The UDRP and Free Speech: Inclusion of “Warning” Sufficient to Negate Risk of Impersonation
There are a number of interesting points in this decision and I would focus on the following two: The presence of “warning” in the disputed domain name and significance of qualifying terms in free speech and criticism UDRP cases; and Other circumstances the Panel found relevant for the analysis of the second UDRP element. Read more
We hope you will enjoy this edition of the Digest (vol. 3.47), as we review these noteworthy recent decisions, with expert commentary. (We invite guest commenters to contact us):
‣ The UDRP and Free Speech: Inclusion of “Warning” Sufficient to Negate Risk of Impersonation (mexico-bariatric-center-warning .com *with commentary)
‣ No Evidence of Targeting in Passively Held Domain Name (demoji .com)
‣ Domain Name Registered Prior to Trademark (lawcode .com *with commentary)
‣ BforBank v. B4Banking (b4banking .com *with commentary)
‣ Common Law Rights in a Personal Name (stevezinck .com)
Register today: https://lnkd.in/gt6fmqsX (12 noon Pacific; 8 pm UK; 7 am Tuesday in Sydney; 5 am Tokyo)
The UDRP and Free Speech: Inclusion of “Warning” Sufficient to Negate Risk of Impersonation
Panelist: Mr. Lawrence K. Nodine
Brief Facts: The US-based Complainant operates the Mexico Bariatric Center, a bariatric surgery clinic in Mexico and owns a US trademark for MEXICO BARIATRIC CENTER, (registered: November 20, 2018; first use: September 10, 2012). The registration disclaims rights to “Bariatric Center”. The Respondent contends that it has had experience with bariatric surgery in Mexico; he registered the disputed Domain Name and publishes on the associated website commentary and information that criticizes the Complainant’s bariatric services. The parties have been involved in a previous UDRP proceeding as well. While the first proceeding was pending, the Respondent registered the disputed Domain Name on June 9, 2023. The prior Panel ruled in Respondent’s favor with respect to one of the domain names, <mexico-bariatric .com>, finding that, because the domain name was “sufficiently general and descriptive,” it “does not create an association with the Complainant – and here is noted that parts of the relevant mark are disclaimed.”
The Complainant alleges that the Respondent has misused the Complainant’s Mark, content, and products for the purpose of disrupting the Complainant’s business, and attracting commercial gain for the Respondent. The Respondent contends that he created the website for the sole purpose of educating the public and includes the “warning” identifier to make it obvious that the Respondent’s website is not affiliated with the Complainant. The Respondent further asserts the rights and legitimate interests due to personal experience with bariatric treatment and the right to publish noncommercial reviews on bariatric facilities in Mexico under the First Amendment of the United States Constitution, and under United States Federal law and denies infringement of the Complainant’s trademarks and copyright and contends that the Complainant does not identify any examples or evidence.
Redaction of Respondent’s Identity: The Respondent has requested that its name be redacted from the Decision to protect its privacy. While it is not clear to the Panel that any exceptional circumstances exist to justify the normal presumption of including party names in posted decisions (as one example, owing to the UDRP criteria of a pattern of bad faith), given e.g., that the Respondent seems to be advancing views on a matter generally (in addition to criticizing Complainant), the Panel is prepared to redact Respondent’s name; notably, given that there has been a Response and, also, that in response the Panel Order, the Respondent confirmed that the Parties in this and the prior WIPO Case No. D2023-2433 are identical. Accordingly, redaction will not inconvenience the Complainant.
Held: The Panel finds, based on a review of the submitted evidence, that the disputed Domain Name is being used to host a website that provides legitimate good-faith criticism of the Complainant’s services. The Respondent’s explanation of its intentions for the website is plausible and the Complainant has not met its burden to prove that the Respondent’s use of the Domain Name for criticism is pretextual or commercial. This is not surprising as the prior D2023-2433 panel made that same finding based on the same arguments and the Complainant has not offered any new evidence. The Panel shares the view of previous panels that criticism is not tarnishment. The Panel also finds that the Respondent is not using the Domain Name for a commercial purpose and that including the word “warning” in the disputed Domain Name is sufficient in the broader case circumstances to negate any risk of implied affiliation or impersonation. Although the additional term “warning” is not as clear as derogatory terms like “sucks” to dispel the implication of affiliation, the term – viewed in light of the broader case circumstances – is sufficient to prevent a finding that the Respondent intended to impersonate the Complainant.
