Rape, Murder, Rumor, and Rhetoric: The Strange Case of Glenn Beck, Part 2

(Note: This post is the second in a three-part series exploring First Amendment issues, trademark disputes, and certain rights of celebrities and public figures. We wish to stress to our readers that this article is in no way meant to endorse or oppose any political view.)

Yesterday’s post provided the factual background on the recent “story” regarding Glenn Beck’s alleged rape and murder of a young girl in 1990.  Of course, Glenn Beck did not actually rape and murder anyone, which is why he is very upset about it.  He filed an ICANN complaint in order to shut down the website glennbeckrapedandmurderedayounggirlin1990.com, registered by Isaac Eiland-Hall.  Tomorrow’s post will address Eiland-Hall’s response.

In order to prevail in his ICANN complaint, Beck must be able to prove that:

1. He has a protectable trademark right;
2. The domain name is identical or confusingly similar to Beck’s trademark;
3. Eiland-Hall has no rights or legitimate interests in respect of the domain name; and
4. The domain name has been registered and used in bad faith.

The basis for Beck’s ICANN complaint is that the R&M domain “is plainly libelous, patently false, not authorized by . . . Beck, and is likely to cause confusion for consumers.”

Libel is simply written defamation, as opposed to slander, which is the verbal variety.  Unfortunately for Beck, defamation is not a consideration in ICANN disputes.  In his response, Eiland-Hall cites to Jules Kendall v. Donald Mayer, in which the panel held that “[w]hether statements on the website are defamatory is not within the scope of the [ICANN] Policy, and is therefore not a matter for this Panel to decide.”

Trademark Rights

Eiland-Hall raises a somewhat impotent challenge to Beck’s trademark rights.  Beck has applied for federal registration of several GLENN BECK trademarks, one of which has progressed through all the steps and registration is only a matter of time, though none are actually registered.  While Beck would be foreclosed from pursuing any trademark-related claims based on a registered mark, ICANN policy and precedent recognize so-called common law rights.  Common law trademarks are not unlike the old concept of common law marriage – if you live with it in a special kind of way for long enough, it’s yours.

While Eiland-Hall correctly points out that a person claiming common law rights must set forth the basis for the claim, his allegation that Beck failed to establish common law rights is unfounded.  Beck points out the various methods in which he uses his name as a trademark, such as his highly rated radio and television shows, and as a top-selling author and stage performer.  These facts should be more than sufficient to support Beck’s claim of common law trademark rights.

Confusing Similarity

Beck asserts that there is confusing similarity solely because the R&M site incorporates “Glenn Beck.”  He quotes Wal-Mart Stores, Inc. v. MacLeod in support of this position, which states that “a domain name is ‘identical or confusingly similar’ to a trademark . . . when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name.”  However, the panel in MacLeod expressly sought to avoid the result that Beck seeks here.

In MacLeod, the respondent was a cybersquatter – he admitted to registering the domain wal-martsucks.com for the sole purpose of selling it back to Wal-Mart.  Shortly before Wal-Mart filed the complaint, the domain was for sale for as much as $545,000.  The panel held the domain confusingly similar solely on the basis that the Uniform Domain-Name Dispute Resolution Policy (UDRP) “was adopted to prevent the extortionate behavior commonly known as ‘cybersquatting.'”  To Wal-Mart’s argument that merely combining a trademark with another term is sufficient to find confusion, the panel stated, “[T]he fame of a mark does not always mean that consumers will associate all use of the mark with the mark’s owner.  No reasonable speaker of modern English would find it likely that Wal-Mart would identify itself using wal-martsucks.com.  Complainant has no evidence of any potential confusion.  The Panel specifically rejects Complainant’s argument that consumers are likely to be confused as to the sponsorship or association of a domain name that combines a famous mark with a term casting opprobrium on the mark.”

Therefore, even in the case on which Beck relies for support, it is clear that no confusion is likely between the GLENN BECK trademark and the R&M domain.  However, in a later case that also involved Wal-Mart, the panel went further, holding that it could not find likely confusion even when the respondent was a known squatter:

The UDRP has a narrow scope. It is meant to protect against trademark infringement, not to provide a general remedy for all misconduct involving domain names. Posting defamatory material on a Web site would not justify revocation of a domain name under the UDRP. Posting indecent material on a Web site would not justify domain name revocation under the UDRP. While a domain name registrar may be privileged to revoke a domain name for ‘illegal use’ under § 2 of the Registration Agreement, whether a use is illegal in general is beyond the subject matter jurisdiction of an administrative panel under the UDRP.

Even if common sense was not a barrier, relevant decisional authority makes it is overwhelmingly clear that Beck cannot establish the first factor of his ICANN complaint.

