As every American high school student knows, the 1st Amendment to the U.S. Constitution guarantees the right to free speech.
Trademark court cases and UDRP decisions have recognized that there are instances where someone’s brand can be used in an exercise in free speech on the Internet. This can include fan sites such as meissencollector.com, which is used by a devotee of porcelain figurines; sites promoting civic issues such as ronpaul.org, which espouses the domain owner’s political views; and complaint or “gripe” sites that are used to express anger or negative experiences relating to a particular branded product or service. Perhaps the most famous of this last category are the “sucks” websites, such as metrolinksucks.com, which are used to complain about a brand owner.
What the UDRP Considers Free Speech Online
While most UDRP Panelists agree that free speech is permitted, there is a split of opinion on just how much leeway domain owners are to be given in creating names which copy a complainant’s brand. For example, American Panelists typically allow a domain to incorporate the brand outright (ex., Trademark.TLD) whereas UK-based Panelists tend to feel that this amounts to impersonation regardless of whether the website content is focused on free speech.
An example of this occurred in a split-decision case where the domains <vedovi-gallery.com> and <willemvedovi.com> were ordered to be transferred to the complainants by a UK-based Panel, but the domain <thetruthaboutwillemvedovi.com> was not, due to its incorporation of additional words that were descriptive of the website’s critical purpose. In other words, domains that consist only of the brand are often treated more liberally by American Panels but more strictly by those whose countries have different free speech rules.
It is against this background that the recent UDRP complaint against a lawyer gripe site came as somewhat of a surprise.
A Case of Infringement or Free Speech?
The Respondent registered the domain <johngbalestriere.com> and the website posted a request that anyone having had a problem with the services of this named lawyer should contact the Department Disciplinary Committee for the state of New York. The site also displayed a copy of a letter from this Committee pertaining to an ethical violation committed by this lawyer.
The lawyer filed a UDRP complaint claiming that he owned common-law trademark rights to his name and asserting that the Respondent registered the domain for the purpose of defaming him and disrupting his business. The Respondent, as expected, cited the First Amendment and saying that his website was noncommercial and provided a public service.
The Panel, in addressing the question of whether the Respondent has any rights or legitimate interests in the domain, mentioned that past UDRP decisions have held that, although respondents have a legitimate interest in criticizing complainants, they do not automatically have such an interest in a domain name that is identical to a complainant’s mark. Similarly, he noted that past panels have found that, while criticism of a complainant may be a legitimate use of a domain name, doing so while using a domain name identical to a complainant’s mark is evidence of bad faith under the Policy. Since the resolving website contains nothing except criticism of Complainant, it is an attempt to damage his goodwill and constitutes bad faith.
What is unusual about this decision is that the sole Panelist is American and a retired judge, marking a rare instance in which an American Panel holds to the more restrictive view of free speech. However, the Panel does not ground his decision on impersonation, as many restrictive free speech cases do. Rather, by stating that the website only criticizes the Complainant and damages his goodwill, the Panel appears to defy the very nature of free speech criticism since this sort of speech is specifically intended to be harmful to a brand owner but only in a way which is factual and truthful.
It will be interesting to see if this line of reasoning is picked up by other U.S.-based panels or whether this case remains something of an outlier in free speech UDRP jurisprudence.
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