We hope you will enjoy this edition of the Digest (Vol. 3.3), as we review these noteworthy recent decisions, with commentary from our General Counsel, Zak Muscovitch:
‣ Reputation Management Company Harms its Reputation with its ‘Misleading’ Complaint (guaranteedremoval .com *plus comment)
‣ Complainant had 1949 Trademark, but the Annoyed Respondent had Domain Name since 1995 (metco .com)
‣ Domain Corresponding to Famous Mark’s Services Has No Plausible Explanation (7-elevenevstations .com *plus comment)
‣ Credit Ninja v. Kredit Ninja and the Prior Use Principle (kreditninjallc .com *plus comment)
‣ Legitimate Free Speech Rights Not Considered Abusive (grahamcfisher .com *plus comment)
Register today for “The Great Debate Over Domain Name Disputes,” scheduled for January 31, 2023 (12:30 PM EST). In this session, internet law experts will discuss controversial domain name arbitration topics for information and enjoyment. Register here.
This Digest was Prepared Using UDRP.Tools and Gerald Levine’s Treatise, Domain Name Arbitration.
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Reputation Management Company Harms its Reputation with its ‘Misleading’ Complaint
Erase Technologies, LLC v. Web Presence LLC, NetReputation.com, WIPO Case No. D2022-3797
<guaranteedremoval .com>
Panelists: Mr. Lawrence K. Nodine, Mr. John C. McElwaine, Mr. Gerald M. Levine
Brief Facts: The Complainant is a content removal company that specializes in the permanent deletion of negative content on websites and search engines. The Complainant owned the domain name <guaranteedremovals .com> since November, 2013. The Complainant owns a New York State service mark registration for GUARANTEED REMOVALS (Registered on April 26, 2022) and has a pending U.S. federal trademark application (filed on September 15, 2022). The Respondent registered the disputed Domain Name on December 16, 2016 and used the associated website to provide reputation management services starting at the end of 2017. The Complainant contacted the Respondent regarding its use of the disputed Domain Name on March 21, 2022. Currently, the disputed Domain Name resolves to an inactive webpage.
The Complainant alleges that the Respondent knew about the use of the GUARANTEED REMOVALS mark years prior to any direct contact with the Complainant. The Complainant further claims that Respondent’s USD $75,000 counteroffer to purchase the disputed Domain Name is evidence of bad faith under the Policy. The Respondent contends (and supplies evidence) that it made uninterrupted and continuous use of the disputed Domain Name in relation to its descriptive meaning from 2017 until 2022. In June 2022, after receipt of cease and desist letter, it deactivated the website out of respect for the Complainant.
Held: The Panel finds that the Complainant’s New York State service mark registration establishes that it owns rights in the GUARANTEED REMOVALS mark. However, state trademark registrations are not always granted the same deference as national trademark registrations because they are sometimes issued automatically. However, this does not appear to be the case with New York state registration. The Panel further finds that the Respondent has legitimate interests in the disputed Domain Name, as prior to any notice of the dispute the Respondent was using the disputed Domain Name in connection with a bona fide offering of services. The Respondent also offers substantial evidence of third-party use of “guaranteed removal” descriptively. The Panel finds that preponderance of evidence supports Respondent’s claim that it registered the disputed Domain Name to exploit its descriptive connotations and not to exploit any alleged trademark rights of the Complainant.
The Panel also finds that the Complainant failed to prove by a preponderance of the evidence, that the Respondent registered the disputed Domain Name in bad faith. The Respondent registered the disputed Domain Name in 2016, more than five years before the Complainant applied for its New York State trademark registration in 2022. Although the Complainant alleged widespread use since 2014, the Panel holds that there was insufficient evidence that the Complainant would have acquired distinctiveness in the descriptive GUARANTEED REMOVALS mark prior to registration of the disputed Domain Name by the Respondent. There is no basis, therefore, for the Panel to infer that the Respondent was more likely than not aware of the Complainant’s trademark rights when it registered the disputed Domain Name in 2016. Because the Complainant fails to carry its burden to prove bad faith registration, the Panel will not address the bad faith use contentions.