However, it is noted that the Respondent has not confined itself to criticizing the Complainant. The Respondent has also identified “some Bariatric/ Weight Loss Centers in Mexico we Recommend.” The Panel finds that the Respondent’s recommendation of other bariatric weight loss centres does not disqualify the Respondent’s otherwise overwhelmingly critical site because the Respondent is neither “redirecting” Internet visitors nor is a competitor and has no discernible financial interest in the third-party competitors to which she links. Moreover, it is the Complainant’s burden to select and support its contentions and it has not chosen to discuss the implications of the Respondent’s identification of other bariatric weight loss centers. However, if evidence surfaces that the Respondent has engaged in commercial endorsements of the Complainant’s competitors, the Panel would consider allowing the Complainant to refile a complaint, assuming it makes new arguments based on – and clearly supported by – new evidence. See WIPO Overview 3.0, Section 4.18.
Complainants’ Counsel: Rothschild & Associates LLC, United States
Respondents’ Counsel: Self-represented
Guest Case Comment by UDRP Panelist, Mr. Igor Motsnyi:
Igor is an IP consultant and partner at Motsnyi Legal, <motsnyi .com>. His practice is focused on international trademark matters and domain names, including ccTLDs disputes and the UDRP. Igor is a UDRP panelist with the Czech Arbitration Court (CAC) and the ADNDRC, and is a URS examiner at MFSD, Milan, Italy. The views expressed herein are Igor’s and do not necessarily reflect those of the ICA or its Editors. Igor is not affiliated with the ICA.
There are a number of interesting points in this decision and I would focus on the following two:
- The presence of “warning” in the disputed domain name and significance of qualifying terms in free speech and criticism UDRP cases; and
- Other circumstances the Panel found relevant for the analysis of the second UDRP element.
This was the second UDRP dispute between the same parties (see Sourcis, INC. v. Name Redacted, WIPO Case No. D2023-2433), the Panel had access to the materials of the first case and based on Panel’s reasoning in this new decision it appears that Complainant advanced the same arguments here as in the first dispute.
- What largely made the outcome of this dispute different from the outcome of the first dispute (in the first dispute two domain names were transferred to Complainant despite Panel’s recognition of the critical nature of the websites and absence of any evidence of Respondent’s commercial activity) is the presence of “warning” in the disputed domain name. The Panelist himself noted that “the addition of the term “warning” to the Domain Name differentiates it from the domain names at issue in the first case and this is a key factor in the outcome of this, the second, case”. This confirms a well-established position of the majority of UDRP panelists that to qualify for a free speech and criticism defense a disputed domain name should actually be used for criticism and should include some additional term (s) indicating critical nature of a website (see also par. 2.6.3 of WIPO Overview 3.0: “the trademark plus a derogatory term”). However, there is always a question: what term is “derogatory” enough to indicate criticism?
UDRP cases decided in 2023 provide the following examples of qualifying terms that were sufficient: “woke”, “abuse”, “scam” and “fuck”.
The Panel in <mexico-bariatric-center-warning. com> found that, while “warning” maybe not as obvious as “sucks”, but viewed in light of the broader case circumstances, it was sufficient to prevent impersonation and support Respondent’s arguments.
- The presence of an additional term “warning” would not have helped Respondent, had there been other circumstances that negate non-commercial fair use in this case. The Panel looked at a number of additional factors and confirmed inter alia that:
- Criticism is not tarnishment;
- There was no commercial activity of Respondent and his/her intention was to publish legitimate criticism;
- Repetition of the same arguments as in the first case did not help Complainant and the Panel noted “with disfavor Complainant’s repetition of arguments that the Prior Panel expressly rejected as unsupported by the evidence”;
- Respondent expressly denied any affiliation with Complainant on the website and
- Respondent by providing links to alternative facilities did not redirect users to competing sites.
With regard to redirection the Panel analyzing the case circumstances admitted that redirection to competitors can defeat Respondent’s claims of legitimate use.
