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Assessing Rights and Legitimate Interests For Parody and Satire

Parody targeted against a particular person or organization as a branch of political speech deserves the highest level of legal protection, Hustler Magazine, Inc. v. Falwell, 485 U.S. 46 108 S.Ct. 876 (1988), however offensive the speech may be, which in Hustler found the Reverend in an outhouse accompanied by bitingly satirical words. “[I]n the world of debate about public affairs, many things done with motives that are less than admirable are protected by the First Amendment.” The question with domain names is whether an embedded parodic signal in the name itself (or, no signal at all) is sufficient to support the privileged speech defense under paragraph 4(c)(iii) of the Policy. The problem is more than academic because in the free speech area, the majority view reported in the WIPO Overview is not sympathetic to respondents who comment or criticize (commercial ventures) through domain names identical or confusingly similar to the complainant’s trademark. The two views set forth in paragraph 2.4 of the Overview are

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.

The Complainant in Mercury Radio Arts, Inc. and Glenn Beck v. Isaac Eiland-Hall, D2009-1182 (WIPO October 29, 2009) argued that the Panel should confine itself to the domain name “standing alone.” That is, the Respondent had no right or legitimate interest in <>, period. The parodist’s point of view is that the domain name with its built in parodic signal is one half of its agenda, of which the other half is the content of the website.

View 1 is ill equipped to deal with the problem, although it does recognize that an additional word, “sucks” for example may, depending on the content of the website, qualify for the fair use defense. The Panel cited TPI Holdings, Inc. v. AFX Communications a/k/a AFX, D2000-1472 (WIPO) for this proposition, involving the domain name <>. The question of confusing similarity is granted but the issues of right or legitimate interest and bad faith are deferred until the website itself is reviewed to see whether the respondent is really doing what it claims its purpose to be, that is “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue” [paragraph 4(c)(iii) of the Policy].

But political speech is elevated to an even higher level of protection (as least in the United States) . It would appear that the application of View 1 is really meant for commercial speech. The Panel in Sutherland Institute v. Continuative LLC, D2009-0693 (WIPO July 10, 2009), for example, had no problem with accepting the Respondent’s Constitutional right even though it projected its parody through a domain name identical to the Complainant’s trademark. Unlike Mercury Radio, the domain name in Sutherland carries no parodic signal; the unwitting Internet user looking for the real Sutherland Institute is entirely taken in. Click on the link and the parody jumps off the screen. There is initial interest confusion, which is the rationale for insisting on View 1, but in the Panel’s view the offense is not actionable. If there is a tort, it is not in the Panel’s authority to resolve it. Go to Court.

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