RDNH: The Panel finds Reverse Domain Name Hijacking because the Complainant factually misleading allegations and key arguments that lacked a plausible legal basis.
The Complainant firstly relies in part on two federal trademark applications, representing that “[b]oth applications are currently pending”. This argument was factually misleading because the Complainant did not disclose that it filed an “Express Abandonment” of the standard character application on the very same day that it filed the UDRP Complaint with the Center. It is the Complainant’s effort to mislead the Panel that supports the finding of RDNH. Similarly, the Complainant alleged that “[a] Florida state registration currently pending,” but the exhibit to which it points recites “Rejected Filing”. Here again, the misleading allegation, which the Complaint’s counsel certified under Rule 3(b)(xiii) as “accurate,” is not excused because the annexed evidence reveals the allegation’s falsity on its face.
Lastly, the Complainant’s only contention with respect to Bad Faith clause is that the Respondent was making no use of the disputed Domain Name as of the filing of the complaint, even though it well knew (and had alleged) that the Respondent had been using the disputed Domain Name to provide services for several years. In essence, the Complainant would penalize the Respondent for taking down the site as it had insisted in its cease-and-desist letter, and then labelling this “passive holding”. This contention lacked any “plausible legal basis.”
Complaint Denied (RDNH)
Complainants’ Counsel: Gibney, Anthony & Flaherty, LLP, United States
Respondents’ Counsel: Cylaw Solutions, India*
* Represented by Ankur Raheja, Editor-in-Chief
Case Comment by ICA General Counsel, Zak Muscovitch: Congratulations are in order for our Editor-in-Chief, Ankur Raheja, who successfully represented the Respondent in this matter.
Now turning to this case, I found the reliance upon the New York State trademark registration particularly interesting. As the Panel correctly noted, “state trademark registrations are not always granted the same deference [in the UDRP] as national trademark registrations because they are sometimes issued automatically”. In that sense, the UDRP distinguishes between a trademark that undergoes substantive examination and therefore provides genuine trademark rights, and something that is not much different than a mere ‘business name registration’ (sometimes referred to as a ‘fictitious name registration’ or a ‘style name’) that one can obtain in many jurisdictions upon simply paying a modest fee and the application undergoing a cursory check by an administrator to ensure that the particular business name is not already registered. In contrast, national trademarks, including in the US, generally undergo a substantial examination to determine whether the applied-for mark is inter alia, descriptive. If so, it is generally rejected unless the applicant can claim or prove acquired distinctiveness which is sometimes referred to as “secondary meaning”.
In the case at hand, the Panel noted the existence of New York State legislation regarding trademark infringement and also noted in particular, that NY State has regulations governing the registration of trademarks. According to these regulations and the NY State General Business Law, it does indeed appear that a marks must be “distinctive” in order to be considered a trademark entitled to registration. Moreover, there is an express prohibition on merely descriptive terms. The law also appears to give the trademark office the ability to refuse an application if it is not considered registrable. So on its face, the NY State trademark regime would seem to be consistent with many of the common indicia of a genuine national trademark examination regime. Accordingly, that is why the Panel found that this NY State trademark registration qualified as a trademark under Paragraph 4(a) of the Policy.
Nevertheless, I have a hard time believing that NY State trademarks in practice, undergo the same kind of vigorous examination for descriptiveness that the USPTO would for example, undertake. How else other to explain how the Complainant obtained a NY State trademark registration for GUARANTEED REMOVALS when it appears to be merely descriptive? Indeed, the very same Complainant abandoned its application for the same mark with the USPTO. Was that because it wanted to avoid the inevitable finding of descriptiveness by the USPTO Examiner? I am also apprehensive of the NY State trademark because we don’t have online access to any information about the application and eventual grant of registration. Without being able to review this important material, we may be missing an important aspect of the registration.
