Right Result, Wrong Reason
June 9, 2014
By slevy
This week’s World Intellectual Property Organization (WIPO) decision involves a retired German physician, an annual tobacco fair, and some curious reasoning by WIPO panelist Stephanie G. Hartung, who denied the complaint.
The domain name at issue in this complaint is intertabac.org. For over three decades, the complainant – Westfalenhallen Dortmund GmbH of Germany – has hosted annual trade fairs under the name “Inter-tabac” for tobacco and smoking products. According to the complainant, Westfalenhallen Dortmund is the registered owner of several trademarks for “Inter-tabac” and of intertabac.com, inter-tabac.com, intertabac.de, inter-tabac.de, inter-tabac.net and inter-tabac.org.
The respondent, Mr. Johannes Spatz of Berlin, is a retired physician who established and continues to co-chair a non-profit foundation “aiming at the furtherance of public health by encouraging a smoke-free life and by fighting the global tobacco epidemic.” He registered intertabac.org in 2013, which leads to a site with anti-tobacco industry content – including a petition and open letters to Dortmund’s mayor regarding Inter-tabac. Two of the three UDRP requirements were decided in the complainant’s favor: the panelist found that intertabac.org is confusingly similar to the complainant’s trademark and that the respondent “does not necessarily” have rights or legitimate interests to the domain name. However, the panel concluded that the Complainant failed to demonstrate the third UDRP requirement, registration in bad faith, explaining that the respondent did not register the domain name for the purpose “of transferring it to Complainant or any of its competitors”.
This is a rather odd decision that reached the right result but for the wrong reason. Under the “rights or legitimate interests” factor of the UDRP one of the things to consider is whether the respondent is making a fair use of the domain name, such as a gripe website. The Complainant did not address the question of fair use, nor did the panelist appear comfortable directly relying on the fair use argument as the basis for her decision. Instead, Ms. Hartung punted the issue, explaining that “this dispute is better suited to an appropriate court”.
Oddly, the panelist does establish in the decision that “it is undisputed between the parties that Respondent has registered and is using the disputed domain name for purposes of exercising Respondent’s right to free speech granted by the German Constitution.” This is the very definition of “fair use”, so it’s especially curious that the panelist ducked the issue and, instead, relied on a vague recitation of bad faith factors and concluded that “none of the specific circumstances identified in paragraph 4(b) of the Policy applies in the case at hand.”
This decision sets an odd precedent for future complaints regarding criticism or protest sites, at least in Germany.