However, this was not the case in <mexico-bariatric-center-warning. com> as the Panel found that i) providing links is not redirecting (as visitors are not automatically sent to competitors’ sites), ii) Respondent is not a competitor and has no financial interest in the third-party competitors and iii) Complainant itself failed to argue this properly and offered no additional arguments/evidence.
Finally, the Panel admitted that the decision in Respondent’s favor comes with two caveats:
- i) Complainant’s failure to offer arguments and evidence in support of its position and
- ii) If there is evidence that Respondent engaged in commercial endorsement of Complainant’s competitors, the Panel admitted that it would allow re-filing if Complainant makes new arguments supported by new evidence.
The outcome of <mexico-bariatric-center-warning. com> confirms that UDRP panels support respondents in free speech and criticism cases where a domain name contains “trademark + derogatory term or other qualifying term” that dispels affiliation provided that a website is genuinely used for criticism / free speech purposes.
However, in the absence of a qualifying term, even if there is genuine use for criticism/free speech purpose and there is no commercial activity, most Panels tend to support complainants.
I could think of only three decisions in 2023 so far in Respondent’s favor in free speech and criticism cases where disputed domain names did not contain a derogatory or another qualifying term: Watch Tower Bible and Tract Society of Pennsylvania v. Vincent Moore, WIPO Case No. D2023-2034, <thejw. org> (where the Panel applied “a holistic approach” and looked at the “totality of factors”); Valhallan, LLC v. Casey Strattan, WIPO Case No. D2023-0977, <vallhallan. com> (the Panel supported Respondent’s rights and legitimate interest based inter alia on the fact that the disputed domain name was not identical and was rather a typo and Respondent’s criticism was genuine and not pretextual) and the Forum decision in Law Office of Graham C. Fisher, LLC v. Jack Toering / FindLocal, Inc, Claim Number: FA2212002023163, <grahamcfisher. com> (the Panel relied on a legislative history of the UDRP and its “limited goals” supporting Respondent’s right to criticize).
In the other (majority) cases in 2023 where criticism was genuine and non-pretextual but the domain names did not contain a qualifying term Panels supported complainants (see e.g. Société civile particulière monégasque “MC 2020” v. Smiljan power solutions, WIPO Case No. D2023-0316, <tibtecag. com>; Limited Liability Company “Pharmagate” v. Taras Potichnyi, WIPO Case No. D2022-4997, <pharmagate. org>; Lumsa – Libera Università Maria SS. Assunta v. Host Master, 1337 Services LLC, WIPO Case No. D2023-1939, <lumsa. university> and Spouting Rock Financial Partners, LLC v. Henry Vermont, WIPO Case No. D2023-2270, <spoutingrockassetmanagement. com>).
This trend is likely to continue.
At the same time, UDRP complainants and their counsel should appreciate limitations of the Policy in case of domain names used for genuine criticism and free speech purposes and if they are unhappy with criticism and find it unfair, they often should look for other venues as the UDRP is not suitable for such disputes.
No Evidence of Targeting in Passively Held Domain Name
Panelist: Mr. Luca Barbero
Brief Facts: The Complainant owns trademark registrations for DEMOJI, among other things for software for use in automating and managing business processes, including Swiss trademark (February 22, 2019) and US trademark (December 08, 2020). The disputed Domain Name was registered on November 14, 2012, and is pointed to a parking page displaying the indication: “Demoji .com Coming Soon’ish – Tasty like a raindrop.” The Complainant alleges that the Respondent is not using the disputed Domain Name for any purpose and has been holding it passively for the last 10 years, thus showing no intent to use the disputed Domain Name for any bona fide purpose.
The Respondent contends that he has had rights and legitimate interests in the disputed Domain Name since 2012 indicating that, in his role as a web developer and together with a friend, he conceived a hobby project involving a play on the popular “emoji” graphics, which they would have called “demoji” or “demonic emoji” and has maintained the disputed Domain Name since then, in the event he and his friend may someday get around to working on their project. Before the commencement of the proceedings, on October 5, 2023, the Respondent sent a letter to the Complainant’s counsel highlighting that the disputed Domain Name was registered as early as 2012 by the Respondent and requested the withdrawal of the Complaint, explaining that given the circumstances of the case, the Complainant would not have been able to demonstrate the Respondent’s bad faith.
