The New Name Game

Parties fight for control of domain ownership on Internet

From the Summer 2002 issue of The News Media & The Law, page 43.

By M. Franco Salvoza

What’s in a name?

Well, when a name is registered as an Internet domain name without the alleged name owner’s permission, the answer might be: a lot of legal fees.

The rise of the Internet has brought with it a host of new, contentious legal issues, including copyright and trademark infringement and cybersquatting, a phrase describing the registration of a famous name as a Web site in the hopes of selling it back to the name owner for a profit. These claims often blend elements of First Amendment law, freedom of speech and intellectual property.

Are Internet users just expressing themselves and laying claim to a set of letters that should not have any ownership? Or are they depriving their rightful owners of name recognition and commerce? Courts have ruled in various ways, depending on how the name was used and for what purposes.

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Pop star sues Web site owner over use of her name on Internet

Canadian singer-songwriter Alanis Morissette filed suit in a federal court in Los Angeles on July 1 to shut down Alanis.net. Morissette, a Canadian singer-songwriter, is the latest celebrity to make a cybersquatting claim and had previously sued a Web design company for rights to the domain alanis.ca.

Alanis.net owner Russell Smith claimed he registered the site more than three years ago, which “has never contained any information about Morissette or anything related to her.” Furthermore, he also claimed that Morissette’s registration of her name as a federal trademark does not make any particular claim on the letters “alanis,” and these charges constitute “intimidation, threats, and lies.”

However, attorney Jennifer R. Karie wrote a cease-and-desist letter to Smith on June 11 alleging that his act was “a wrongful use and misappropriation” of Morissette’s name and is “confusingly similar” to Morissette’s sites, alanis.com and alanismorissette.net. In addition, the suit alleges that Smith used the site to sell a wide range of products, including tours of Alcatraz Island. (Morissette v. Smith)

As of publication, the site alanis.net only posts links about the lawsuit, including a link to Cyberpirates.com, which outlines other similar lawsuits.

Morissette joins a growing list of celebrities, such as Bruce Springsteen, Sting and Kevin Spacey, who have sued to claim their names back from alleged cybersquatters. Springsteen and Sting lost their suits, and Kevin Spacey’s claim was dismissed on a procedural matter.

However, Nicole Kidman and Venus and Serena Williams won their cybersquatting suits, and the World Intellectual Property Organization ruled that Celine Dion could reclaim celinedion.com from Canadian citizen Jeff Burgar because of bad faith use and refusing to relinquish the name without “negotiating.”

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Falwell plans appeal after losing claim to online critic’s domain name

A mediation panel denied the Rev. Jerry Falwell’s bid to gain control of Internet domains bearing his name and posting criticism about him.

A panel of the World Intellectual Property Organization ruled 2-to-1 in favor of defendant Gary Cohn in Falwell’s suit blending cybersquatting and trademark infringement elements. Falwell tried to strip the Internet domains jerryfalwell.com and jerryfallwell.com from Cohn, who in return alleged Falwell was liable for “cyberbullying.”

Cohn, an Illinois resident, used the domains to post criticisms and parodies of Falwell’s ministry and messages, especially Falwell’s claim that feminists, the American Civil Liberties Union, gays and lesbians helped bring about the events of September 11.

Falwell.com includes an animated photo of Falwell inserting a foot in his mouth repeatedly. Falwell later apologized for his comments.

The key issue turned on whether the panel determined that Falwell’s name was a common law trademark, since Falwell had not registered his name with the U.S. Patent and Trademark Office. If it had been registered, Cohn could have been liable for trademark infringement. If not, the use of Falwell’s name in a parody or criticism is considered a legitimate, noncommercial fair use commentary of the trademark.

Falwell attempted to prove that his ministry had earned his name common law trademark status, but he failed to meet his burden before the panel.

“This is a victory for First Amendment rights,” said lawyer Paul Alan Levy, who represented Cohn on behalf of consumer advocacy group Public Citizen, in a statement.

John Midlen, Falwell’s attorney, said that he plans to pursue the case in federal court. (Falwell v. Cohn)

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Judge lifts injunction against critic of Alabama automobile dealership

A federal judge lifted a preliminary injunction on July 16 ordering a dissatisfied customer who created a Web site voicing criticism of a car dealership’s business practices to remove its name from the site’s pages.

Alabama resident Thomas Ballock sparked the case by creating a site called crownpontiacnissan.com to voice criticism and dissatisfaction with the Hoover-based car dealership’s business practices.

Crown Pontiac-Nissan claimed that Ballock’s site infringed its trademarks, even though the dealer had not registered its name.

Crown Pontiac-Nissan requested and obtained a preliminary injunction from Judge U.W. Clemons in U.S. District Court in Birmingham to have its name removed from the site. Ballock then created another Web site, this time calling it hoovernissandealersucks.com, to criticize the business in question, but left the dealer’s name off of the site.

However, the Public Citizen Litigation Group appeared at a hearing on behalf of Ballock and made a motion to lift the injunction, which Judge Clemons granted in its entirety on July 16.

Free speech advocates argued that the injunction was a sweeping prior restraint restriction of First Amendment rights of consumer commentary.

“If Crown’s position in this case were correct, then consumers are prohibited from criticizing businesses on the Internet,” said Amanda Frost, Ballock’s attorney from the Public Citizen Litigation Group. “That result would clearly violate consumers’ First Amendment rights.”

Crown Pontiac-Nissan argued that having the business’ name on Ballock’s page created confusion and diverted customers away from its business, causing irreparable economic harm.

Ballock created the original site in February after a dispute over payment for a sunroof Crown Pontiac-Nissan installed in his new car. He also posted notices proclaiming, “I shall not recommend doing business with Crown Pontiac-Nissan to anybody,” but added disclaimers saying that the site was not the official Web site of the car dealership.

However, an attorney for Crown Pontiac-Nissan sent Ballock a cease-and-desist letter, citing infringement of federal trademark laws, economic harm, defamation, extortion and diversion of customers from Crown’s true Web site.

After the injunction was lifted, Ballock resumed the use of the car-dealership’s name on his original site and featured it prominently.

He posted “Why I won’t recommend Crown Nissan (Crown Pontiac-Nissan) of Hoover, Alabama” at the top of the Web page. (Crown Pontiac-Nissan v. Ballock)