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Oct/03

CrownPontiacNissan.com – Free speech domain name case


Crown Pontiac Nissan didn’t have anymore cars with facotry-installed sunroofs so they installed a sunroof for a customer, Thomas Ballock, and now you’re reading this.  There were problems with the installation and there was a dispute, arbitration, etc.  The customer obtained the domain name CROWNPONTIACNISSAN.COM and put up a site entitled “Why I Won’t Recommend Crown Nissan.”  Crown Nissan obtained a preliminary injunction.  Customer had the injunction reversed, and has now received damages.  Decision here.

This decision is somewhat in contrast to those such as the Jews for Jesus, Planned Parenthood and Peta.org decisions, in which use of the per se version of a trademark tends to be actionable.  However, as Thomas Ballock has correctly pointed out to me, in Jews for Jesus and Planned Parenthood, the courts strained to find some form of commercial activity on the part of defendant, usually focusing on defendant’s own agenda.  Here, Ballock’s actions in venting his dispute was seen as non-commercial. 

There are certain UDRPs that have articulated the principle that defendant’s actions will not be deemed to be commercial even if there is a pre-existing commercial dispute between plaintiff and defendant, apart from the domain name dispute.  For example there have been UDRPs involved disgruntled pensioners and disgruntled customers who have set up protest sites.  I’m not sure that it is logically sound that in a commercial dispute, one party can make non-commercial speech about it’s own role in a commercial dispute.  Nevertheless, I’m more comfortable with that analysis in a [trademark]sucks fact pattern, because there is less of a chance of diversion arising.  I think the reality is that in some of these disputes, grabbing a domain name that is identical to that of the trademark owner in order to put up non-flattering information, is clearly intended to be a coercive measure to influence the original commercial dispute.  I’m not sure that is pure non-commercial speech. 

See Band and Schruers, “Toward a Bright-Line Approach to [Trademark]sucks.com,” 20 The Computer & Internet Lawyer 1 (July 2003).