“UDRP jurisprudence recognizes that the use of a domain name for fair use such as noncommercial free speech, would in principle support a respondent’s claim to a legitimate interest under the Policy.” (WIPO Overview 3.0, 2.6)
To support a fair use defence, the respondent’s criticism must be genuine and noncommercial, or a pretext for cybersquatting, commercial activity, or tarnishment (which under the UDRP refers to conduct such as linking unrelated pornographic, violent or drug-related images, or information meant to disparage an otherwise wholesome mark).
I look below at recent UDRP decisions to see how panels treat criticism defences and when is criticism deemed to represent a fair use of an Internet domain name.
Identical domain names
In cases where the domain name in dispute is identical to the trademark in which the complainant has rights, UDRP panels generally find that:
“even a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trademark (i.e., <trademark.tld> (including typos)) even where such a domain name is used in relation to genuine noncommercial free speech [..]”, as “this creates an impermissible risk of user confusion through impersonation”
(WIPO Overview 3.0, 2.6.2)
Notable examples in recent cases include the UDRP case at WIPO where Emmanuel Macron, the President of France, filed a complaint to recoup the Internet domain name <emmanuel-macron.com> which was used to redirect to the website of a politique opponent (the issues concerning the protection of the personal name were discussed in a previous post). The panel considered that even where the domain name is not used for commercial purpose, if it is essentially identical to the trademark of the complainant, it carries an inadmissible risk of implied affiliation.
A similar situation in the WIPO case concerning the domain name <liviu-tudor.com>, which was used for a website displaying allegedly defamatory information about the complainant, a Romanian business man, and his business.
Similarly, in the WIPO case on the disputed domain name <agrokor.eu>, identical to the complainant’s trademark, where the panel noted that:
“the actual issue in this proceeding is not the truth or falsity of the Respondent’s comments, or the motives of such comments and statements but whether the Respondent is entitled to use the Complainant’s trademark as his web address” and concluded that “the Respondent is using the inherently deceptive disputed domain name that replicates the Complainant’s trademark only to attract Internet users looking for the Complainant, which is not legitimate and noncommercial or fair use of the disputed domain name”.
In some other cases, panels look at the content of the website as well, but even where they find legitimate non-commercial criticism, they do “not consider that the safe harbour for legitimate noncommercial or fair use in paragraph 4(c)(iii) of the Policy necessarily protects the use of a domain name to impersonate a trademark owner, as this creates an impermissible risk of user confusion”.
This is how the panel in the case concerning the domain name <lumsa.university> approached the analysis under the second element: it first looked at the website content, it found it is noncommercial, and that the disputed domain name was not offered for sale; the panel also noted it was not in a position to determine that it is not genuine criticism based on the limited record of the UDRP proceedings. The panel further looked at the composition of the domain name, that was identical to the complainant’s LUMSA trademark and considered that
“[n]othing in the disputed domain name suggests that it will resolve to a third party website, let alone one critical of the Complainant. Rather, it is used in a deliberate attempt to give the appearance of an official domain name of the Complainant for the purpose of deceiving Internet users into viewing material critical of the Complainant. By the time that Internet users realize that the Respondent’s site is not authorized by the Complainant, they have been unfairly captured. In the Panel’s view, this deception is not a fair use and does not support a legitimate interest for the purpose of the Policy.”
On an important note, the learned panelist in this case correctly pointed out at the end of the decision to transfer the domain name to the complainant, that “[n]othing in this decision should be taken as an endorsement or a criticism of any party’s views of the issues presented on the Respondent’s website. This decision does not prevent LAISAL from expressing its views regarding LUMSA nor does it interfere with LAISAL’s freedoms of expression and association. Rather, this decision addresses the registration and use of a domain name that impersonates the Complainant as a vehicle to express those views.”
A similar analysis in the WIPO case concerning the domain name <lcf.news>, identical to the complainant’s (a UK law firm) trademark. The domain name was used to feature content critical of the complainant’s dealings with the respondent. The panel took the view that “the fact that the content of the website associated with the disputed domain name appears to contain non-pretextual, noncommercial criticism of the Complainant is not necessarily an end of the matter.” Given that the domain name was an exact match of the complainant’s trademark, the panel considered it impersonates the complainant which cannot be considered to constitute fair use in the meaning of the Policy, which cannot be cured even by a disclaimer at the website.
In a third category of cases (the first two falling under a broad category where the nature of the domain name prevails), panels take a holistic approach and look both at the composition of the domain name and the content of the website and other fact specific elements to determine if these support a finding of legitimate interests.
This is the case for example with the decision in the case concerning the domain name <mybookie.news>, where the panel considered also the fact that the respondent threatened with exposure of personal details and then asked for money to make all go away. Similarly in the case concerning more domain names including inter alia <elixoo.app>, the panel looked at various factors, including an offer for transfer of the domain names in dispute.
Similar domain names
When the disputed domain name is not identical, rather similar with the trademark of the complainant, panels look at the composition of the domain name to see if the added term(s) suggest an affiliation with the trademark holder or, on the contrary, if it does not, being rather a derogatory term.
=> terms suggesting affiliation
In cases where the domain name in dispute suggests affiliation, panels generally consider, as with identical domain names, that there is an impermissible risk of association through impersonation.
A recent example includes the WIPO case concerning the domain name <spoutingrockassetmanagement.com>. The complainant, a provider of financial services, held rights in the SPOUTING ROCK trademark. The website at the domain name was reproducing “the SPOUTING ROCK Mark and purports to make noncommercial criticism of the conduct of the Complainant and in particular the management of certain former entities now acquired by the Complainant”.