Legitimate Interests in Domain Name

Beck claims that Eiland-Hall has no legitimate interest in the domain.  Attempting to preempt what was obviously going to be the subject of Eiland-Hall’s response, Beck asserts that, while incorporating another’s trademark in a domain name for purposes of “protest” (known in the U.S. as “free speech”) is sometimes considered a legitimate interest, the R&M domain and website crosses the line.  Beck cites to Hollenbeck Youth Center, Inc. v. Rowland, in which the panel held that the legitimacy of a protest site turns on whether the protest is “transparent,” which requires “choosing a domain name that reflects the protest as opposed to a domain name which implies an affiliation to the trademark holder.”

In Hollenbeck, the respondent registered the domain hollenbeckyouthcenter.org, which was identical to the complainant’s name.  The panel clearly acknowledged an individual’s right to be critical of a company, stating that “[f]ree speech is a fundamental right that must be protected.”    However, the panel also recognized that ordinary people might visit hollenbeckyouthcenter.org in the mistaken belief that they were visiting Hollenbeck’s official website.  Beck disregards this crucial element in Hollenbeck.  Nevertheless, even the portion of the opinion cited by Beck seems to cut against him: “If the protest is reflected in the domain name (for instance by adding the component ‘sucks’ or a similar element), Internet users will have a choice to follow or not to follow the link.  Otherwise they may be misled.”

Beck concludes that, because the R&M domain does not make clear that it is a protest site, Eiland-Hall has no legitimate interest in the domain.  However, Beck overemphasizes the relevance of the “protest” being incorporated into the domain name.  The crux of the issue is still whether people will confuse the protest site with an official site.  When the Hollenbeck panel found that the protest had to be transparent, it only meant that the domain cannot be considered a legitimate protest site if it intentionally misdirects people who are trying to find the trademark owner’s site.

In Beck’s case, “Glenn Beck Raped and Murdered a Young Girl in 1990” is no more a synonym for “Official Home for Authorized Glenn Beck Merchandise” than “Glenn Beck Sucks.”  Therefore, the R&M domain more than satisfies the transparent-protest test.

Bad Faith

Finally, Beck alleges that the R&M domain is plainly defamatory and seeks to damage Beck’s reputation, dilute his trademark rights, and disrupt his business activities and, thus, constitutes bad faith.  Beck again cites to Hollenbeck for support.  However, it is again inapplicable to this case.  Hollenbeck first looked to the similarity of the domain names and concluded that users looking for the trademark owner are likely to visit the respondent’s site because they thought it was the official site.  The bad faith stems from the domain name owner’s deliberate attempt to convince people that they were visiting an official site.

In Beck’s case, because it is impossible to believe that anyone would think the R&M site is an official website, it is also impossible to conclude that Eiland-Hall intended to divert business from Beck’s official website.  Without this intent, there can be no bad faith.

Beck suggests that, because the R&M domain “incorporates the name ‘Glenn Beck’ in its entirety, it is reasonable to assume that the average Internet user looking for information about Glenn Beck will find the [R&M domain] and believe or suspect that Mr. Beck committed the horrible acts stated.”  However, as discussed above, merely incorporating Glenn Beck’s trademark is not enough to cause any degree of confusion and, even if it did, this kind of confusion is totally irrelevant.

Trademark infringement is at the core of this issue, not defamation.  If Beck claims his name as a trademark and asserts trademark rights in order to take over the R&M domain, the only legitimate basis for doing so is a likelihood of confusion as to the source of goods and services.  Confusion about anything else, including being confused into believing that Beck raped and murdered a young girl in 1990, is not a basis for trademark infringement.

Ironically, Beck relies on a U.S. trademark case in support of his position, Planned Parenthood Federation of America, Inc. v. Bucci.  In that case, the defendant, who was an anti-abortion advocate, was liable for trademark infringement when he registered the domain name plannedparenthood.com in order to divert the public from Planned Parenthood’s website.

Beck’s reliance on Planned Parenthood, like Hollenbeck, is misplaced.  In those cases, the registered domain name was identical to the trademark.  In Planned Parenthood, the defendant used plannedparenthood.com “to reach an audience of Internet users who want to reach plaintiff’s services and viewpoint, intercepting them and misleading them in an attempt to offer his own political message.”

Unlike plannedparenthood.com, the R&M domain was not registered with the intent to divert anyone from Beck’s official sites, and no reasonable person will ever believe that the R&M domain is an official site.  In short, the only thing that Eiland-Hall cannot do with a domain name is try to convince people it is an official site.  Even if the R&M domain makes the public think that Glenn Beck is a rapist and murderer, the complaint still fails because ICANN is not concerned with defamation.

Tomorrow’s third and final installment in this series will cover Eiland-Hall’s response, which is decidedly more humorous than Beck’s take on the matter.  If you missed it, be sure to check out the first installment on how this case got started.