Free speech is not listed as one of the Policy’s examples of a right or legitimate interest in a domain name, but it is clearly subsumed in “fair use” and qualifies as a defense under paragraph 4(c)(iii) of the Policy. The defense rests on the proposition that speaking in opposition to a trademark owner was a right worthy of protection. The WIPO Final Report paragraph 172 provides that “Domain name registrations that are justified by legitimate free speech rights or by legitimate non-commercial considerations would … not be considered to be abusive.” Just as quickly as free speech was recognized as a protectable right there developed two lines of reasoning that continue to split panelists. The split is unsettling because decisions should not depend on the adventitious selection of Panels, yet that is what has happened.
In the first line of reasoning, the composition of the domain name is irrelevant. Bridgestone Firestone, Inc. v. Myers, D2000-0190 (WIPO July 6, 2000) (<bridgestone-firestone.net>) and Britannia Building Society v. Britannia Fraud Prevention, D2001-0505 (WIPO July 6, 2001) (<britanniabuildingsociety.org>) are examples. The second line of reasoning holds that “it is not the address of the web site that is protected by free speech principles, but rather the content of the web site,” Valero Energy Corporation v. American Distribution Systems, Inc., D2001-0581 (WIPO August 12, 2001) (<valeroenergy.com>) and Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (<cogema.org>). In Compagnie Generale the Panel held that while Respondent has a “right to free speech and a legitimate interest in criticizing the activities of organizations like the Complainant … [that] is a very different thing from having a right or legitimate interest in respect of [a domain name that is identical to Complainant’s mark].” Thus, the right respondents concededly have under this line of reasoning to comment or criticize is hemmed in. They can speak but not cloaked in the offending domain name.
If “it is not the address of the web site that is protected by free speech principles, but rather the content of the web site,” then it follows that domain names identical to the trademark would always be vulnerable to forfeiture. The Panel in Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (<eastman-chemical.com>) made an even more radical contribution by stating (perhaps inadvertently given that the domain name is identical to the trademark) that “[f]ree speech cannot be used as a defense against the use of a confusingly similar mark as a domain name.”
The Panel in Equality Charter School, Inc. v. Mona Davids / A Happy DreamHost Customer, D2011-1226 (WIPO September 2011)(<equalitycharterschool.com>) argues for a “flexible, context-based approach to fair use cases.” He “finds that no bright line may be drawn denying the existence of a non-commercial free speech right under the UDRP simply based upon whether Respondent has or has not added words (other than the gtld suffix) to Complainant’s alleged trademark.” The fact that a <trademark.com> case causes “initial confusion among Internet users” should be overlooked if the content of the website is what it purports to be.
A “flexible, context-based approach” requires examining initial interest confusion. The Panel in Equality Charter School finds that “search engines display descriptive content that users would see before clicking the link to be taken to Respondent’s website. The search engine descriptions of Respondent’s website picked up the critical nature of its content; users who glance at the descriptions in the search results rather than simply clicking links without reading would already be alerted to the critical nature of Respondent’s website before clicking on the link indexing the website in the search tool.” On this basis, “[t]he Panel finds that the subtitle quoted above, the other headlines and the tone of postings on the site would alert any reader upon first viewing that the website is not sponsored by Complainant, but is instead boldly critical of Complainant’s school.” Thus, although the domain name does not add terms to the complainant’s mark, no one viewing the website could have thought it was the complainant’s website.”
“If negative commentary were a touchstone of bad faith” (quoting the Panel in Equality Charter School among others) ‘then in every UDRP decision recognizing a fair use right supported by protest or criticism, the respondent registering the disputed domain name to launch the commentary would be found to have registered in bad faith.” Negative commentary may be displeasing to the complainant, but it is not grounds for silencing it.