If you've ever suffered from insomnia, you've probably gotten some comic relief watching ads promoting hair loss remedies.  These advertise, in the great tradition of snake oil salesmen, a variety of products that don't seem to be the perfect solution.  Hair loss is an age old problem. Early hair loss treatments included topical application of goat's urine, a treatment that must surely have been worse than the disease.

Home remedies are less disgusting if just as messy. But, hey, they're natural--no harsh chemicals! 

Thanks to technology, hair implants offer a permanent and expensive solution.  Some customers remain dissatisfied with this perfect cure and "gripe sites" relating to hair loss dot the internet.

Gripes sites are an internet novelty.  Before the internet, a dissatisfied customer could perhaps apply for a "permit to picket" the business and perhaps generate only a little publicity and less sympathy.  With the rise of the internet, it’s possible to generate a lot more publicity and really get noticed.  It helps, though, if your website can use a similar domain name or the trademarked logos of the business you are targeting.

Can you use that business’s registered trademarks on your site?  Can you use a domain name similar enough to the business’s to attract hits?

"Yes" and "It depends" says the Ninth Circuit to these questions.  The unhappy customer was a follically-challenged individual who had gotten expensive but unsuccessful hair restoration services from Bosley Medical Center.  You may have seen some Bosley infomercials.  I don’t know about the product, but Dr. Bosley himself sure has a full head of hair.  That must be a credibility requirement for that line of work.

According the Ninth circuit's "pun"ishing opinion, Mr. Kremer, the unhappy customer, was so unhappy, he made a bald-faced attempt to get even by obtaining two website domain names, www.bosleymedical.com, and www.bosleymedicalviolations.com.  His first site is notably similar to Bosley's official site domain, www.bosley.com.

Bosley Medical Center had the foresight to trademark "Bosley Medical" and sued Kremer for trademark infringement and various Lanham Act violations.  Bosley also sued under the federal anti-cyber squatting law, an amendment to the Lanham Act, because Kremer had obtained the two website domain names that may be confused with Bosley’s official site.

The Ninth Circuit held that there was no trademark violation for the noncommercial use of a trademarked name as part of domain name, when that site is used for consumer commentary, even negative commentary, about the products and services represented by the mark.  In this case, neither of Mr. Kremer’s websites were "commercial" and therefore there was no trademark violation.

The Ninth Circuit reviersed the district court's dismissal of Bosley's cybersquatting claim.  A defendant violates the act if he has a "bad faith intent to profit."  The court was unwilling to decide this issue on the summary judgment record developed at the trial level. 

California's version of the anti-cybersquatting statute lists several factors that courts should use in determining if cybersquatting has occurred.  Here are summaries of the factors:

     (a)     Was a trademark used in the suspect domain name?

     (b)     Is the suspect domain name the legal name of the alleged infringer?  Sometimes it's helpful to be named "McDonald".

     (c)     Has there been prior use by the alleged infringer?

     (d)     Is the use noncommercial?

     (e)     Is there an intent to divert consumers from the target site?

     (f)      Has there been an offer to sell the suspect domain name, especially if the name has not been used? 

     (g)     Was accurate contact information used in registering the offending domain name?

     (h)     Are there multiple similar names by the same registrant?

     (i)      Did the alleged cybersquatter attempt to obtain permission from the trademark holder?

     (j)     Was there any evidence to defraud consumers, especially voters?

Bosley would appear to have a difficult time proving cybersquatting.  It is true that Kremer is not named "Bosley," that he used the "Bosley Medical" trademark name, and he had no history of prior use.  On the other hand,  he did not intend to divert customers, his use was non-commercial, he did not register multiple names and made no offer to sell the names.  Finally, there was no evidence of any attempt to mislead or defraud consumers.  A visitor to his site will quickly realize he has complaints.

The best solution to hair loss appears to be in your career choice.  I knew I should have been a theoretical physicist.

Posted by Joseph R. McFaul on Monday, December 05, 2005 at 00:00 Comments Closed (0)

View Weblog Archive