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Defense of Free Speech Under UDRP Depends On the Panel You Draw

It may be surprising to learn that defense of free speech under UDRP depends on the Panel you draw; but there’s an explanation, which is that not all panelists’ views are harmonized as happens in common law courts that follow a strict precedential regime imposed by appellate authority. “The panel you draw” warning comes from an early case from a split panel that ruled in favor of the trademark owner, Time Inc. v. Chip Cooper, D2000-1342 (WIPO February 13, 2001) (<>) (“The majority believes that potential users of the UDRP are entitled to some degree of predictability. Counseling one who is considering filing a Complaint should consist of more than, “It depends what panelist you draw.”)

The UDRP is not, as we learn from the WIPO Overview (Second Edition), a precedential jurisprudence:

Consensus view: The UDRP does not operate on a strict doctrine of precedent. However, panels consider it desirable that their decisions are consistent with prior panel decisions dealing with similar fact situations. This ensures that the UDRP system operates in a fair, effective and predictable manner for all parties, while responding to the continuing evolution of the domain name system.

This is not to say the mantra of precedence is not generally invoked; the power of precedence weights heavily on UDRP decisions. Nevertheless, there are a number of split views on legal issues with free speech as fair use being one of them. As a footnote, free speech is not specifically named as a defense to a claim of cybersquatting but is subsumed under “fair use” (paragraph 4(c)(iii) of the Policy). The question is, to what does free speech attach? The domain name or site content? While principles are mostly harmonized free speech is one of several for which there is a split of views.

The divide of views is illustrated in two recent cases, Philip Morris USA, Inc. v. David Delman / David Delman, FA140900 1579437 (Nat. Arb. Forum October 27, 2014) (Complaint granted for <phillipmorris>) and Adodis Technologies Private Limited v. Eric Rem, 249-2014 (KLRCA/ ADNDRC September 19, 2014) (complaint denied for <>). Both decisions come from single member Panels and both rely on precedence for the conclusions.

The domain name in Philip Morris is a classic example of the “sucks” type of gripe, <>. Complainant’s point is that while “Respondent may have the right to develop a website critical of Complainant’s products, but he may not co-opt Complainant’s proprietary rights for use in this domain name.” The Panel noted that “[p]revious panels have generally held that critical speech is protected when used in connection with a non-infringing domain name, but that such protection does not rise to the realm of domain names.” In this line of case “[f]ree cannot be used as a defence against the use of a confusingly similar mark as a domain name.” The fact the website to which the domain name resolved chastised smoking “does not amount to a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(ii) and (iv), respectively.”

Adodis is diametrically opposite. In this case Respondent affixed “fraud” to the trademark, <>. Complainant outraged argued that the “person who created it has a clear intention to defame the Complainant’s position in the market as a leading web development company” resulting in loss of clients which raises two tort claims, defamation and interference with business relations cause damage. Here, the Panel looked to the other side of authority to rule that Respondent was making fair use of a trade mark: “there is no evidence that the Respondent is, inter alia, operating the website for any commercial purpose, a competitor of the Complainant, or attempting to impersonate the Complainant or divert customers away.”

On the tort issues, the Panel held that Complainant’s assertion that the Respondent has “‘defamed the Complainant’s position’ … [is not] the primary concern of the Policy” which is cybersquatting. “Tarnishment” (the Panel noted)

refers to “such unseemly conduct as linking unrelated pornographic, violent or drug-related images or information to an otherwise wholesome mark” [citing a 2001 decision]…. As such, the Complainant’s assertion that the Respondent was intending to defame the Complainant’s position in the market reflects a misunderstanding of the nature of tarnishment prohibited by the policy. Fair-use criticism, even if libelous, in contrast does not constitute tarnishment and is not prohibited by the Policy. The Complainant can pursue such assertions via other more appropriate legal venues [citing a more recent case fro 2013]

The Adodis Panel also cited Ryanair Limited v Michael Coulston, D2006-1194 (WIPO December 12, 2006) where “the Panel had held that the Respondent’s site criticized the Complainant and its business practices, sometimes in harsh terms, but did not associate the RYANAIR mark with any unwholesome activity.” In trademark cases also criticism claimed to result in pecuniary damage to a plaintiff’s business is not actionable as infringement although it could conceivably be defamation if there is (as is rarely the case in these complaints) factual support.

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