These issues came to the forefront in the recent case concerning TampaWaterTaxi[.com], which we wrote about in Digest Volume 2.31. In that case, it appears that the non-American Panelist may have assumed that Florida had a substantive examination regime since a prior application had been rejected on the basis of an earlier mark. The foreign Panelist appears to have not been personally familiar with Florida trademark law and practice and may have misapprehended the actual nature of the trademark examination regime there, particularly because rejection on the basis of similarity with a prior application does not necessarily equate to examination for descriptiveness. Indeed, in looking a the Florida application itself, the applicant paid a fee of only $87.50 and its application inexplicably purported to disclaim individual words from TAMPAWATERTAXICO.COM as a purported means of complying with a prohibition on claiming an exclusive right to commonly used terms. There is no evidence of any meaningful examination of the application for descriptiveness and the office apparently accepted this unusual disclaimer of words within a single combined term. Making this even more questionable is that when the very same applicant applied for a USPTO registration for TAMPA WATER TAXI, the Examiner of course refused the application on the basis of it being primarily geographically descriptive. The applicant then claimed acquired descriptiveness and the application is pending. If both Florida and the USPTO have equivalent examination regimes, how did the Florida one get through and the USPTO one did not, absent acquired descriptiveness? Furthermore, a subsequently filed lawsuit alleged that the relied upon Florida trademark was actually invalid as a result of its expiry yet this apparently did not come to the attention of the Panelist in that case.
These are the kinds of pitfalls that panelists can inadvertently be subject to where non-national trademarks are relied upon in the UDRP. I see three issues with this approach. The first is that reliance upon a US State trademark in a UDRP proceeding would seem to require Panels to investigate each State’s regime in order to confirm that the particular State does indeed have substantive trademark examination procedures. This may be more of a problem for Panelists who are not American or not from the particular State and are thereby not familiar with the particular regimes in all 50 American states. Secondly, it appears that some states (including New York State), do not provide online access to the trademark registration or file, thereby making it difficult to assess the nature of the process and to review any office actions. This puts respondents and panelists at a disadvantage and can lead to errors, unless complainants are required to submit the associated trademark application file along with the examination procedures when relying upon a state trademark registration. Thirdly, despite the appearance of a substantive examination regime that on its face is intended to prohibit merely descriptive trademark registrations, that may not in practice be the case.
As a practical matter, the global community of panelists cannot be expected to know the examination procedures of each of the 50 states. At a substantive level, the apparent lack of in-depth examination conducted by at least some states combined with an inability to review the examination record, means that state registration may not be adequate evidence of enforceable trademark rights. For the sake of consistency, the UDRP should adopt a consistent approach to US state trademark registrations that does not vary from panelist to panelist. As a result of these various issues, the question of US State trademarks deserves reconsideration. Without further attention, the acceptance of such registrations can lead to error and injustice.
Complainant had 1949 Trademark, but the Annoyed Respondent had Domain Name since 1995
Oerlikon Surface Solutions AG v. Bonded Labs, Bonded Labs, WIPO Case No. D2022 -3934
<metco .com>
Panelist: Mr. Adam Taylor
Brief Facts: Since around 1946, the Complainant’s group and its predecessors have supplied products and services related to materials, thermal spray, and coating for use in various industrial processes under the mark METCO. The Complainant owns many registered trademarks for METCO, including a US trademark registered on March 8, 1949. The disputed Domain Name was registered on May 19, 1995 and initially resolved, or redirected to, various websites offering sexual enhancement services. For a brief period in August 2017, the disputed Domain Name resolved to a parking page with a “for sale” notice and pay-per-click (“PPC”) links.
