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Criticism without Commercial Intent, Normative International Legal Principle

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions records two views on using domain names identical or confusing similar to a complainant’s trademark for criticism. “This is sometimes said to reflect differences in national laws relating to freedom of speech,” WIZZ Air Hungary Airlines Limited Liability Company v. Holden Thomas, D2009-1105 (WIPO September 22, 2009). View 1 is restrictive, “The right to criticize does not extend to registering a domain name that is identical or confusingly similar to the owner’s registered trademark or conveys an association with the mark.” The rationale for View 1 is that the very inclusion of the trademark in the domain name causes “initial interest confusion.” Panelists who adhere to this View downgrade the “legitimate non-commercial or fair use” defense set forth in Paragraph 4(c)(iii) of the Policy.

View 2 which is consistent with U.S. Constitutional – and, in the Panel’s view in Coast Hotels Ltd. v. Bill Lewis and UNITE HERE, D2009-1295 (WIPO November 23, 2009), International normative principles of free speech – states that “Irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if the use is fair and non-commercial” (emphasis added). The highlighted phrase – “as part of” – implies that View 2 is referring to domain names “confusingly similar” rather than “identical” to the trademark. For example, the parties in Joseph Schlessinger, Ph.D. v. PrivacyProtect.org / Harold O Connor, JS Players Association, D2009-0695 (WIPO July 21, 2009) are U.S. residents, but the respondent’s criticism is conveyed in a domain name identical to the Complainant’s trademark, <josephschlessinger.com>. “Sucks” cases are the most familiar examples of “confusing similarity,” but there are other suffixes that forewarn the nature of the contents. In Coast Hotels, for examples, the Respondent added to “coast hotels” the phrase “badforbc” to form <coasthotels-badforbc.info> and
<coasthotels-badforbc.org>.

If the order of the “Views” is an indication of which one expresses the majority, then it must be View 1. Under View 2, allegations that the statements are unfair, tarnish the complainant’s reputation or are libelous do not defeat the paragraph 4(c)(iii) defense. The Panel in Coast Hotels noted that the

Complainant also alleges that Respondent’s use tarnishes Complainant’s mark, and thus is not legitimate. However, fair-use criticism does not necessarily constitute tarnishment, and in cases such as this is not prohibited by the Policy. Claims based on commercial libel must be brought in other legal venues.

The fundamental rule for a View 2 finding is that a website is what it purports to be. Free speech for lawyer sites critical of trademark holders that implicitly solicit prospective class members, for example, lack rights or legitimate interests and do not pass the good faith test. Ginn Real Estate Company LLC v. Hilton Wiener, FA0806001211342 (Nat. Arb. Forum August 20, 2008) (<ginnlawsuit.com>).

The Panel in Coast Hotels rejects the view that freedom of speech (subsumed in the defense of “fair use”) is solely a U.S. principle. “In broad terms, the Panel is of the view that Respondent has the right to express its views in any forum of its choice…. and should not be decided on the basis of national law if the relevant provision does not import or refer to national law.” Rather, “issues should be determined by engaging in a legal analysis that incorporates recognition of normative principles of international law.” In an extensive footnote, the Panel concludes that while the “practical application of [many declarations and covenants adopted around the world are] not relevant to the Panel’s deliberations on whether these reflect a normative international legal principle” – they “do not have the force of law” – nevertheless they arguably “reflect the customary international legal norm.” This is a forceful argument in favor of View 2. The rights of trademark holders do not encompass curtailing free speech.

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