Dot Horsing Around

Dot Horsing Around

One of the most surprising (and amusing) developments with the expansion of new generic Top Level Domains (“new gTLDs”) has been the emergence of “.horse” as the online space to spoof big brands.

Here are several examples:

Tim Lince, a journalist for World Trademark Review, spotted a new one:

DonaldTrump.horse consists solely of an image with the head of a wild-haired Donald Trump superimposed onto the body of a shirtless, horseback riding Vladimir Putin:

trump

— the caption reads “Giddy-up Trump!”

It’s pure expression without any apparent commercial activity.  In fact, all of the websites referenced above contain the same elements: an image of the targeted brand or public figure with a horse and no obvious intent to monetize the domain name (the HillaryClinton.horse website does seek “donations” via Bitcoin).

The registry for the .horse TLD (Minds + Machines) describes the purpose of the string as follows:

.horse is a new Top Level Domain dedicated to the horse community. From breeders and riders to small and large riding brands, .horse offers the community an alternative to the currently overpopulated .com domain whilst bringing together the worldwide horse community.

Web names that end in .horse mean organizations don’t have to use the word “horse” in their domain name, it already acts as a descriptor. This results in shorter, more memorable domain names, allowing your audience to immediately identify you within the realm of horses, giving you a new, authentic Internet platform to reach your target audiences as well as new International fans/clients.

Giddy-up!

Despite its stated purpose, it has – inexplicably – brought together a community of equine parodists.  With hundreds of new TLD extensions now available, from the highly specific to the more generalized, the commentary here (as I see it anyway) isn’t limited to the targeted brand but also includes ICANN’s expansive new gTLD program (see spoon.horse).

On the McDonalds.horse website, MCDONALD’S appears in the banner over a photo (shown below) captioned “We just love horses!” with the following disclaimers:

Note: Terms and conditions apply. Horse is generally not recommended for children under the age of 7. Consult a physician before making major changes to your diet.

Art project, not to be confused with the restaurant chain that is also called “McDonald’s”.

McDonald horse

The registration and commercial use (or even passive holding) of a domain name containing a trademark or famous personal name in its entirety without a substantive modifier is usually a slam-dunk case of cybersquatting.  See e.g. Kevin Garnett v. Trap Block Technologies, FA 128073 (NAF 2002) (“Any use by a registrant of a domain name identical to a famous athlete or celebrity’s name would be in bad faith because it would create a false association with or false endorsement by the athlete or celebrity. Even if Respondent here intended to create a fan site, its right to express its views about Complainant does not give it the right to use Complainant’s famous and distinctive name in an identical domain name.”); But cf. Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005) (holding the use of a mark in a domain name for a noncommercial gripe site criticizing the markholder does not constitute cybersquatting).

In the typical [trademark.com] slam-dunk cybersquatting case, the TLD is irrelevant, the domain name is registered for commercial gain and isn’t being used for genuine free speech.  With new gTLDs, the TLD cannot be as easily dismissed and, depending on the context of the sites use, may help reinforce a legitimate or fair use.

walmart horse

To date, there has only been one cybersquatting complaint in the .horse domain (that I am aware of ).  It was brought by Walmart under the Uniform Domain Name Dispute Resolution Policy (UDRP) against the <Walmart.horse> domain name.  The proceeding was “terminated” before a panel decision and the Whois record currently lists “Wal-Mart Stores, Inc.” as registrant.  The Guardian reported that the initial registrant, cartoonist Jeph Jacques: “didn’t feel like fighting them any more” and agreed to transfer the domain name.  This was after Jacques suggested he would fight back (here’s Walmart’s C&D and his response):

I would argue that Walmart.horse is an obvious parody and therefore falls under fair use. Publicly available images of a horse, a Walmart store, and comical music make it clear that the site is meant to be a joke. I would be happy to provide a disclaimer on the website explicitly stating this. If you have any requests for other animals you would like to see added to the image on the website, I would happily comply!

Back in May 2015, I explained to The Guardian:

It’s not entirely clear how Jacques’ case would have turned out. His domain name included one of the new gTLDs [generic top-level domains] (.HORSE), which are raising novel cybersquatting issues, especially where the domain name registrant is using the site to parody a trademark holder or for some other apparent fair use purpose.

A parody defense to a cybersquatting claim on a trademark paired with a new gTLD suffix for a noncommercial speech site appears to be an issue of first impression under the UDRP.

In prior posts, I’ve noted how new gTLDs can impact both the cybersquatting and trademark registrability analyses.  I’ve also written about the trademark parody defense to a likelihood of confusion and dilution claim.  A parody domain name and web site have similar First Amendment considerations and a parody defense does exist under the UDRP.  Panels have applied a two-step test in evaluating parody defenses:

(1) the domain name must convey two separate messages: that it is the original and at the same time that it is a parody of the original; and
(2) the content of the web site must poke fun at the goods or services associated with Complainants’ marks.

See A & F Trademark, Inc. and Abercrombie & Fitch Stores, Inc. v. Justin Jorgenson, WIPO Case No. D2001-0900.  Importantly, any commercial activity, or use that tarnishes a brand, will undermine a parody defense and legitimate use.  As with all UDRP decisions, each case is decided on its own circumstances and prior panel decisions (which can be inconsistent) have no precedential value.

Nevertheless, the UDRP decision over <DustinDiamond.com> (yes … “Screech” from Saved By the Bell) is instructive:

The Panel accepts Respondent’s argument that the “outrageous ugly and low-tech graphics and numerous errors and misspellings” as well as the sheer absurdity of the site’s claim that Dustin Diamond is a “FAMOUS SUPERSTAR AND SEX SYMBOL” clearly signal that the site is not meant to be taken seriously. Whether the site is regarded as parody, satire, or critical commentary, and notwithstanding Respondent’s assertion that “[l]awyers are notoriously bad at understanding how humor works,” this Panel finds that legitimate noncommercial fair use commentary is involved.

Dustin N. Diamond v. Max Goldberg, FA 0402000237446 (Nat. Arb. Forum April 5, 2004) (legitimate use and no bad faith registration where respondent engaged in active use consisting of pure, noncommercial speech in the nature of parody or critical commentary).

The incorporation of a new gTLD that in essence functions as a substantive modifier to the trademark appearing in the second level domain would only seem to strengthen a parody defense.

Donald Trump owns an extensive trademark and domain name portfolio that he vigorously enforces.  Should he (or any target) decide to take action against the registrant of the .horse parody, and the registrant doesn’t capitulate, it won’t be a slam-dunk case of cybersquatting but one of first impression.  And that — unlike the website — is no joke.

© Roberto Ledesma

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