Paragraph 4(c)(iii) of the Policy reads: “[Y]ou are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” As the Panel points out in Proskauer Rose LLP v. Leslie Turner, D2011-0675 (WIPO June 30, 2011) “free speech is not listed as one of the Policy’s examples of a right or legitimate interest in a domain name … [but] the list … is not exclusive.” UDRP panelists quickly concluded that free speech for criticism and commentary was subsumed in “legitimate noncommercial or fair use.” Also, “[t]he Internet is above all a framework for global communication, and the right to free speech should be one of the foundations of Internet law.”
A finding that the respondent is exercising her right of free speech concludes the issue in so far as cybersquatting is concerned. It does not necessarily conclude the dispute. “Whether the content of the website is actionable under the law for reasons unrelated to the Domain Name itself is not for this Panel to consider.” Questions of defamation are for another court. The same answer, but based on a different rationale was delivered in the matter of three other complainants, senior attorneys at the Proskauer Rose law firm. The three partners in Gregg M. Mashberg v. Crystal Cox, D2011-0677 (WIPO June 30, 2011), Allen Fagin v. Crystal Cox, D2011-0678 (WIPO June 30, 2011), Joseph Leccese v. Crystal Cox, D2011-0679 (WIPO June 30, 2011) alleged common law trademarks. Where the asserted mark is a complainant’s personal name, the “first hurdle [he] must clear is to establish that [he] has rights in a trademark to which the Domain Name is identical or confusingly similar.”
Cases in which personal names have been held to constitute unregistered trademark rights involve individuals, generally founders of businesses, in which they are identified as the alter egos and driving forces behind the companies. The Panel cites as examples of alter egos and driving forces Roland Mouret v. Domains by Proxy, Inc. and Sonia Long, D2009-1435 (WIPO December 10, 2009) (Complainant had trademark rights in his personal name, which he used in connection with his fashion design business); Kotak Mahindra Bank Limited v. Richard Brown, D2008-0243 (WIPO April 9, 2008) (Complainant had developed trademark rights in his name through being a well-known business man and chairman of a bank).
Law office partners are not in the same category. The Panel explains why the record in this case does not support a common law trademark right. The first branch of proof is evidence that complainants’ names are source indicators:
The record before the Panel suggests that Complainant[s] [are] highly respected, prominent lawyer[s] who [are] partner[s] with a major law firm. There is insufficient evidence here that Complainant[s] market or provide services independently of the Proskauer law firm. Rather, it appears that the Proskauer firm is the platform on which Complainant[s] provide [their] legal services.
The second branch of proof is evidence that complainants have spent money advertising themselves:
Nor is there any evidence of record that Complainant has spent money advertising his name apart from the Proskauer firm, or billed clients in his own name.
there is no evidence in the record that the legal community regards Complainant as the driving force behind, or alter ego of, the Proskauer firm.
It has long been held that the question of parsing speech should be left to a court of law. See, for example, Mayflower Transit, LLC v. Dr. Brett Prince (CV 005354, D.NJ., March 30, 2004) (although defendant’s use of plaintiff’s service mark in domains of noncommercial web sites critical of plaintiff does not violate the ACPA as this is a “bona fide noncommercial” use of the mark which defendant had reasonable grounds to believe was lawful, defendant may nevertheless be exposed to liability for defamation if his statements are actionable).