Held: The Panel notes that there is no evidence on record that the Respondent registered and used the disputed Domain Name with the intention of targeting the Complainant and its trademark. Indeed, the Respondent registered the disputed Domain Name in 2012 (as confirmed by the historical Whois records and the purchase receipt), before the Complainant’s first registration of the trademark DEMOJI in 2019. Moreover, the Complainant has failed to provide any evidence of use of the trademark DEMOJI at any time, before or after registering his trademark. Therefore, the Complainant has failed to demonstrate that the Respondent was or could have been aware of the Complainant’s trademark at the time of registration of the disputed Domain Name.
RDNH: The Panel concludes that the Complainant’s actions constitute Reverse Domain Name Hijacking. The Panel notes that the Complainant’s case is based on the arguments that registering a domain name using the “demoji” name corresponding to the Complainant’s registered trademark, independently of any awareness of the Complainant or its mark, is evidence of bad faith. The Panel finds that the Complainant, which is represented by counsel, should have contemplated that it could not succeed with such an argument in light of the prior registration of the disputed Domain Name.
Complaint Denied (RDNH)
Complainants’ Counsel: Gearhart Law, United States of Americ
Respondents’ Counsel: John Berryhill, Ph.d. Esq, United States
Domain Name Registered Prior to Trademark
Panelist: Mr. Alan Limbury
Brief Facts: The Complainant is a RegTech company located in Germany and claims to offer whistleblowing and compliance tools. Its official website is located at <lawcode .eu>. The Complainant owns rights to the ‘Lawcode’ word trade mark before EUIPO registered on August 13, 2022. The disputed Domain Name was registered on November 29, 1999, and is presently inactive. The Complainant alleges that the Respondent does not have any rights and that “Any dispute should be governed by German law, if permissible. Due to that, the domain <lawcode .com> should be transfered [sic] to lawcode GmbH.”
The Respondent contends that he is a US citizen and the legal owner of the Lawcode .com domain name since 1999. The Respondent further contends that “during my ownership of the domain name, there were several business initiatives related to it. Unfortunately, they did not pan out as expected and the website is dormant. However, this domain name is still in play and I have a business plan for it. EU trade mark applicants were required to carry out extensive checks to ensure the Lawcode .com domain name was available. Every self-respecting registration company checks availability as the first step when registering a domain…”
Held: As to the third element, section 1.1.3 of the WIPO Overview 3.0 provides: “Where a domain name has been registered before a complainant has acquired trademark rights, only in exceptional cases would a complainant be able to prove a respondent’s bad faith.” According to Whois searches conducted by the Panel, the disputed Domain Name <lawcode .com> was registered on November 29, 1999, more than 20 years prior to the registrations of the Complainant’s mark and its <lawcode .eu> domain name. Under these circumstances, the Panel is not persuaded that the Respondent could have had the Complainant or its non-existent trademark or domain name in mind when registering the disputed Domain Name. Accordingly, the Panel finds that the Complainant has not shown that the disputed Domain Name was registered in bad faith.
Complaint Denied (Rejected)
Complainants’ Counsel: Internally Represented
Respondents’ Counsel: Self-represented
Case Comment by Newsletter Editor, Ankur Raheja: This case bears resemblance to the previously cited matter of demoji(.com), as the Domain Name registration preceded the trademark registration. It is worth noting that the Panelist made a correct decision by rejecting the Complaint. However, it does raise the question of whether the Panelist should have also taken into account the possibility of reverse domain name hijacking. The Panelists take a diverse approach when either the UDRP remains undefended or the reverse domain name hijacking ruling is not specifically requested.
In this instance, the Complainant did not have legal representation and arguably there were no extraordinary circumstances that would lead the Panelist to find reverse domain name hijacking (RDNH). It is worth noting that this Panelist did evaluate RDNH in a prior uncontested case concerning <markelgroup .com> (commented here in ICA Digest Vol 3.22 by Mr Igor Motsyni), wherein the Panelist held:
“Such a finding is justified only in rare cases, such as instances where a complainant proceeds despite the fact that it knew or should have known that it did not have a colorable claim under the Policy.”
