Use of "trademark.com" domain names for criticism sites

The IPKat's Greek friend Nikos Prentoulis wrote a guest article last week, "Free speech prevails over common law rights in WIPO panel decision", Though it attracted only a couple of posted comments, the Kat received some very thoughtful emails on the subject. One of these is from Matthew Harris (a partner in Waterfront Solicitors), who has written to the IPKat as follows:

"I thought you might be interested to learn that for quite a few years there has been a debate ongoing among UDRP panelists as to the extent to which <[trade mark].com> domain names can be legitimately used for criticism sites.

WIPO chose this as one of the subjects of discussion during the meeting of panelists in Geneva last October under the heading “Criticism sites and other free speech - bridging the divide?”. The “divide” is recorded in paragraph 2.4 of the WIPO Overview of Panel Views. It is broadly between a US approach that has been prepared (at least in cases that involve only US parties) to be influenced by US case law on the issue, and non-Americans that have tended to be less impressed by such arguments and more often than not have concluded that <[trade mark].[tld]> domain names, even when used for criticism sites, are abusive.

In the last couple of years the question has arisen as to whether this divide is logically defensible. This in turn raises fundamental questions as to what extent the UDRP can or should be seen as providing a sui generis system of law (albeit one created by contract) or should be influenced by provisions in national law (including free speech rights under the US constitution as well as national law concepts of “fair use”).

For those who are interested in the subject, decisions in which this debate has been conducted include:

1066 Housing Association Ltd. v Mr D. Morgan, WIPO Case D2007-1461 [declaration of interest: Matthew drafted this ...]

Fundación Calvin Ayre Foundation v Erik Deutsch, WIPO Case No. D2007- 1947

Sermo, Inc. v CatalystMD, LLC, WIPO Case No. D2008-0647 and

Grupo Costamex, SA de C.V. v Stephen Smith and Oneandone Private Registration / 1&1 Internet Inc. WIPO Case No. D2009-0062

The decision in D2009-0693 mentioned by your correspondent is of some interest in that the US panelist reached different conclusions on the issues of “right or legitimate interest” and “bad faith”. However, ultimately it is a decision that appears to be consistent with the traditional “US view”. It does not appear to address the more fundamental debate taking place on these issues.

It is also perhaps worth recalling that the English courts recently strayed into this discussion (perhaps unknowingly) in Patel v Allos [2008]. The decision was picked up by the IPKat at the time but was not as extensively reported as it perhaps deserves. It has not found its way on to the BAILII site. However, a full copy is accessible on Nominet’s website here".

Thanks, Matthew, says the IPKat, for taking the trouble to write in and to elucidate the current state of play in this obvious area of IP v free speech so neatly.

Free speech here

Words are cheap here

Words are cheep here [for those who sincerely believe that all music in 1971 was cool]

Expensive speech here

Free speech prevails over common law rights in WIPO panel decision

The IPKat's friend, Greek practitioner and scholar Nikos Prentoulis, has been getting very excited about a recept WIPO Panel decision over a domain name in which the respondent's freedom of expression prevailed over the complainant's common law service mark rights. Nikos writes:

"In deciding case D2009-0693, WIPO’s administrative panel rejected a domain name complaint filed by Sutherland Institute against Continuative LLC (both of Salt Lake, Utah, USA), after balancing conflicting interests in free speech and trade mark rights. Sutherland Institute, a non-profit organization/think tank, was incorporated in 1994. The institute contested the registration by Continuative of the domain name sutherlandinstitute.com, supporting its claim only on the basis that it enjoyed common law service mark rights.

Continuative LLC had used the contested website, which was essentially the same in layout and features, host political criticism against the Sutherland Institute because of its allegedly anti-gay political agenda. Continuative's site also included two small disclaimers, describing the site as “a parody site, an opposing political platform”. Continuative LLC filed no response to Sutherland's complaint.

Under WIPO rules, a domain name complaint will fail unless the following cumulative requirements are met: (a) the respondent’s domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights, (b) the respondent has no rights or legitimate interests in respect of the domain name, and (c) the respondent’s domain name has been registered and is being used in bad faith.

In this case, confusing similarity was evidently not hard to demonstrate. Additionally, the panel correctly held that Continuative LLC had no legitimate right or interest in the domain name (this is essentially the “parody site” argument, deriving from the “fair use” doctrine). The key point of its lengthy reasoning was that there was “no transformation into a potential parody object.

However, the complaint failed the criterion of bad faith. The panel held that the disputed domain name was being used for purposes of political speech, which is protected under US Constitution (nb both entities are US based) and, for this reason, the panel would not be willing to interpret “bad faith” in a broad manner. Thus it rejected the complainant’s argument that the domain name was registered for the purpose of disrupting the business of a competitor. According to the decision,

“... only by the exercise of mental gymnastics may a group of gay rights activists be defined as a “competitor” of a conservative public policy think tank. A person seeking the services of a lobbyist or advocacy group who is unable to secure the services of a conservative think tank is unlikely to decide to take its business instead to a group of gay-rights activists. Perhaps in some very attenuated sense these two entities are “competitors in the marketplace for ideas”, but the Panel does not think this is what the Policy means when it refers to “competitors”.

In the core of its reasoning on bad faith, the panel did not contend the fact that Continuative LLC registered and used the disputed domain name to confuse Internet users into thinking that the Sutherland Institute was a source, sponsor, affiliate or endorser of its website. However, it ruled that there was no evidence that it did so for “commercial gain”. The reference to “commercial gain” in paragraph 4(b)(iv) of the Policy, the panel held, was not designed to inhibit “pure political speech.” “In these proceedings the evidence before the Panel indicated that Respondent is engaged in “pure political speech”. There were no advertising links on Respondent’s website. There are no requests for financial support on Respondent’s website. Because this proceeding involves political speech that is strongly protected under the U.S. Constitution, the Panel will not in these proceedings involving two U.S. parties attempt to identify bad faith elements that are not specifically enumerated in the Policy. If the right of political speech is to be interfered with based upon Complainant’s service mark incorporated in Respondent’s disputed domain name, it is preferable that a federal or state court make that application of the concept of “bad faith”.

The pure/impure political speech dichotomy proved effective in this case. It is unclear however whether it can always do the trick. To begin with, as the panel hinted, when sponsorship or fund-raising or even commercial affiliation is involved, “purity” will be highly debatable. Moreover, the limits of pure criticism when it comes to attacking famous trade marks (because such limits do exist) are hard to draw.

The IPKat says thanks, Nikos, for taking the trouble to write. Merpel says, I'm not sure I understand the parody point. Continuative's site does parody that of the Institute. For example, the "real" site reads

"The Sutherland Institute’s philosophy is simple: We believe that parents are responsible for their children’s education and that the state role in education is primarily as a support to parents. We also believe that educational freedom is a necessary ingredient in providing the best education possible for each individual student".

and the respondent's echoes it:

"The Sutherland Institute's philosophy is simple: Unfortunately it's nothing more than a bunch of hate speech wrapped up in this feel good, community knows best garbage that doesn't hold water".

But what precisely is the nexus between the parody of the content and the right to retain and use the name? Perhaps a kindly reader can put the logic in feline-friendly format.

Sutherland here
Sutherland's Law here