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Running the Gamut: Commentary, Criticism, Tarnishment, Disparagement, and Defamation

The two bookends of speaking one’s mind are commentary and criticism, which is indisputably acceptable as protected speech, and (in order of abuse) tarnishment and disparagement. Defamation, which is a stage beyond disparagement, is not actionable under the UDRP, although tarnishment and disparagement may be. In ICANN’s lexicon, tarnishment is limited in meaning to “acts done with intent to commercially gain” (Second Staff Report, October 24, 2009, footnote 2). The word is found in paragraph 4(c)(iii) referring to “noncommercial or fair use”—“[is] without intent . . . to tarnish the trademark or service mark at issue.” The phrase “tarnish and disparage” (which together are not found in the UDRP) is a listed factor for assessing statutory liability under the Anticybersquatting Consumer Protection Act (ACPA) (15 U.S.C. §1125 (d)(1)(B)(ii)(V)).

Disparagement, whether by itself or adding vituperation and invective, that is excessive by any standards has a mixed history. Disparaging a complainant’s goods or services, for example, arguably points back to comment and criticism, thus protected speech. However, speech that is a mixture of disparagement plus expressions staining complainant’s reputation, in other words “tarnishing” in its full dictionary meaning, not limited to “commercial gain,” has been found actionable as abusive registration. The term “abusive registration” is found in both the WIPO Final Report and the Second Staff Report and is arguably more inclusive than cybersquatting.

Two recent cases illustrate the difference between plain vanilla cybersquatting claims, which I’m not dealing with here, and registrations for which respondents have a more toxic agenda. The decisions come from the same Panel (sole panelist). I’ve discussed the first one in an earlier essay in connection with assessing bad faith from renewal of registration, Adam Milstein v. Benjamin Doherty, FA1511001647496 (Forum January 11, 2016). Respondent in the second case, Jody Kriss and East River Partners, LLC v. Felix Sater / Larissa Yudina, FA160200 1660728 (Forum March 22, 2016) “threatened” in an email to one of Complainants business associates before Complainant filed its complaint “to defame online a co-plaintiff in [an ongoing] litigation.” Complainant alleges further that the “sender included a link to the website located at with the warning: ‘See your friend and co-plaintiffs’ new lifetime online reality. If you choose to continue with this extortion, It will also be your new online reality for the rest of your life.’”

For all the irritation that results from plain vanilla cybersquatting, and that’s the large majority of cases administered under the UDRP, it’s essentially a soft tort; registrants are doing no more than bottom feeding on the value of the trademarks they mimic. It’s not unlikely even that trademark owners forego the UDRP process altogether and pay registrants a nominal tax to take down or take possession of the infringing domain name. Phishing is more toxic in targeting trademark owners’ customers, therefore a greater irritant and a more compelling reason to file comlaints despite the cost. Stealing domain names is a step further in the direction of abusive conduct; victims have not choice other than commencing an administrative proceeding. Both phishing and theft are nominally cybersquatting but registrants’ intentions go beyond that. Targeting trademarks for commercial gain is one thing, but targeting trademark owners purposely to injure their reputations is another; this is a different level of abuse.

Respondent’s counter-argument in Jody Kriss follows a familiar script for defending speech that is allegedly noncommercial and fair use under paragraph 4(c)(iii) of the Policy. He claims he is merely exercising his constitutional right of free speech. Thus, “It is not a violation of the Policy to post disparaging content on the Internet.” He also notes that: “Simply posting disparaging content, particularly directing attention to litigation pleadings and litigation summaries, has never been bad faith use under the Policy, and these disputes are outside the scope of the Policy.” He then concludes that “ … gripe sites are legitimate use.”

It is true (quoting from Jody Kriss) that “gripe sites may give rise to a legitimate use and negate the notion of bad faith, but as has already been pointed out there must be doubt whether the sites in question in this case are gripe or criticism sites at all, as the content goes far beyond what is normally regarded as criticism and is more akin to abuse and with the obvious intention to damage Complainant’s business and trademarks.”