BforBank v. B4Banking
Panelist: Ms. Claire Kowarsky
Brief Facts: The Complainant is a 100% online bank launched in October 2009 by the French Crédit Agricole Regional Banks, which operates online at <bforbank .com>. The Complainant, through its BFORBANK brand, offers daily banking, savings, investment and credit services for more than 200,000 customers. The Complainant relies on its registered European trademark: BFORBANK (word), registered on 08 December 2009. The Respondent registered the disputed Domain Name on October 5, 2023, and it resolves to a parking page with commercial links, and has MX servers configured. The Complainant alleges that the registration of the disputed Domain Name happened several years after the registration of the Complainant’s trade mark and moreover, all the results of a Google search of the term “B4 BANKING“ refer to the Complainant, it is therefore “inconceivable“ that the Respondent could have registered the disputed Domain Name without actual knowledge of the Complainant’s rights in the trademark.
The Complainant further alleges that the Respondent has attempted to attract Internet users for commercial gain to his own website thanks to the Complainant’s trademarks for its own commercial gain, which is evidence of bad faith because the disputed Domain Name resolves to a parking page with commercial links. Finally, the Complainant points out that because the disputed Domain Name has been set up with MX servers, it could be used for email purposes and any email emanating from the disputed Domain Name could not be used for good faith purposes. The Respondent contends that they intended to use the disputed Domain Name for “personal use“ and in that respect had hired people to work on the project associated therewith. The Respondent further contends that they would be open to an amicable settlement and the transfer of the disputed Domain Name to the Complainant for “compensation“ and a “resolution that benefits both parties“.
Held: The disputed Domain Name resolves to a page with pay-per-click (“PPC”) links, which genuinely relate to the dictionary word within the disputed Domain Name which is “banking”, which can support a finding of the Respondent’s rights or legitimate interests in the disputed Domain Name. Further, while the Respondent submitted no evidence in regard to their claimed intended bonafide use of the disputed Domain Name, in this case, there was only a week between the registration of the disputed Domain Name and the filing of the Complaint. Because business plans and operations can reasonably take more than a week to develop, and because the disputed Domain Name includes the common dictionary terms “b4” – a common abbreviation for “before” and “banking“, the Panel finds the Respondent’s assertions in this regard to be plausible, despite the lack of supporting evidence, see section 2.2 WIPO Overview 3.0.
The disputed Domain Name is made up of variations of dictionary terms and the Respondent claims to have been unaware of the Complainant’s mark before receiving notice of this dispute. Besides, the PPC links are not improperly trading off the Complainant’s trademark rights such that would indicate targeting of the Complainant or otherwise a bad faith use. Further, the Complainant’s concern about the potential for the disputed Domain Name to be used for phishing due to the presence of MX servers is reasonable. However, no evidence of actual phishing was submitted, and the Respondent provided a plausible legitimate reason for registering the disputed Domain Name. Accordingly, the mere existence of MX records – in the circumstances of this case – is not sufficient for a finding of bad faith registration and use.
RDNH: The Panel finds that because of the Complainant’s trademark rights, and the Complainant’s legitimate concerns regarding the MX records associated with the disputed Domain Name, the Complainant had a least a colourable claim under the UDRP, such that a finding of RDNH does not arise. On the other hand, the Panel is concerned by the Complainant’s claim pertaining to the Google search results that, “all the results of the term ‘B4 BANKING’ refers to the Complainant.” and “it is inconceivable that the Respondent could have registered the disputed Domain Name without actual knowledge of Complainant’s rights in the trademark.” The Panel considers the above points to be weaknesses in the Complainant’s case but nonetheless insufficient to warrant the censure of a finding of RDNH. Weighing against such a finding, the Complainant owns the BFORBANK trademark which long predates the date of registration of the disputed Domain Name.
The Complainant expressed concern about the existence of MX records, meaning that e-mails could originate from the disputed Domain Name with the potential for phishing fraud. While the Complainant overstated its case and included an inaccurate statement concerning the Google search results, the Complainant apparently did not know at the time of filing that the Respondent would have a plausible legitimate explanation for its acquisition of the disputed Domain Name. Although the Complainant could have sought to establish the facts before commencing the Complaint by communicating with the Respondent, the Complainant’s failure to do so, given its legitimate phishing-related concerns, is understandable. In conclusion, despite the mentioned weaknesses in the Complainant’s case, the Complainant’s filing of the Complaint does not amount to an abuse of process that justifies a finding of reverse domain name hijacking.
