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Privileged Speech: Pure and Impure Motives

The Panel in Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, D2010-1413 (WIPO October 27, 2010) notes that “we are dealing with an unusual situation” in this case. Unusual not because the Respondent defaulted in appearance or even that the record is skimpy but that the Panel “consider[ed] itself competent to independently visit the Internet to obtain additional information in a default proceeding.” There is precedent this, despite Rule 15(a) of the Rules which states that a Complaint should be decided “on the basis of the statements and documents submitted.”  An early decision stated that the Panel could perform “limited modest factual research,” InfoSpace.com, Inc. v. Hari Prakash, D2000-0076 (WIPO April 6, 2000). The Consensus View is that the “panel may visit the internet site … [and] also undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision,” Paragraph 4.5 WIPO Overview of WIPO Panel Views on Selected UDRP Questions. But, what is “modest” and “limited”?

In Tradewind Media, the Panel essentially created a record, which ordinarily would be the respondent’s obligation in defending itself, and denied the complaint. The Panel’s investigations ultimately found a criticism site. Initially, he wanted to see whether the “INTOPIC mark is being tarnished or diluted” as the Complainant alleged. There was no “tarnishment” (as that word is used in paragraph 4(c)(iii) of the Policy – because the domain name resolved to a website claiming to be in “Maintenance Mode.” So the Panel did a further investigation that

revealed that prior to the filing of the Complaint, the disputed domain name resolved to a blog site which criticized Intopic Media and its owner. Among the blog entries are posts which read “Alert: Intopic Media owner is a thief”; “Intopic Fail” and “An Advertising Company That Can’t Advertise.” The blog site did not contain any advertising links nor did there appear to be any effort on the part of Respondent to commercially gain from its website. Rather, the sole purpose of the website was to criticize Complainant’s company.

Pure criticism sites are protected under free speech principles – “pure gripe sites are those that present no indicia of bad faith beyond the fact that they are highly critical of the target,” Bloomberg L. P. v. Secaucus Group, FA0104000097077 (Nat. Arb. Forum June 7, 2001) – but it is “unusual” for the Panel to make the respondent’s case. The decision in Tradewind Media turned on what the Panel did not see on first going into the website, but (persevering) saw in the cached snapshots. Ordinarily, respondents add a pejorative to the trademark to signal criticism, as in HBT Investments, LLC d/b/a Valley Goldmine v. Christopher D. Bussing, D2010-1326 (WIPO September 24, 2010) in which the Respondent added “–sucks”; or, in another recent country code decision, the Respondent added as suffix to the TLD “–ihate.”

The difference between Tradewind Media (Respondent keeps the domain name) and HBT (Respondent forfeits the domain name) is that in the latter the Respondent, a competitor, had an “impure” motive in “suck[-ing]” the Complainant. Its speech (according to the Panel) was with “intent for commercial gain … to tarnish the trademark or service mark at issue.” That is not the case in Tradewind Media. As in “other disputes between two United States based parties which involve criticism, panels have recognized that First Amendment protections can give rise to a claim of fair use on the respondent’s part,” citing among other decisions Howard Jarvis Taxpayers Association v. Paul McCauley, D2004-0014 (WIPO April 22, 2004) in which the Panel noted that the “Policy is designed to prevent abusive cybersquatting, but under United States law, it cannot extend to insulating trademark holders from contrary and critical views when such views are legitimately expressed without an intention for commercial gain. That is true even if the critical views are unfair, overstated, or flat-out lies, and even if they are posted at trademark.TLD websites.” Like Howard Jarvis, the Tradewind Media Respondent is not a competitor, unlike the Respondent in HBT who is.

Levine Samuel, LLP <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com

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