The Complainant served the Respondent with a cease and desist letter on July 28, 2022, to which the Respondent responded, that if the Complainant was interested in purchasing the disputed Domain Name, it was available for USD $450,000 at Afternic. The Respondent did not formally reply to the Complainant’s contentions, however the Respondent communicated that the emails that it had received regarding this proceeding constituted harassment and were causing the Respondent stress, that the Respondent had owned the disputed Domain Name since 1995, and that the disputed Domain Name was now available to purchase for USD $900,000 and that it would be “coming off the market” by the end of the week/year.
Held: The Panel notes that it appears that the Respondent owned the disputed Domain Name since it was first registered in 1995 in the absence of evidence to the contrary. While use of the mark METCO by the Complainant and its predecessors long predates the Respondent’s registration of the disputed Domain Name, the Complainant did not provide any evidence regarding the reputation of its mark as of 1995 even within its specific industry, let alone amongst the general public. For most of its long history, the disputed Domain Name has been used in connection with goods and services that are completely unrelated to those of the Complainant.
However, the disputed Domain Name did resolve to a parking page with automated PPC links relating to the Complainant’s industry, and this was for an apparently brief period in 2017, some 22 years after registration of the disputed Domain Name. It is therefore of no assistance to the Panel when considering the Respondent’s state of mind as of the date of registration of the disputed Domain Name in 1995. In the above circumstances, the Complainant fails to satisfy the Panel that, on the balance of probabilities, the Respondent was likely to have been aware of, and targeted the Complainant when registering the disputed Domain Name.
The Respondent did not help itself by sending a series of emails and offering the disputed Domain Name for sale at a vast price instead of filing a Response to explain its position. However, the Respondent’s approach is perhaps explicable as an expression of annoyance by what it perceived as a baseless and bothersome case relating to its long-held domain name. In any event and owing to the overall circumstances of this case as set out above, the Respondent’s attitude of itself does not cause the Panel to conclude that the Respondent set out to illicitly target the Complainant or that the Respondent did engage in a pattern of conduct of registering domain names incorporating third party trademarks for financial gain, as the Complainant claims.
Complaint Denied
Complainants’ Counsel: BrandIT GmbH, Switzerland
Respondents’ Counsel: Self-represented
Domain Corresponding to Famous Mark’s Services Has No Plausible Explanation
7-Eleven, Inc. v. Marquis Frazier, NAF Claim Number: FA2212002023522
<7-elevenevstations .com>
Panelist: Mr. Richard Hill
Brief Facts: The Complainant is engaged in the business of, among other things, offering convenience store services and products at various locations throughout the United States since at least as early as 1927. It grew from the world’s first convenience store to over 72,000 stores in numerous countries around the world. The Complainant also offers electric vehicle charging station services for electric vehicles at select 7-Eleven stores. The Complainant asserts rights in the 7-ELEVEN mark based upon its registration in the United States in 1970. The mark is registered elsewhere around the world and is well-known.
The disputed Domain Name was registered in 2021. The resolving web page states: “This domain may be for sale”, and it provides a toll free number, stating: “We can verify that the domain is for sale over the phone, help you with the purchase process, and answer any questions.” The Complainant alleges that the Respondent registered and uses the disputed Domain Name in bad faith, with the intent to sell and attract internet users for commercial gain. The Complainant further alleges that the Respondent exhibits opportunistic bad faith in that the Respondent registered the Domain Name combining Complainant’s 7-ELEVEN mark and “evstations” (as in “electric vehicle”) as a result of the fact that the Complainant offers EV charging stations. The Respondent did not file a response.
Held: The Panel reaffirms the reasoning set forth in Broadcom Corporation v. Michael Becker, FA0108000098819 (Forum, Oct. 22, 2001), namely that a registration and sale of a domain name can be a legitimate use under the Policy. According to the Panel in the Broadcom case: a) The answer is clearly “yes” if the domain name is a generic name (composed of common words) and is not being used in violation of anybody’s trademark; b) The answer is clearly “no” when the domain name is a famous trademark. In the instant case, the Panel finds that there is bad faith and therefore Respondent does not have rights or legitimate interests in the disputed Domain Name.