Complainants’ Counsel: NAMESHIELD S.A.S.
Respondents’ Counsel: Sef-represented
Case Comment by Newsletter Editor, Ankur Raheja: It is satisfying that the Panelist considered RDNH as was her duty, even if ultimately, she exercised her discretion in declining to find that RDNH was warranted in the particular circumstances of this case.
The decision made by the Panelist in relation to the trademark BFORBANK is based on sound reasoning. The webpage at the disputed Domain Name displaying PPC links / ADs in relation to the dictionary word within the disputed Domain Name is considered as a legitimate use in terms of WIPO Overview 3.0, section 2.10, which reads: “In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights.” Accordingly, Panel rejected the Complainant’s claim, given the facts and circumstances of the case. Besides, the Panel did not find the Complainant’s actions to constitute reverse domain name hijacking (RDNH), primarily because the trademark predates the domain name registration and due to legitimate concerns over phishing risks.
It is worth noting that this Complainant has been actively involved in the UDRP since mid-2022 and has been successful in over 35 matters of cybersquatting as of date (see UDRP.Tools). The only other matter to be rejected was <bf-bank .com> under the first element itself in March 2023 (see here).
Common Law Rights in a Personal Name
Panelist: Dr Gustavo Moser
Brief Facts: ‘Steve Zinck’ is the Complainant’s personal name which relates to the Complainant personally and professionally, while ‘Think Zinck Inc.’ is the Complainant’s holding company that has investments in real estate, property development and publicly traded stocks. The Complainant relies upon his personal name ‘Steve Zinck’ and the Complainant’s business name ‘Think Zinck Inc.’ for the purpose of these proceedings. The disputed Domain Name was registered on June 16, 2021. The Complainant alleges that the Respondent’s website contains a picture of the Complainant and underneath there is a statement accredited to the Complainant’s business ‘Think Zinck’, which reads as follows: ‘Hannah Montana is actually Miley Cyrus – Think Zinck’… the Respondent’s website is a clear attempt to fraudulently represent the Complainant for unknown purposes. The Complainant further points out that there is a significant risk when a third party registers a domain name in someone else’s personal name, without the affected person’s knowledge and creates a website bearing a photograph of the affected person attributing a statement to that person’s business. The Respondent did not file a Response.
Held: The UDRP jurisprudence has developed a rather stringent test for individuals whose personal names have been targeted and who seek to redress the wrongs perpetrated by cybersquatters. The test routinely requires an individual to demonstrate a certain degree of public notoriety and/or commercial success in his or her personal name. Prevailing complainants are therefore often those who reap financial gain from their names. The Panel does not necessarily agree with this narrow test and would, on the contrary, be willing to consider a more liberal but reasoned standard for personal names under the UDRP – not least as the current test appears to benefit only a certain class of individuals – the Complainant, in this case, has failed to argue a case on that basis.
In the present case, the Complainant has provided documentary proof of the use of his business name THINK ZINCK since 2015, and that remains unchallenged by the Respondent, although the Complainant could have presented far more robust evidence of extensive use of THINK ZINCK. Nonetheless, the Panel finds that the Complainant has established common law rights in THINK ZINCK within the narrow parameters of this UDRP administrative proceeding. The term ‘Zinck’ is the most distinguishable element within the Complainant’s unregistered trade mark, in the Panel’s view. The Domain Name wholly incorporates the ‘Zinck’ element in its string, such that the Panel finds the disputed Domain Name to be confusingly similar to the Complainant’s unregistered trade mark.
The Panel notes that the choice of the Domain Name by the Respondent is unsupported by any credible explanation as to the reason for it to refer to the Complainant and the Complainant’s business, which evidences a lack of rights or legitimate interests. The Panel considers that the Respondent has attempted to impersonate the Complainant through the express reference to the Complainant’s unregistered trade mark on the Respondent’s website and the unauthorised use of the Complainant’s own photograph. Although it is not entirely clear the extent to which the Respondent intended to use the Domain Name as a vehicle for a commercial venture, on balance, the Panel takes the view that the Respondent’s behaviour would fall into the remit of circumstance (iv) of paragraph 4(b) of the UDRP Policy.
Complainants’ Counsel: NA
Respondents’ Counsel: No Response