Home / Blogs

Online Critics and Unlawful Harassment from Trademark Holders

The following is based on my experience and interpretation of the UDRP and the relevant laws of the United Kingdom and European Union.

This is not legal advice but just my own experience and interpretation.

How does a UK citizen create a non-commercial trademark.tld parody criticism website and avoid harassment from the trademark holder?

1. One Finds an ICANN accredited UK based registrar.

2. One makes sure that the registrar, in their domain name registration agreement, has chosen the United Kingdom as the exclusive jurisdiction.

In general, one looks in the contract for: "Governing Law" or "you acknowledge and agree that you shall submit, without prejudice to other potentially applicable jurisdictions, to the jurisdiction of the courts (a) of the domain name holder's domicile, and (b) England and Wales."

3. Before one registers a trademark.tld, one visits OAMI and The UK Patent Office, and takes a copy of the trademark details, including the representatives address, as this can come in useful if the trademark owner decides to harass one in order to silence one's criticism and violate one's human rights.

4. Now one looks for a hosting company that has it's servers based in the United Kingdom. One sets up the account with the hosting company and obtains the server and IP addresses, also known as "DNS1" and "DNS2".

5. Now one registers a trademark.tld domain name, or multiple domain names if one wishes, in relation to the trademark(s) that one wishes to criticise. One allocates the relevant "DNS1" and "DNS2" that one has obtained from the hosting company.

6. In registering the trademark.tld domain name, one makes sure that one does not give a false address.

One should never under any circumstances give a false address, even though one's intention may only be to legitimately protect one's personal details on the Internet. Contrary to the Data Protection Act, the WHOIS record is openly available to the public, but if one does not list one's correct details, the trademark owner will use that to take advantage by suggesting that one is hiding one's identity. The same applies to the use of a WHOIS Guard service. Unscrupulous lawyers will sometimes use that against the registrant, and pretend not to know who the registrant is. They will sometimes start a court case against a registrant, withhold the existence of the court case from the registrant, obtain a default judgment and effect a transfer of the domain name.

7. Now, one performs a check on the WIPO and NAF websites to see if the company concerned is in the habit of harassing critics through UDRP administrative proceedings.

Just because the company concerned has made a complaint, this is not necessarily a conclusion that they are in the habit of harassing critics through UDRP administrative proceedings, however at the same time, the UDRP process is widely seen and accepted to be biased in the favour of trademark holders. It is up to one to examine each complaint initiated by the trademark holder concerned and draw one's own conclusion. This can sometimes be difficult because the trademark holder will often lie, make false claims, manufacture evidence to support their false claims and make malicious defamation claims against the respondent in order to defame their character and deprive them of their statutory rights. Most of the time, the innocent respondent does not realise that the complainant, by their actions, has given rise to causes of action against them by the respondent, such as a claim for libel (malicious falsehood) under the Defamation Act 1996, groundless threats of infringement proceedings under the United Kingdom Trademarks Act 1994 and harassment under the Protection from Harassment Act 1997

The number of complaints to WIPO or NAF by a trademark holder is often a good indication that they will most likely threaten one with a groundless threat of infringement proceedings. One should always take a copy of any disputes that the trademark holder has initiated in the past. It is also a good idea for one, where possible, to get in touch with previous respondents in order to gather as much information as possible, including the evidences that the trademark holder used in their complaints.

8. Once the domain name is registered, and active, one logs into one's hosting account and edits and replaces the index.html page with something such as:

This is a non-commercial criticism website in criticism of the corporation and the trademark owner.

This is a non-commercial criticism website in criticism of _________.This website is not affiliated with the ________, or endorsed or sponsored by them in any way. If you are looking for the website of _________, this is not
it. If you choose to enter this website, you do so at your own free will, with the full knowledge that this is a non-commercial criticism/parody website.

ENTER

After this, one creates a folder labeled "enter" and then in that folder creates an index.html page. One makes sure to include,

META content="no index, no follow" name=robots

in the header and then one creates one's website in that folder.

The reason for this is that the content of this folder is now only accessible to the public upon an agreement that your website is non commercial in nature and in criticism of the trademark holder as this prevents the trademark holder from claiming that one's actions amount to that of passing off.

The rest of the content of one's website is up to one to develop but one should bear in mind the relevant laws, such as the Defamation Act 1996.

