Protecting Your Business Against Criticisms and Gripe Sites In A Digital World (Part II)
Once it is decided that it is necessary to take steps, there are numerous possible courses of action. However, care needs to be taken concerning overly aggressive demand letters since they will inevitably end up being posted on the Internet. As previously noted, the response should be a measured one, not a gut reaction. Non-legal remedies should be considered.
One method of proceeding is to initiate proceedings for infringement of the brand owner’s intellectual property rights. For claims under the Copyright Act, “fair dealing for the purpose of . . . parody” is an exception to infringement but not every parody will be found to be fair. The courts have been reluctant to find that such activities constitute trademark infringement since typically there is no trademark use as required by the Act.
The statements contained on the site may be defamatory or actionable as an injurious falsehood. If this is the case, proceedings may be brought to the courts. A recent decision granted very broad remedies for harassment, but the facts of this case were extreme involving a lengthy period of harassment that was malicious, reckless and of an outrageous character.
A domain name challenge under the UDRP is possible. Unfortunately, the effectiveness of such complaints is less than clear; some complaints have been dismissed while some have been allowed. Even if the impugned domain name is found to be confusingly similar, the complainant must still show “no legitimate interest” and “bad faith”. If the registrant makes non-commercial use of the domain name, particularly when it is combined with another word or element, for the purpose of criticism without intent to profit it will be difficult for the complainant to succeed.
One method of attempting to prevent such actions is to implement a “blocking” strategy. Under this approach the brand owner purchases domain names that could be misused if they were in the wrong hands. For example, owning the brand name combined with the word “sucks” may make it more difficult to establish a criticism or gripe site. The implementation of such a strategy can be time-consuming, expensive and not completely effective given the number of gTLDs and ccTLDs and many possible variations and misspellings. However, the key names can be protected.
The popularity of social media and mobile devices has had an impact on criticism and complaints. First, to the extent that a brand owner uses an app to communicate with consumers the potential impact of a criticism or gripe site may be lessened. In addition, the app should give a consumer the opportunity to contact the brand owner directly. Second, it is more likely that disgruntled consumers will use social media to vent their concerns typically by postings on FACEBOOK or TWITTER sites. Brand owners should be in a position to respond to such postings directly in a timely fashion.
The choices are not without their problems and before proceedings are brought the alternatives need to be carefully considered.
If you have questions, please contact me at email@example.com.
Goldman Sloan Nash & Haber LLP 480 University Avenue, Suite 1600 Toronto, Ontario M5G 1V2 Direct Line: (416) 597-3371 Fax: (416) 597-3370 Email: firstname.lastname@example.org
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.