The Respondent (who did not reply to the Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. The Respondent is based in the USA, so it must surely be aware of the Complainant’s famous mark and of Complainant’s activities, which include electric vehicle (EV) charging stations. It is difficult to envisage any use of the disputed Domain Name that would not violate the Policy. Again given that the Respondent is a US entity, that the Complainant’s mark is famous, and that the disputed Domain Name is no doubt a reference to one of the Complainant’s services, namely electric vehicle (EV) charging stations, the Panel infers that the Respondent registered the disputed Domain Name with actual knowledge of the Complainant’s mark. For all the above reasons, the Panel finds that the Respondent registered and uses the disputed Domain Name in bad faith pursuant to Policy.
Transfer
Complainants’ Counsel: David J. Steele of Tucker Ellis, LLP, California
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch: This decision is noteworthy not for the expected outcome of the decision, but because it references a very interesting 2001 decision, Broadcom Corporation v. Michael Becker, FA0108000098819 (Forum, Oct. 22, 2001). The year 2001 was of course less than two years after the establishment of the UDRP and yet this decision succinctly and presciently laid out a crucial test and analysis that has withstood the test of time:
“The question that this panel has to answer is whether the registration and sale of a domain name can be a legitimate use in the sense of the Policy. According to this Panel:
a) The answer is clearly “yes” if the domain name is a generic name (composed of common words) and is not being used in violation of anybody’s trademark.
b) The answer is clearly “no” when the domain name is a famous trademark.
c) The answer is less clear when, as in the present case, the domain name is similar to a trademark, but the trademark is not well-known or is a common word or composed of common words.
Although the subsequent case law has somewhat refined this test in application to additional variations of the circumstances, Panelist Richard Hill properly identified the criterion that Panelists need to turn their mind to when assessing a case. I encourage readers to check out how impressively this 2001 decision has withstood the test of time.
Credit Ninja v. Kredit Ninja and the Prior Use Principle
CreditNinja Lending, LLC v. RASHAUD SPIKES / Business, NAF Claim Number: FA2212002023510
<kreditninjallc .com>
Panelist: Mr. Ho-Hyun Nahm, Esq.
Brief Facts: The Complainant offers financial services and loans and owns rights in the CREDITNINJA mark through its registration with the USPTO dated, August 27, 2019. The disputed Domain Name was registered December 27, 2021, which resolves to the Respondent’s website offering debt counselling business. The Complainant alleges that the Respondent fails to use the disputed Domain Name in connection with a bona fide offering of goods and services, and rather the Respondent purports to impersonate the Complainant through its use of a fraudulent website that offers similar financial services.
The Respondent contends that his Company “Kredit Ninja” was created on January 22, 2018 via facebook, however, the related company Kredit Ninja LLC was incorporated in December 2021 by the Respondent. On becoming registered with the state of Arkansas, Kredit Ninja LLC created a website for clients to sign up or call to inquire about credit restoration services and the Company is listed as one of the top 3 credit services in the area.
Held: The Panel notes from the Respondent’s screenshot from Facebook that the Respondent created the business with the name “Kredit Ninja” on January 22, 2018 (which predates the first use of Complainant’s mark). As a result of the Panel’s conducting independent search for companies registered with the Arkansas Secretary of State, the Panel notes that the Respondent, “RASHAUD SPIKES” is recorded as “Incorporator/Organizer” of the company “Kredit Ninja LLC,” the status of which remains “Good Standing.” The Panel further notes that Kredit Ninja LLC created a website by the disputed Domain Name for clients to sign up or call to inquire about credit restoration services.
Given the totality of the circumstances, the Panel finds that the Respondent’s company, Kredit Ninja LLC is commonly known by the disputed Domain Name, and that the Respondent uses the disputed Domain Name for a bona fide offering of services and for its legitimate business. Therefore, the Panel concludes that the Respondent has rights and legitimate interests for the disputed Domain Name, and thus the Complainant fails to satisfy the Policy.