If the criticism website is a parody criticism website, then to comply with the SEC 30 of the Copyright, Designs and Patents Act 1988 a sufficient acknowledgement must be given to the copyright owner, which would usually be the trademark holder. Such acknowledgment should be clearly visible on each page of the website where the copyrighted material is used. An example of such an acknowledgment is:

"Some of the content on this website is credited to _________________."

9. Once one's website is active, one may wish to make the trademark holder aware of the fact that one is now operating a non-commercial criticism website at trademark.tld in order to put the trademark holder on express notice not to f*** with one.

An example of such communication is:

Dear Sir,

I am writing to inform you that I now operate a non-commercial website in criticism of _________.

I hereby put you on express notice not to interfere with my statutory rights to operate this website at the address of ________.

Any attempt to interfere, or harass, either myself, the registrar or the hosting company will be taken extremely seriously and will also give rise to causes of action against your company, and possibly against your lawyers, for groundless threats of infringement proceedings, under the Trademarks Act 1994, and harassment, under the Protection from Harassment Act, amongst other causes of action.

Yours Sincerely

____________

If one receives a cease and desist letter in response, then one may have a cause of action against the sender (the trademark holder and the lawyer who made the threat) for groundless threats of infringement proceedings under Article 21 of the United Kingdom Trademarks Act 1994.

In the event that the trademark holder is based in the US, and is also the holder of UK and EU Community trademarks, it is possible that the trademark holder will initiate a court case in the US, even if the registrant, the domain name, the hosting and all of the contracts are in the UK and enjoy the exclusive jurisdiction of the United Kingdom. As long as the critic does not accept the jurisdiction of the US court, and does not respond to the court action, then any default order obtained by the trademark holder from the US court, is not registrable and/or enforceable in the jurisdiction of the United Kingdom as the UK and US have no reciprocal agreement.

The trademark holder may however decide to use the non enforceable foreign order unlawfully in order to harass one's registrar and/or hosting provider with intent to induce a breach of contract. Such an act gives rise to causes of action against the trademark holder under the Protection from Harassment Act 1997, Malicious Communications Act 1998, Fraud Act 2006, to name a few.

The action of the trademark holder in initiating court proceedings in the US would itself be seen as a groundless threat of infringement proceedings in the UK jurisdiction as the foreign judgment obtained gives a right to the trademark holder to initiate fresh proceedings in the UK based upon the US court order. This in turn puts the trademark holder exactly where they don't want to be, which is on a receiving end of a part 20 claim against them from the critic/domain name registrant/website operator.

If the trademark holder has maliciously defamed the critic by way of malicious falsehood in either UDRP administrative proceedings or a US court case, then the trademark holder would be on the receiving end of a libel case under UK law. In such a case, the trademark holder would not be able to claim privileged correspondence during disclosure.

In my experience with:

Biocryst Pharmaceuticals Inc
Field Fisher Waterhouse LLP
Silverberg Goldman and Bikoff LLP
Eastman Chemical Company
Jones Day
Endo Pharmaceuticals Inc
Auxilium Pharmaceuticals, Inc
Abbott Laboratories
Freshfields Bruckhaus Deringer LLP
Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP

Example, see Patteshall.com

They have done everything to avoid litigation in the jurisdiction of the United Kingdom. In fact they are running from me, a litigant in person.

By Patel

CircleID Newsletter The Weekly Wrap

More and more professionals are choosing to publish critical posts on CircleID from all corners of the Internet industry. If you find it hard to keep up daily, consider subscribing to our weekly digest. We will provide you a convenient summary report once a week sent directly to your inbox. It's a quick and easy read.

I make a point of reading CircleID. There is no getting around the utility of knowing what thoughtful people are thinking and saying about our industry.

VINTON CERF
Co-designer of the TCP/IP Protocols & the Architecture of the Internet

Comments

 Be the first to post a comment!

Add Your Comments

 To post your comments, please login or create an account.

Related

Topics

New TLDs

Sponsored byAfilias

IP Addressing

Sponsored byIPv4.Global

Whois

Sponsored byWhoisXML API

Cybersecurity

Sponsored byVerisign

Cybercrime

Sponsored byThreat Intelligence Platform

DNS Security

Sponsored byAfilias

Brand Protection

Sponsored byAppdetex

Domain Names

Sponsored byVerisign