Question 2.4 of the WIPO Overview of WIPO Panel Views on Selected U.D.R.P. Questions asks, “Can a criticism site generate rights and legitimate interests?” The answer is Yes, but. The “but” could depend on the Panel assigned to resolve the dispute; it could also depend upon whether the criticism was the ultimate intended purpose. Unlike answers to other questions which record consensus views, 2.4 notes that there are two opposing Views. This one of only two circumstances for which the WIPO Overview records no consensus. There is a View 1 and a View 2.
View 1 says
The right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant’s trademark. That is especially the case if the respondent is using the trademark alone as the domain name (i.e, <trademark.tld>) as that may be understood by Internet users as impersonating the trademark owner. Where the domain name comprises the protected trademark plus an additional, typically derogatory term (e.g., <trademarksucks.tld>), some panels have applied View 2 below.
View 2 says
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 such use is fair and noncommercial.
In the View 1 line of reasoning Panelists take the position that “it is not the address of the web site that is protected by free speech principles, but rather the content of the web site.” So we find the Panels holding that while respondents have a “right to free speech and a legitimate interest in criticizing the activities of organizations like complainant … [that] is a very different thing from having a right or legitimate interest in respect of [a domain name that is identical to Complainant’s mark].” Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (). The Panel in Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) () made an even more radical contribution by stating (perhaps inadvertently given that the domain name is identical to the trademark) that “[f]ree speech cannot be used as a defense against the use of a confusingly similar mark as a domain name.”
In the View 2 line of reasoning the Domain Name Holder is privileged regardless whether the speech is in the domain name or expressed on the website. For those Panelists who embrace View 2 if the content qualifies, the right follows whether or not the domain name is identical or confusingly similar to the trademark. For Panels subscribing to this view, no bright line should be “drawn denying the existence of a non-commercial free speech right under the U.D.R.P. simply based upon whether Respondent has or has not added words … to Complainant’s alleged trademark.” Initial interest confusion “is a price well worth paying to preserve the free exchange of ideas via the Internet.” Action Instruments, Inc. v. Technology Associates, D2003-0024 (WIPO March 6, 2003) ().
This brings me to the latest case on th subject, Watch Empire, LLC d/b/a Timeandgems v. Muhammad Al-Quaid, FA1208001456432 (Nat. Arb. Forum September 18, 2012). The Panel notes that Complainant alleges (that is, admits) that “Respondent provides criticism of Complainant on the website resolving from the domain name and does not allege that Respondent competes with Complainant.” Nevertheless, when all the evidence is reviewed the Panel finds in Complainant’s favor. The domain name is identical to the trademark. The Panel is a View 1 adherent.
The question is, How can a Panel grant Complainant’s remedy when the evidence shows that the website is used for criticism? The Panel even notes that
Complainant does not make any allegations relating to Respondent’s commercial gain. The Panel does not find evidence to support commercial gain and therefore the Panel finds that Complainant did not show bad faith registration and use under a Policy ¶ 4(b)(iv) analysis.
Noncommercial use and criticism would ordinarily bring the domain name into the safe harbor defense under 4(c)(iii). The tipping point for the Panel was evidently the fact that the Respondent was willing to sell the domain name but demanded almost three times the amount offered by Complainant. Respondent’s rejection and its outsize counter to the offer was the trigger for the UDRP proceeding. The Panel clearly decided that the appearance of criticism was deceptive; that it was not for criticism that Respondent created the website, but an excuse for extortion.