Complaint Denied
Complainants’ Counsel: Gregory J. Chinlund of Marshall, Gerstein & Borun LLP, Illinois, USA
Respondents’ Counsel: Self-represented
Case Comment by ICA General Counsel, Zak Muscovitch: Panelist Nahm properly denied this Complaint despite the Complainant owning a USPTO registered trademark for the same services as the Respondent is engaged in using a confusingly similar mark. This is so not only because the Respondent’s use pre-dated the Complainant’s first use of its trademark, but more generally because the UDRP is not the place to adjudicate claims of trademark infringement. The Complainant can still sue for infringement on the basis of its trademark registration, regardless of whether the Respondent used its mark prior to the Complainant. Then again, the Complainant’s lawsuit may be met with a claim for cancellation of the registration on the basis of the Respondent’s first use in commerce of a similar mark. I also appreciate that Panelist Nahm decided this case on the basis of legitimate interest because he could have skipped over ‘rights and legitimate interest’ and instead found no bad faith registration due to the chronology of the Respondent’s first use pre-dating the Complainant’s use, as Panelists often do. But as I have said before: a) Panelists shouldn’t routinely skip over a Respondent’s rights and legitimate interest (See Digest Volume 2.37 and my comment on the RedGrass[.com] case); and b) as the Panel properly observed in Riveron Consulting, L.P. v. Stanley Pace, NAF Claim No: FA1002001309793, without evidence of a complainant’s trademark rights at the time of a respondent’s registration, there is simply no foundation to conclude that a respondent has no rights in the domain name. Accordingly, in this case, the absence of Complainant trademark rights at the time that the Respondent adopted and used its mark, not only supports a finding of no bad faith registration, but also clearly supports a finding of rights and legitimate interests.
Legitimate Free Speech Rights Not Considered Abusive
<grahamcfisher .com>
Panelist: Mr. Richard Hill
Brief Facts: The Complainant has used the mark GRAHAM C. FISHER in connection with the provision of legal services since at least as early as 2007, and has maintained a website at <grahamfisherlaw .com> since at least 2010. The Complainant claims common law trademark rights in the GRAHAM C FISHER mark as a result of substantial advertising recognition in the media and the legal profession. The disputed Domain Name was registered by the Respondent on August 18, 2021 and he uses it to host a criticism of the Complainant.
The Complainant alleges that the Respondent is a former client of the Complainant and the resolving website is a criticism site about the handling of the Respondent’s case. The Complainant in particular, alleges that since the disputed Domain Name is identical to Complainant’s mark (as opposed to being of the form “[mark]SUCKS”) and there is no suggestion that the disputed Domain Name is not affiliated with the Complainant, consumers will have ‘initial interest confusion’ with the disputed Domain Name.
The Respondent contends that his use is protected by the First Amendment of the US Constitution and by the Oregon Constitution. The Respondent further contends that the Complainant does not have trademark or common law rights in the GRAHAM C FISHER mark and that the Complainant is not using its <grahamfisherlaw .com> Domain Name in connection with a legitimate and active use because it redirects to <portland-criminaldefense .com>.
Held: The question of whether or not criticism sites violate the Policy is a controversial issue, with Panels taking opposite views on the matter, as stated in National Alliance for the Mentally Ill Contra Costa v. Mary Rae Fouts, FA0310000204074 (Forum, Nov. 28, 2003). This Panel takes the view that the goals of the Policy are limited. The Domain name registrations are basically first-come-first-served, and the purpose of the Policy is limited to rectifying cases of obvious cybersquatting in terms of Final Report of the WIPO Internet Domain Name Process (dated 30 April 1999), which formed the basis for the ICANN Policy. This report, inter alia, specifically states: “Domain name registrations that are justified by legitimate free speech rights or by legitimate non‑commercial considerations would likewise not be considered to be abusive.” The instant Panel further reaffirms that it agrees with the case law cited by the panel in Bridgestone Firestone, Inc. v. Myers, D2000-0190 (WIPO July 6, 2000).
