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Limits of Protected Speech

The question of protected speech is whether the protection is to the domain name or the contents of the website. There are two official “views” about critical speech. Both recognize (at least, generally) that use is “fair” if it is foretold or announced in the domain name and expressed in the content. Thus, “trademark+pejorative.com” that resolves to a website with critical content is generally protected. The hesitation has to do with the choice of pejorative. The most common second word is “sucks”, such as in Applied Systems, Inc. v. Atlantic Insurors, Inc., D2012-2167 (WIPO December 16, 2012) (<appliedsystemssucks.com>). The split in views comes when there is no foretelling in the domain name; when a domain name identical to the trademark resolves to a website critical of the complainant. The different views are captured in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (2nd Ed), paragraph 2.4 as follows:

View 1: 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.

View 2: 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.

In addition to these official views, there is an unofficial view that rejects protection for outrageous or extreme speech, where it appears that the speaker is intent on something more than critical commentary or criticism. An example is AlgaeCal Inc. v. AlgaeCal Fraud, D2013-1248 (WIPO September 12, 2013) where the registered domain name incorporates Complainant’s mark with the addition of “fraud,” <algaecalfraud.com>. The applicant styles itself “AlgaeCal Fraud” without disclosing its true identity and provided false contact information. Complainant is a Canadian company. The Respondent defaulted in appearance. The Panel found that

While the Respondent’s website itself first appears to be a complaint site (also known as a so-called “gripe” site) on which the Respondent has posted considerable commentary highly critical of the Complainant and its products and thus seemingly protected as free speech, close examination of the Respondent’s actions, viewed collectively, reveals a different and rather illicit purpose behind its use of the disputed domain name and the associated website: to intentionally cause injury and disruption to the Complainant’s marks, reputation and business.

The Panel was turned by “Respondent’s actions [which when] viewed collectively, reveal[ed] a different and rather illicit purpose.” He pointed to a number of acts that in his judgment collectively mark bad faith, but one in particular. He found that

the Respondent intentionally blocked its site from being accessed by all Internet users located in Canada including the Complainant. This stands contrary to the interests of an operator of a legitimate complaint site of freely and widely disseminating its negative commentary to all those Internet users who might be potentially influenced by that commentary and/or affected by the acts which are the subject of those comments. By preventing the Complainant from accessing the Respondent’s website, the Respondent effectively shielded its negative comments from the Complainant — the very party which has the means and motivation to seriously challenge and completely refute the validity of those comments.

Respondent “intentionally posted the information to damage the Complainant’s reputation and disrupt its business, specifically that the Complainant engaged in illegal behavior, criminal conduct and provided products laced with poison.” The Panel inferred from the content, lack of response, false contact information and manipulating access to the website that “the exact intent which the Respondent had in mind when it posted this content [could have] no other plausible, let alone legitimate, reason … to justify its action.”

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