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Fair Use of Trademark for Comment and Criticism

It is fair use of trademark as entry to a website devoted to comment and criticism. Paragraph 4(c)(iii) of the Policy is a two part either/or test. The respondent must show that A) it is using the domain name for “a legitimate noncommercial or fair use” purpose and B) its use is “without intent for commercial gain to misleadingly divert consumers” or “to tarnish the trademark or service mark at issue.” “Legitimate noncommercial” stands in contrast to “legitimate commercial” use in paragraph 4(c)(i). The term “fair use” refers to Constitutional and statutory privileges of non-actionable expression. The term “commercial gain” is construed to mean gain by any party with whom the respondent is associated. Thus, if a domain name is diverted to a second website the respondent must prove that it receives no benefit from the receiving website. These principles are on display in Galderma S.A. v. Domains by Proxy, Inc. / Aegis Holdings Group, Inc., D2011-0146 (WIPO March 27, 2011). A respondent’s post hoc offer to use the website for a noncommercial purpose “does not provide a defense under the Policy,” Avon Products, Inc. v. Mary Ultes, D2009-0471 (WIPO June 3, 2009).

What distinguishes speech critical of a complainant that overrides its demands for transfer of the domain name from critical speech that violates the Policy cannot be reduced to a simple formula. The principle of free speech is clear, but the packaging of the speech and other factors necessarily determine whether the respondent is safely harbored. It is certain that a domain name that resolves to a site used primarily to comment or criticize the complainant is protected under paragraph 4(c)(iii). Criticism in fact has been held to include commercial, disputatious, sloganeering commentary built into domain names. In Twentieth Century Fox Film Corporation v. DISH Network LLC, FA1010001350483 (Nat. Arb. Forum November 22, 2010), for example, the majority ruled that incorporating FOX into <foxshakedowndish.com>, <weofferedfoxafairdeal.com>, <foxrefused.com>, and <jointhefightagainstfox.com> were not confusingly similar.

Galderma is typical of a “pure” website. The Panel points out that the “WIPO overview deals in particular with the divergence of opinion as to whether a domain name that is not identical to a trademark but includes some modifier may be used for a domain name in these circumstances.” The modifier in Galderma is “review” added to the trademark EPIDUO to form <epiduoreview.com>. In cases where the domain name comprises a trademark without any modifier, “the degree of initial interest confusion on the part of an Internet user may well be such that it would not be legitimate for the domain name to be used for a criticism site,” citing Covance, Inc v. The Covance Campaign, D2004-0206 (WIPO). “However” (the Panel continues) “where, as in this case, the word ‘review’ is added to the trademark then the degree of initial interest confusion is likely to be rather less.”

The Complainant’s argument in Golderma that “the criticisms made of its products are not fair or justified or supported by real evidence” is beside the point. The assertion that there is no evidence that the “Respondent … actually used EPIDUO and does not comment on whether the alternative or competing products mentioned are themselves likely to cause the same side effects as EPIDUO” does not constitute tarnishment as that term is construed under the Policy. Rather, Respondent’s “home page … is headed Epiduo Review and then goes on to describe EPIDUO and its constituents and assert various side-effects that users are likely to suffer.” Other pages comprise blogs that include commentary on acne and its causes as well as further criticism of EPIDUO and commentary on other products or substances that may be used to treat acne.” Disagreeing with a respondent’s criticism of its product is not evidence of infringement. The “Panel does not consider that there is anything to suggest that the content is other than genuine criticism or review.”

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