Your company sucks!

“Gripe” or “Suck” sites are websites created for the purposes of complaining about and/or criticising a business. In order to attract the attention they seek, gripe sites often register a domain name that incorporates the target business’s trade mark in some way. For example, in Leonard Cheshire Foundation v Drake a disgruntled former Leonard Cheshire employee registered the domain name www.leonard-cheshire.com (whereas the “genuine” website for the Leonard Cheshire Foundation was to be found at www.leonardcheshire.org) and proceeded to use it as a gripe site.

Invariably the similarity between domain names coupled with the presence of the target’s trade mark or branding on the gripe site, can lead to a business’s customers, or potential customers, accessing a gripe site (where they will usually be greeted by inflammatory, and often defamatory, material about the business) instead of the target’s own website. This can inevitably cause real damage to the target business.

The rise of gripe sites

Gripe sites are a common method for individuals to put pressure on businesses quickly, cheaply and effectively. A gripe site which attracted a fair amount of media attention was that relating to the domain name www.walmart50.com. In July 2011, Wal-Mart registered that domain name in celebration of its 50 years in business. A third party proceeded to register three very similar domain names: walmartat50.com, walmartat50.net and walmartat50.org. All three domain names redirected to the same website which included unfounded allegations about Wal-Mart’s employment practises. Wal-Mart subsequently applied for transfer and cancellation of the domain names using the Uniform Dispute Resolution Process (see below for further information).

What can you do about a gripe site?

There are two key options available to businesses that are being targeted by a gripe site:

1. Commence legal proceedings – Claims that may be available in these circumstances include passing off, trade mark infringement and/or defamation.

• Passing off – A successful passing off action requires the claimant to show (i) that its business has generated customer goodwill, which is being misappropriated by the defendant’s use of its branding; (ii) the defendant’s use of the claimant’s branding misrepresents to the public an association with the claimant, which does not in fact exist; and (iii) damage to the claimant, by reason of the defendant’s misrepresentation. Demonstrating misrepresentation when the site is obviously a gripe site can be difficult.
• Trade mark infringement – Provided the claimant has a registered trade mark which is identical or confusingly similar to the mark used in the gripe site domain name, trade mark infringement claims are a possibility. However, claimants will often find it difficult to demonstrate that the allegedly infringing mark has been used in the course of trade in circumstances where the defendant has registered and used a domain name simply to criticise the target.
• Defamation – One of the requirements of a defamation claim is that the defamatory statement(s) must have caused or would be likely to cause serious harm to the claimant’s reputation. If serious harm to reputation cannot be established, then a statement cannot be defamatory. In addition, businesses must also be able to show that the alleged defamatory material has caused serious financial loss.

Courts have a wide range of remedies at their disposal, including the power to award damages to a successful claimant, in addition to its legal costs. However, such an award is of limited value in circumstances where the defendant has few assets.

2. Application for transfer or cancellation of the disputed domain name using the Uniform Dispute Resolution Process (“UDRP”) – In contrast to commencing formal legal proceedings, the UDRP route may be a more cost-effective and generally less public alternative (although the decision will be published). For instance, a UDRP application to the World Intellectual Property Organisation (“WIPO”) will usually be decided within 39 calendar days from commencement of the complaint, and the application fee can be as little as $1,500.

Commencement of UDRP proceedings results in the disputed domain name being “locked” until such time as a decision is reached by the UDRP administrative panel. As such, the registrant of the domain name will be unable to update its website whilst proceedings are ongoing.

There are various hurdles that a complainant will need to overcome if a UDRP application is to succeed, including:

• Providing evidence to demonstrate that the respondent is the registrant of the disputed domain name;
• Showing that the complainant is the registrant of the domain name that the disputed domain name is targeting; and
• Identifying the registrar (the organisation which buys domain names wholesale from a registry and sells them to end users) of the disputed domain name to establish that the registrar’s standard domain name registration agreement adopts the UDRP to deal with disputes.

A complainant must also satisfy the substantive grounds for an application to succeed, which are that:

• the disputed domain name is identical or confusingly similar to the complainant’s trade mark (whether that trade mark is registered or unregistered);
• the respondent has no legitimate interest nor rights to the disputed domain name; and
• the disputed domain name is being used in bad faith.

A complainant will need to choose an approved dispute resolution service provider that has jurisdiction over the dispute. Applications relating to “co.uk” domain names must be made to Nominet under the Nominet Dispute Resolution Service. Applications relating to all other domain names are usually made pursuant to the UDRP.

If the complainant succeeds, the domain name of the gripe site in question will be transferred to it (or cancelled).

What can we do to help?

Our commercial team can assist in advising on potential legal proceedings, and UDRP proceedings, in these circumstances. Please contact James Sarjantson on 0113 201 0401 or email ku.oc1713905605.fcl@1713905605nostn1713905605ajras1713905605j1713905605 for more information.

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