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Comments and Commentary: Protected Noncommercial Fair Use

Expressing one’s thoughts in a domain name identical or confusingly similar to a trademark is protected speech even if it offends and enrages the complainant. The Policy enshrines the right to speak critically. There has, however, been a mixed reception for domain names identical to the trademark. In Aspis Liv Försäkrings AB v. Neon Network, LLC, D2008-0387 (WIPO June 2, 2008) (<aspis.com>), for example, the Panel over vigorous dissent held that”the use of a domain name which essentially comprise[s] a trademark without any additional ‘modifier’ for a criticism site will not provide ‘rights’ or ‘legitimate interests’.” 1066 Housing Association Ltd. v. Mr. D. Morgan, D2007-1461 (WIPO January 18, 2008) (<1066ha.com>) is cited with approval: “What is being curtailed is not free speech, but impersonation.” Also of interest because it takes the opposite view and is consistent with U.S. law is Sutherland Institute v. Continuative LLC, D2009-0693 (WIPO July 10, 2009), involving a parody website resolving from a domain name identical to the Complainant’s trademark. Result: complaint denied.

The dissenting member in Aspis believed that “the Respondent has been improperly deprived of the Domain Name, in violation of his or its U.S. Constitutional rights of free speech, and feels that if this case were brought in virtually any court in the U.S., the result would be different.” In fact, Respondent subsequently commenced an ACPA action in which the Complainant (now defendant) defaulted in appearance, Neon Network, LLC v. Aspis Liv Försäkrings, No. CV-08-1188-PHX-DGC (USDC Arizona July 22, 2009). The Court granted a default judgment declaring that domain name does not constitute trademark infringement under the Lanham Act and is not unlawful under the Anticybersquatting Consumer Protection Act.

This brings us to the latest incarnations of the issue, denying relief for domain names confusingly similar (although virtually identical) to trademarks, Technion-Israel Institute of Technology v. Anonymous / Whois Privacy Protection Service, Inc. / Technionteams Whistleblower, D2011-0887 (WIPO July 15, 2011) (<technionteams.com>) and Nippon Paper Industries Co., Ltd. v. Harriett Swift, D2011-0832 (WIPO July 6, 2011) (<nipponpaper.net>). The Complainant in Technion-Israel owns Israeli Trademark Registration No. 91882, filed on March 24, 1994, for the mark TECHNION – ISRAEL INSTITUTE OF TECHNOLOGY, with design. It “contends that the domain name <technionteams.com> is merely a combination of the Complainant’s TECHNION and TEAMS trademarks.” The disputed domain name in Nippon Paper is an abbreviation of the Complainant’s trade marks (it omits “industries.”)

The Technion-Israel Complainant argues for the proposition that the Respondent lacks rights or legitimate interests in the disputed domain name because it “is using the disputed domain name in association with a website with the sole purpose of defaming the Complainant.” (The Nippon Paper Complainant argues that it is being tarnished; a discussion reserved for a later Note). The Technion-Israel Respondent defends on the grounds of fair use [paragraph 4(c)(iii) of the Policy]. It is a given in these cases that Internet users may be initially confused, but that is the price for “free” speech. “Free” speech does not protect the speaker from liability if in a court of law it is determined to be defamatory or tortious. However, it is not within a Panel’s authority to determine whether the respondent has exceeded its right and slipped into actionable territory. The criterion is hat the website is what it purports to be. The Panel observes:

Respondent’s website makes it clear through page headings and content that its goal is to “expose” the alleged failings of the Complainant’s organization. The Panel does not find any evidence that the Respondent’s website is interfering with the Complainant’s business with a predatory commercial intent. The Respondent’s website does not claim to be associated with the Complainant, but rather makes it clear to Internet users that it is a website dedicated to commenting on and criticizing the Complainant and the programs it provides. Whether the comments posted on this website are defamatory, it is not within the Panel’s power to decide.

There are two “Views” on the issue of domain names identical (not carrying a criticism signifying modifier ). The majority in Aspis and the Panel in 1066 subscribe to View 1. The The Panels in Technion-Israel Institute of Technology and Sutherland Institute subscribe to View 2, which is consistent with U.S. law. For more on these disparate views, go to the WIPO Overview, paragraph 1.4 and paragraph 2.4.

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