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A Reddit user registered the domain name slutsofinstagram.com, and has created a kind of parody cover story (Reddit; Imgur):

Welcome to Slütsof In Stagrâm an online fantasy series about a Princess duck named Slütsof and her adventurous journey across the mystical lands of Stâgram.

Instagram allegedly sent this user a letter (image) asking them to which alludes to the Anticybersquatting Consumer Protection Act (ACPA). As a lay person, I cannot determine how the ACPA would apply in this specific case (if at all), and in particular it seems to fail the condition:

... has a bad faith intent to profit from that mark ...
15 U.S. Code § 1125 - False designations of origin, false descriptions, and dilution forbidden

Question: On what grounds can Instagram contest the use of the domain name slutsofinstagram.com?

I found Trademarked name in domain name, but the answer there seems practical: they can just bully to get their way with expensive lawsuits. I'm interested in the theoretical here: if they have actual grounds.

  • They could maybe claim it is putting dirt on their trademark. Like defamation or something. Maybe defamation is not the right legal word for IP, but I am quite sure some similar concept exists there. – mathreadler Nov 26 '18 at 16:17
  • Like that time I named my stationery website pen island – Strawberry Nov 26 '18 at 16:25
  • @Strawberry Lol. Almost as good name as experts exchange but without the whitespace. – mathreadler Nov 26 '18 at 16:55
  • This appears to be 4 years old. Was there any continuation? Any court? – Vladimir F Nov 26 '18 at 21:57
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The theoretical is that the domain slutsofinstagram.com does dilute or harm Instagram's mark because of the use of "Instagram" in the domain and because of the unwanted association of the parody story; that's the theory and "grounds" that Instagram would use in their lawsuit.

Instagram would have to prove their theory of dilution or harm to the jury or judge, and convince either that the harm is not theoretical but real and financially damaging in order to win their case. The owners of slutsofinstagram.com would have to defend themselves and argue that they are not damaging Instagram's mark and their parody is a parody and is protected as such.

Any actual court outcome is also theoretical. If Instagram won their case, one of the legal remedies could be the court ordering the owner of slutsofinstagram.com to transfer ownership of the domain to Instagram so they could simply park the domain and effectively take down the parody story. Or, the owner of slutsofinstagram.com could prevail because they argued the fact - and the court agreed - that the domain name and creative contents of the site is a parody and is protected speech and doesn't dilute Instagram's mark because any reasonable person could see that the site is a parody and not related to Instagram.

In the US, a possible example of a parody not diluting a mark is L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26 (1st Cir. 1987), where

Imitation may be the highest form of flattery, but plaintiff-appellee L.L. Bean, Inc., was neither flattered nor amused when High Society magazine published a prurient parody of Bean's famous catalog.

The reality is that Instagram can contest the use of slutsofinstagram.com because they can; they have deep pockets and can take the owner of slutsofinstagram.com to court, like any other trademark holder can contest another's trademark. The owner of slutsofinstagram.com would have to defend themselves in court, or settle - possibly for monetary damages or the ownership of the domain or use of slutsofinstagram - and not go to court.

It's possible that the SLAPP (Strategic lawsuit against public participation - Wikipedia) California law could help the plaintiff defend themselves against a deep pocket lawsuit designed to kill the parody site - as the suit would be "intended to censor, intimidate, and silence critics by burdening them with the cost of a legal defense until they abandon their criticism or opposition" - which could happen because Instagram is part of Facebook and is incorporated in California.

But basically, in the legal world, one man's litigation bully is another man's trademark protection hero.

This concerns the US. As always, your mileage may vary due to jurisdiction and national/international laws and agreements concerning trademarks.

  • 3
    Note that anti-SLAPP laws might provide some protection against deep pockets, and Instagram is headquartered in California... – jmoreno Nov 26 '18 at 11:13
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    It's also worth noting that sending a nice little letter like that is "essentially free" for instagram so why shouldn't they? Whether they would try to take it to court is a completely separate issue. Also with trademarks dilution is a very real threat and not contesting some potential trademark violations may/will harm you for the purposes of contesting other ones so the issues are tricky. – DRF Nov 26 '18 at 11:32
  • One point that may weigh in if this comes to court is if there really is a story about the princess duck and that story evolves (ie. new content is coming up fairly often). If the site is just a front page with no real content but a lot of ads, instagram would likely have an easy day in court. – Bent Nov 26 '18 at 12:40
  • @Bent Is a story not a story unless new installments are routinely added? Is Lord Of The Rings not a valid work? – Lightness Races with Monica Nov 26 '18 at 13:00
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    @LightnessRacesinOrbit I think the more important part of Bent's comment was "real content, not just a lot of ads". If the site hosts a well-developed story from day 1 (for which the domain makes sense independently of the Instagram association), it may be possible to defend it. If the page is clearly just a front for a bunch of ads not so much. – xLeitix Nov 26 '18 at 14:23

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