Does ICANN’s UDRP Preserve Free Speech and Allow Room for Criticism?

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Introduction

The phenomenal growth of the Internet has resulted in a proliferation of domain names. The explosion of ‘.com’ registrations coincided with an increase in domain name disputes, and with it the legal branch of intellectual property devolved into virtual mayhem. ICANN’s Uniform Domain-Name Dispute-Resolution Policy (UDRP) was created to allow for trademark holders to challenge domain owners, bring the respondents into binding arbitration, and possibly gain control of the domain name in question. The UDRP was brought into force in October 1999, and it can be said that it has contributed handily to the resolution of domain name disputes. However, deeper investigation into the UDRP paints a different picture.

The fair use of domain names relative to non-commercial negative or critical statements is the subject of many UDRP grievances. Nonetheless, panelists still express divergent views as to whether this constitutes ‘fair use’. The evaluation of fair use hangs on the importance a panel attributes to the registrant’s right to freedom of expression in each case. In some cases, free speech is not viewed as a legitimate right under the UDRP to register a domain that is ‘indistinguishable’ from a complainant’s trademark for the purpose of criticism, even in the absence of commercial intent. An opposing view is also taken, where it is argued that non-commercial free speech is the justifiable fair use of a domain name to criticize a trademark owner. As such, a major complaint about the UDRP is that it is unconstitutional with respect to the protection of free speech.

‘Sucks’-Type Cases

A problematic feature of UDRP cases regarding free speech, and one that is linked to the ‘WIPO Overview Majority View’ is where ‘sucks’-type domain names are deemed as confusingly similar to complainant trademarks.

For example, in Walmart Stores, Inc. v Richard MacLeod, the panel explained that its decision to transfer wal-martsucks.com to the complainant was based on its belief that “the phrase ‘identical or confusingly similar’ [is] greater than the sum of its parts”. The panel also concluded that their process does not examine if “the domain name causes confusion as to source… but instead whether the mark and domain name, when directly compared, have confusing similarity”. Taking into account that the respondent admitted that his original intention in registering the name was to sell it for profit, there was a strong argument for ruling in favor of the complainant based on the third element of the UDRP, which refers to a domain being used in bad faith. Moreover, the precedent established in Bally Total Fitness Holding Corp. v Faber should have been considered whereby it was held that the addition of “sucks” prevents any reasonable user from confusing that website with an official website.

In Royal Bank of Scotland Group plc v Pedro Lopez, the domain name <natwestbanksucks.com> was registered by the respondent, along with some other domain names that included the complainant’s mark. They all resolved to a site that incorporated criticisms of the complainant. Even though the domain name in question included ‘sucks’ after the mark, which could serve as a distinguishing factor, the panelist held that the use of a confusingly similar mark could not be determined as a legitimate non-commercial or fair use.

Another example is Chubb Security Australia Pty Ltd v Mr. Shahim Tahmasebi, where the respondent (a former employee of the complainant) utilized the <chubbsux.com> domain name for a website that detailed the complainant’s poor employee relations practices. Acknowledging that the parties had no relationship to the U.S., the panelist adhered to other decisions that adopted the majority view and resolved that a ‘gripe’ site does not automatically endow any right or legitimate interest in a domain name. The panelist ultimately ruled against the respondent, concluding that “it is not in this panel’s view legitimate to use the complainant’s own trademark as a platform for criticizing the complainant itself.” […]

The full article can be found on the CircleID website at: http://bit.ly/3aoy1WO

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