained on your websites are actionable and can subject you to liability.

    Regardless of your purported mission, your use of our client's PAYPAL mark in connection with the operation of websites and in domain names constitutes trademark infringement. Quite simply, use of the PAYPAL mark in a commercial manner is not protected free speech. It is quite evident from your websites that you are profiting off of the PAYPAL mark by selling banner advertisements, offering competing financial services, and using your site to attract PayPal's customers for your own commercial gain. For such infringement, you can be held liable for monetary damages (tripled), an injunction and our client's attorneys' fees.

    On behalf of our client, we must insist that you immediately cease all further use of the PAYPAL mark and transfer the domain names to our client. We further demand that you provide an accounting of the profits that you have received in connection with your operation of these websites.

    Your swift and full cooperation would enable us to resolve this matter quickly and on an amicable basis. Please contact me as soon as possible, and no later than June 7, 2002, so that we may facilitate a prompt resolution of this matter.

    Very truly yours,

    Anthony J. Malutta
    TOWNSEND and TOWNSEND and CREW LLP
    Two Embarcadero Center, 8th Floor
    San Francisco, CA 94111-3834
    Tel: 415.576.0200
    Fax: 415.576.0300

Here is our attorney's answer:

    June 7, 2002

    VIA FACSIMILE AND U.S. MAIL

    Anthony J. Malutta, Esq.
    Townsend and Townsend and Crew
    Two Embarcadero Center
    Eight Floor
    San Francisco, California 94111

    Re: NoPaypal.com and PayPalSucks.com

    Dear Mr. Malutta:

    I represent the owner of the website PayPalSucks.com, and he has referred to me your letter of May 28, 2002. Your assertions, which are obviously designed to bully my client into shutting down a service where people engage in protected speech, lack merit.

    First, your allegation that statements on my client’s websites are “false, disparaging or defamatory” are actionable establishes that you are unfamiliar with the law of defamation. No one including PayPal, has a claim against my client (or anyone else) unless, at mininum, the statements complained of are false and defamatory. See Cal. Civ. Code § 45. Paypal has no claim for statements that are simply disparaging. As a public figure, Paypal also has no claim for false statements unless PayPal can establish, by clear and convincing evidence, that the statements were made with knowledge that they were false or with substantial subjective awareness that the statements were probably false. Also, you must establish that any statements complained of by PayPal are factual, and are not statements of opinion protected by First Amendment. This is an extremely difficult hurdle given the context of the statements posted on my client’s websites. See Global Telemedia International, Inc. v. Doe, 132 F. Supp. 2d 1261, 1267 (C.D. Cal. 2001); Computer Xpress, Inc. v. Jackson, 93 Cal. App. 4th 993, 1011 (2001). You have not identified any false statements of fact by my client, let alone statements that are defamatory and made with knowledge of falsity or probable falsity.

    Second, the statements posted by others on my client’s websites are third-party content, and cannot provide the basis for any claim against my client. See Communications Decency Act of 1996, 47 U.S.C. §230©; Zeran v. America Online, Inc., 129 F. 3d 327, 330-31 (4th Cir. 1997), cert. Denied, 524 U.S. 937 (1998); Schneider v. Amazon.com, Inc., 31 P.3d 37, 40 (Wash. Ct. App. 2001).

    Third, your contention that your client’s marks are being used in a commercial manner is simply wrong. That a publisher accepts advertising or operates for a profit does not transform those portions of the publication that are not advertisements into commercial speech. My client is free to make reference to PayPal, Inc. in commentary about that company and its business practices. See McLane Co. v. Craig, WIPO Case No. D2000-1455 (2001) (“Protest and commentary is the quintessential noncommercial fair use envisioned by the [Uniform Domain Name Dispute Resolution] Policy.”). My client’s use of the PayPal logo with a slash also is not an infringement. “No reasonable consumer comparing [PayPal’s] official website with [My client’s] site would assume [My client’s] site ‘to come from the same source, or …to be affiliated with, connected with, or sponsored by, [PayPal]. Bally Total Fitness Holding Corp. v. Faber, 29 F. Supp. 2d 1161, 1163-64 (C.D. Cal. 1998). “An individual who wishes to engage in consumer commentary must have the full range of marks that the trademark owner has to identify the trademark owner as the object of the criticism. “ Id. At 1165 n.4.

    Fourth, your allegation that the domain names “NoPayPal.com” and “PayPalSucks.com” infringe your client’s marks fails as well. My client is engaging in consumer criticism, and no reasonably prudent user of the Internet would believe that these websites are sponsored by your client. See Bally, 29 F. Supp. 2d at 1165 n.2; see also, e.g., Lucent Technologies, Inc. v. Lucentsucks.com, 95 F. Supp. 2d 528 (E.D. Va. 2000) dismissing cybersquatting complaint against operator of lucentsucks.com); Lockheed Martin Corp. v. Parisi, WIPO Case No. D2000-1015 (2001) (refusing to transfer the domain names lockheedsucks.com and lockheedmartinsucks.com); Walmart Stores, Inc. v. walmartcanadasucks.com, WIPO Case No. D2000-1104 (2000) (same, walmartcanadasucks.com). This is not a situation where a trademark was incorporated into a domain name in bad faith. See Caixa d”Estavis y Pensions de Barcelona v. Namezero.com, WIPO Case No. D2001-0360 (2001) (distinguishing criticism sites from those “where the main aim of Respondents was selling their domain names for money”).

    Accordingly, we reject your demand that my client stop using the PayPal mark and transfer the domain names “NoPayPal.com” and “PayPalSucks.com” to your client. You should also be advised that we view the initiation of any proceeding by PayPal as one involving my client’s free speech rights, and my client will seek to recover all of his attorneys’ fees and costs, See, e.g., Cal. Civ. Proc. Code § 425.16 ©. Please call me if you wish to discuss this matter further.

    Very truly yours,

    Timothy L. Alger



    Quinn Emanuel Urquhart Oliver & Hedges, LLP

    Los Angeles
    865 So. Figueroa Street, 10th Floor
    Los Angeles, CA 90017
    (213) 624-0643
    Facsimile: (213) 624-0643
    http://www.quinnemanuel.com/ - Special thanks to Mr. Alger and Quinn Emanuel Urquhart Oliver & Hedges, LLP

And that ended that!

Read the thread that discusses their domain name threat letter here.

My editorial

I do not believe any company should be allowed to own their own 'sucks.com' domain. Regardless of people's opinions about the use of 'sucks' the fact of the matter is, it is the de facto standard in complaint, whistle blower and free speech sites. Without the domain "paypalsucks.com," this site would never have achieved the status, traffic, and we believe, help we have given to tens of thousands of people. I have discovered dozens and dozens of companies that have bought their own "companysucks.com" domains with the express purpose of stopping people who might criticize the company. I have also found many others who register the name, and then do nothing with it, except put up a page of advertisements, thus preventing those with a bona fide purpose for the domain from using it. I believe this violates the basic foundations of free speech and only furthers bad business, criminal acts, and suppression of opinion. I would strongly support any legislation that bars companies from owning their own "sucks.com" domains.


But every difference of opinion is not a difference of principle. ... If there be any among us who [disagree] let them stand undisturbed as monuments of the safety with which error of opinion may be tolerated where reason is left free to combat it.

Thomas Jefferson, First Inaugural Address, March 4th 1801



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