This new website mocks its subject even in its name. It is the “_____sucks.com” phenomenon. Perhaps an illustration is in order.

 Jo-Trux is a large rental truck company. It was founded by Joseph Trucks and his two sons in 1971 and since then, has become one of the most respected rental truck companies in the country. Jo-Trux has outlets in every state except Hawaii. In 1973, the company applied for and received trademarks on its name, its logo, and the trade dress of its vehicles. The Jo-Trux reputation was built on reasonable prices, high quality trucks, and excellent customer service.

 Six months ago, Tom Banks, a young computer programmer, rented a Jo-Trux van to help him move his belongings after a cross-country job transfer. During the move, Banks experienced a number of problems with the van and almost had to miss his first day of work at his new job. When he returned the van to the outlet in his new city, he explained what had happened and demanded a refund. While he eventually did get his refund, there was a lot of paperwork and a number of delays.

 Utterly frustrated, Banks created and registered jo-truxsucks.com, a website on which he described his fiasco and invited others to add similar ones. A number of people visited the site and added their own stories.

 When the people at Jo-Trux found out about jo-truxsucks.com, they were alarmed and more than a little upset. Albert Trucks, Joseph’s son and the CEO, called the company’s lawyers and demanded that they get rid of this website. The lawyers replied that there was possibly a trademark violation, and there was a good chance that a court would find a likelihood of confusion between jo-truxsucks.com and their own website, jo-trux.com.

 The _____sucks.com website, and the near universal desire of its target to get rid of it, raises a number of important issues as we venture into, or more accurately, plunge headfirst into the world of Cyberspace Law. For example, is a domain name that consists of a registered mark along with the word “sucks” likely to cause confusion? Is the same mark protected by the fair use defense because it is an example of a parody? Is the owner of the domain name involved in commerce simply because he or she is using the Internet?
While these questions are important, they are not central to the main purpose of this paper. I have chosen to look at the _____sucks.com situation because it illustrates clearly and succinctly how the Internet has the potential to tear down our existing laws so quickly and to the extent that we become lost our own various and inconsistent attempts to clear things up.

There are two different bodies of law that can potentially govern the protection of one’s trademark against a so-called “cyberpirate.” These two bodies of law are interpreted and applied by different groups. The first of these sets consists of the Lanham Act, which is the federal trademark laws, and the judges who interpret it. The second set is made up of the Uniform Domain Name Dispute Resolution Policy (UDNDRP, or UDRP) adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) and the World Intellectual Property Organization (WIPO) and applied by their arbitrators and mediators.
Considering their different philosophies, and arguably their different goals, it is little surprise that the members of these various groups would look at unsettled laws of such a new area differently. But just how much difference can there be? More than you might think, and perhaps dangerously so.

In the rest of this article, I will first examine the Lanham Act as it applies to domain name protection for trademark holders. Then I will look at a case in which a federal court uses the Lanham Act to determine the liability of a _____sucks.com owner. Next, I will look at ICANN’s UDRP and how it has been applied to _____sucks.com owners by WIPO arbitrators. Finally, I will look at the similarities and differences between the two statutes and between their interpretations, and consider the implications, if any, of these similarities and differences.

I. THE LANHAM ACT AS IT APPLIES TO DOMAIN NAME DISPUTES

The Lanham Act was originally passed as the Trademark Act of 1946 and has been amended several times since then. It is codified at 15 U.S.C. §§ 1051-1127 (§§ 1-46). There are general causes of action under the Lanham Act that apply to domain name disputes. The first is trademark infringement and the second is trademark dilution. Infringement occurs when a person uses, copies, reproduces, etc. a registered mark in connection with a commercial use of the mark and in such a way as to cause confusion, or in a way that is likely to cause confusion.f(§1114)

Dilution occurs when someone uses another person’s already famous mark in a commercial context in such a way as to dilute the distinctive quality of the mark. Dilution can take the form of either blurring or tarnishment. There are a number of factors to consider in determining whether or not a mark is famous.f(1125) There are some defenses to a dilution cause of action: fair use of a mark in comparative commercial advertising or promotion, noncommercial use of a mark, and any form of news reporting or commentary.f
In 1999, Congress added a subsection on cyberpiracy prevention to the dilution section of the Lanham Act. In addition, it added a separate section on cyberpiracy for individuals. A person is liable under the cyberpiracy prevention section if there is a protected mark which he has a bad faith intent to profit from, and he uses a domain name that is identical or confusingly similar to the mark (if the mark is distinctive) and identical or confusingly similar to or dilutive of the mark (if the mark is famous).

II. BALLY TOTAL FITNESS HOLDING CORP. V. FABER

Bally brings this trademark infringement and dilution cause of action against Faber after Faber creates and registers a website called www.compupix.com/ballysucks.

 The court dismisses the infringement cause of action because it found no likelihood of confusion. In the dilution cause of action the court found that there was no commercial use, which is a necessary element. In addition, the court found that there was no tarnishment.
For these reasons, the court ruled in favor of Faber.

III. THE UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY

- applies to everyone who receives a domain name
- a mandatory administrative proceeding can be enforced upon a domain name owner if a third party asserts that
- the owner’s domain name is identical or confusingly similar to a trademark in which the third party has rights
- the owner has no rights or legitimate interests in respect of the domain name
- the domain name has been registered and is being used in bad faith.

IV. UDRP CASES

In every decided case so far under the UDRP, the owner of the _____sucks.com domain name was forced to give up his domain name, often by transferring the rights to the actual mark owner. This is because the arbitrators found the domain names to be confusingly similar.

Examples, the Guinness case, the WalmartCanada case.

 The _____sucks.com problem arose because the law could not keep up with technological advances of the Internet. According to Jonathan Turner, “Corporate anti-sites appeared and then multiplied on the Internet before any clear legal precedents could be set for determining their legitimacy.”f

 The ultimate issue that is presented here, and which must be decided before too long, the question of whether it will be better to follow the courts, which seem to want to keep the Internet and other such technologies within the power and scope of our traditional laws, or whether the arbitrators are right to allow the laws to be dictated by the speed and direction of the Internet.