The panel held that “in the present case the Domain Name consists of the SPROUTING ROCK Mark, and two words that imply (unlike “sucks” or other derogatory terms), that the website at the Domain Name is an official website of the Complainant, since the Complainant offers financial services and in particular asset management services. The Panel finds that, regardless of the veracity of the content of the Respondent’s Website, the Domain Name creates an impermissible risk of user confusion through impersonation and hence the Respondent’s use of the Domain Name for the Respondent’s Website does not give rise to rights or legitimate interests”.
A similar example in the WIPO case concerning the domain name <swisscareinsurance.com>. The complainant, an independent insurance intermediary, had rights over the SWISSCARE trademark. The disputed domain name was registered by a former customer of the complainant with the apparent aim of collecting negative feedback on the complainant.
The panel held that:
“the disputed domain name is not identical to the Complainant’s mark but, to the Panel, the mere addition of the word “insurance” to such mark nevertheless strongly suggests that the disputed domain name is an official domain name of the Complainant, bearing in mind the fact that this word describes the Complainant’s business. In no way does such disputed domain name signal that a visitor to the site may expect to find material generated by a third party that is critical of the Complainant”. Further, the panel noted that “there is an inherent deception in the deliberate adoption of a domain name designed to have the appearance of an official domain name of a trademark owner for the purpose of publishing material critical of that trademark owner”.
Moreover, and importantly, the panel considered in this case that the nature of the domain name (the so-called “impersonation test”) takes precedence over the content of the website. This is because “[b]y the time that the user reaches that content, as the Complainant indicates, the deception has occurred. The customer’s attention has been unfairly captured in a manner which, in this Panel’s view, cannot be cured or indeed rendered fair within the meaning of paragraph 4(c)(iii) of the Policy merely because the Respondent uses the associated website to exercise its right to freedom of speech. A respondent plainly does not need to make use of such a deceptive domain name in order to get its point across to those Internet users who are willing to receive it.”
A similar analysis in the WIPO case concerning the domain name <tibtecag.com>.
The above decisions follow the approach proposed in the seminal Dover Downs case, where the panel analysed at length the tension between free speech assessment under local (notably US) law and the UDRP rules and principles and concluded that “[t]he primary focus of the WIPO Overview 3.0 approach is to determine whether the domain name will be perceived by the public as being authorized by or affiliated with the trademark holder (the “impersonation test”)”.
Another approach of panels (falling broadly in the same category as the first one above), is to first look at the content of the website, but even where they find legitimate criticism, subsequently look at the composition of the domain name. If the domain manes suggest affiliation with, or authorisation by, the trademark owner, panels consider that “using such disputed domain names to entice Internet users who are likely to be expecting the Complainant’s official content to a site, which contains the Respondent’s critical views, however genuinely held, cannot be considered fair use.” Similar analysis in the case concerning the domain name <chemoursemployees.com> and in the case concerning inter alia the domain name <mexico-bariatric-center-dr-gutierrez.com>.
Sometimes panels also apply a more holistic approach, considering that the composition of the domain name sets the scene for other factors, such as the nature of the criticism, the use of disclaimers, etc. For example, the case concerning the domain name <momsdemand.org>, or the one concerning inter alia the domain name <unethtech.com>. A holistic approach seems to also have been adopted in case of ambiguous terms added to the trademark in the domain name such as “the” added to JW or “rate notice” added to “FPL”.
=> derogatory terms
When the domain name includes derogatory terms, the panels generally consider that to support a fair use defence, a respondent’s criticism must be genuine and noncommercial, and not a pretext for cybersquatting, commercial activity, or tarnishment.
First, concerning the derogatory terms, this category generally includes the often cited “sucks” terms, but also other terms. Examples of such derogatory terms in recent case law include:
- “never” along the trademark EVERFX, as, according to the panel, “this is likely to be understood by most viewers as derogatory, given that it combines both the Complainant’s mark and the phrase “never ever” into a portmanteau or blended term. This would not likely be a term which Internet users would expect the Complainant to use of itself, and, in the Panel’s opinion, the phrase “never ever fx” as a play on the Complainant’s mark provides a sufficient indication that the disputed domain name hosts a website critical of the Complainant”.
- “investigation” added to the trademark LOU TAYLOR. The panel noted that the term “investigation” is not a clear derogatory term, but “it suggests at a minimum a form of accusation, which could still be justified” under the circumstances of the case.
- “slam lord”, added to the complainant’s trademark AKELIUS, which the panel considered to could only be seen as implicitly critical of the complainant, as the complainant specialises in renting apartments and slumlord was, per definition from complainant, a “slang term for a landlord who receives unusually large profits from substandard, poorly maintained properties”.
- “fuck”, added to the complainant’s trademark 3CX.
- “abuse”, added to the complainant’s trademark VICTORINOX.
- “scam”, added to the complainant’s trademark MXC.
- “is a fake” added to the complainant’s trademark ANTON BILCHIK.
Second, when they turn to the issue of the content of the website, panels look to see if it is a pretext for cybersquatting or tarnishment of the complainant’s trademark.
Importantly, panels do not assess if the criticism is accurate, merely if the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divest consumers or to tarnish the relevant trademark.
As panels have held “it is not within the remit of panels under the UDRP to enter into a factual enquiry about such allegations, to seek to determine their truth or falsity or to make any findings concerning alleged libel”. As other panel has put it: “the job of the Panel in such a case […] is to determine whether the alleged noncommercial criticism (which may in part be based on opinion, and which may therefore be subject to disagreement between the parties) is genuine, in the sense of being “genuinely intended to criticize” rather than being merely a pretext for abusive cybersquatting.”
Third, a disclaimer could in some cases support a conclusion that the website does not appear to be pretext for cybersquatting, commercial activity, or tarnishment, in the circumstances of the case, such as when it points to the informative purpose of the website.