But while superficially attractive this argument only has legitimacy when the content is genuinely what it purports to be. The right to comment and criticize has been affirmed in many cases. A good example of the noncommercial and fair use defense can be seen in Howard Jarvis Taxpayers Association v. Paul McCauley, D2004-0014 (WIPO April 22, 2004) (U.S. parties) in which the Panel explains that “under Section 43(c) of the Lanham Act, there is no cause of action for trademark dilution (which encompasses both blurring and tarnishment) if a party is making a ‘[n]oncommercial use of a mark’ which is the case if the site is a legitimate gripe site.”

The illegitimate, where the expression veers to the extreme, is illustrated in The Royal Bank of Scotland Group and National Westminster Bank v. Pedro Lopez and A&A System Solutions and Alberto Rodriguez, D2002-0823 (WIPO December 3, 2002) (<nationalwestministerbank.com>), cited by the Jody Kriss Panel as precedent for its determination:

Freedom of speech must be balanced with some degree of control, manner and regulation to avoid the arising of abuses; limits must be set. Moreover, Respondents neither specify nor explain Complainants’ “reprehensible behaviour” on their website. Without support, this innuendo serves no purpose other than to potentially tarnish the reputations of Complainants and their trademarks.

The Panel in Jody Kriss concludes that “[i]n the present case, it is very apparent that Respondent has not exhibited any such balance and that there were no limits to which Respondent would not go to denigrate Complainant and do damage to it under the guise of using domain names that incorporate Complainant’s trademarks and give the false impression that they are domain names of Complainant.” It is not a defense under either the UDRP or the ACPA that the respondent or defendant “was motivated by malice, but not profit.” See Alpha Recyclying, Inc. v. Timothy Crosby, 14-cv-5015 (S.D.N.Y. March 23, 2016). Either malice or profit can violate the Policy or the statute if the registration is abusive in its more expansive meaning.

As in the Panel’s other decision in Adam Milstein the Respondent also argued that it originally registered the domain names before Complainants’ trademarks and therefore could not be considered a cybersquatter, but the law is developing in this area. There is a level of abuse that is within the scope of the Policy. There are circumstances under which renewal of registration has the same consequences as original registration, and this happens when the content of the domain name continues the same agenda of derogation that preceded renewal:

The evidence set out in some detail above shows that after the trademarks were registered and after the domain names were registered there were new derogatory statements posted about Complainants as part of the sustained and continued denigration of Complainant in extreme terms that seem to have no limits.

The Panel continued:

It shows a continuing and renewed intention to denigrate Complainant and tarnish its trademarks, and all under the coverage of a series of domain names that were confusingly similar to the trademarks and none of which were necessary for Respondent to own to promote its views; if it wanted to do this on the internet, it could have done so by registering domain names that did not falsely imply they were Complainant’s own trademarks. In these circumstances, it is clear that there was an intention to act in bad faith towards Complainants at all relevant times, even after the renewal of the registrations. Clearly this was bad faith at the time of the renewal of the registrations, in breach of paragraph 2 of the Policy and also bad faith use as the same conduct has continued.

Now, clearly “an intention to act in bad faith” has a wider reference when applied to abusive conduct. It’s bad faith because the conduct is abusive, not simply that the Respondent is cybersquatting. He’s doing that, but he’s also doing more than that. Accordingly, “the Panel finds that the acts of bad faith committed by Respondent were commenced and continued well after Complainants acquired their common law trademark rights and undoubtedly with actual knowledge in Respondent of the existence and prominence of both complainants, their trademarks and their businesses.”

The one further observation that can usefully be pointed out is that complaints alleging libel, and purely that, are likely to be denied as outside the scope of the Policy. The reason for this is that where contents can reasonably be viewed equally as protected speech or something more than stinging criticism there is sufficient uncertainty for Panels to conclude that the matter is better handled in a court of law. “This outcome simply means that, in the Panel’s view, the Complainant has not proved that the circumstances of the case come within the relatively limited confines of the Policy. It remains open to the Complainant to pursue defamation [in] . . . court proceedings should the Complainant consider it appropriate to do so.” Ironfx Global Limited v. MR Qaisar Saeed Butt / Moniker Privacy Services, D2015-1221 (WIPO September 17, 2015).

Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy. (Legal Corner Press, 2015). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble. Ongoing Supplement here.

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