In this case, the resolving website displays criticism of the Complainant. While the disputed Domain Name is identical to what the Complainant alleges is a common law trademark, the Complainant did not present any evidence to show that users were indeed misled or confused. Contrary to what the Complainant alleges, there is no risk of actual confusion, because the content of the resolving website (copies of which were annexed to the Complaint) unmistakably consists of criticism of the Complainant. No user would be confused into thinking that the resolving website is affiliated with the Complainant. Nor has the Complainant presented convincing evidence that the Respondent acted with an intent to mislead or to confuse. Further, both parties are from the United States.
On the basis of the evidence before it, the Panel finds that the Respondent is using the disputed Domain Name for criticism. Thus for all the above reasons and in line with previous UDRP decisions, the Panel finds the Respondent has rights and legitimate interests in the disputed Domain Name under the Policy. This finding is of course without prejudice to what a national court might find on the basis of national law.
Complaint Denied
Complainants’ Counsel: Nathaniel Housel of Snell & Wilmer, USA.
Respondents’ Counsel: Richard Ferry, USA
Case Comment by ICA General Counsel, Zak Muscovitch: Well, there you have it. An experienced Panelist has convincingly demonstrated that the UDRP is not intended to address instances of the exercise of legitimate free speech rights, even where there may be so-called “initial interest confusion” with the domain name.
In Digest Volume 2.15, we discussed the Everytown case which put forward an evolved and nuanced variation of the test proposed in Dover Downs which attempted to create a ”uniform approach”, namely the “impersonation test” which purported to rectify two divergent views, i.e. a) the first view being that the right to criticise does not necessarily extend to registering an identical of confusingly similar mark; and b) the second view being that there is a legitimate interest in using a domain name comprised of a trademark for use with a criticism website. ICA Director, Nat Cohen recently wrote an article: “Does the UDRP Interfere With Free Speech Rights? – The StopSpectrum[.com] Decision” (CircleID, December 19, 2022) in which he argues that UDRP jurisprudence should adopt a consistent approach that errs on the side of protecting free speech rights rather than suppressing critical content that may be protected under the U.S. Constitution and other national laws. We covered the StopSpectrum.com dispute in Digest Volume 2.50.
Panelist Richard Hill, in this case, provides a remarkably refreshing approach that ironically reverts to first principles of the UDRP, to argue that domain names which correspond to trademarks when used for criticism websites are not “abusive” and are not the target of the Policy:
“The closest equivalent to a legislative history for the Policy can be found in the 30 April 1999 Final Report of the WIPO Internet Domain Name Process, which formed the basis for the ICANN Policy….[which states at] 172:
… Domain name registrations that are justified by legitimate free speech rights or by legitimate non‑commercial considerations would likewise not be considered to be abusive.”
I also appreciate, in particular, Panelist Hill’s approach to the issue of “initial interest confusion”. He does away with this issue, even where the Domain Name is an exact match, by pointing out that if there is no evidence of actual confusion or risk of confusion considering the content of the website, and where there is no intent to mislead or confuse, a Respondent can have rights and a legitimate interest in the Domain Name.
While numerous prominent panelists have adopted an “impersonation test”, there remains a schism between the two views outlined above, such that a consistent approach remains elusive. This decision deserves close attention and robust discussion as it provides the perfect counterpoint to those who share the view that the UDRP should transfer domain names that are exact matches, even when they are used for genuine criticism websites. In my view, given the limited scope of the UDRP and the desirability of avoiding causing needless harm by inadvertently suppressing lawful critical speech, the UDRP should adopt the more restrained approach as articulated by view 2 and as compellingly argued by Panelist Hill in this decision.