UDRP Spotlight: Free Speech and Fair Use

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August 27, 2015

By slevy

In many countries around the world, the free expression of ideas is a highly protected right and is considered a cornerstone to the functioning of a free and open society.  It’s expressly set out in the First Amendment to the United States Constitution which states that “Congress shall make no law … abridging the freedom of speech…”.

So, how does free speech stand up next to trademark rights and the ability of brand owners to prevent the misuse of their hard-earned reputations?   The courts, and even some legislators, have fashioned a concept called “fair use” which allows the limited use of a trademark for the purposes of comment upon, adoration of, and especially criticism of a brand owner’s products or services.  So long as the person engaging in such conduct isn’t trying to profit from the brand or otherwise compete commercially with it, there’s a good chance a fair use defense will hold up.

Protecting Free Speech in the UDRP

The UDRP specifically addresses this concept in section 4(c)(iii) which notes that a domain owner can demonstrate that it has rights or legitimate interests in a domain name where it is “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

Just for clarification: This last clause about tarnishing a trademark has been interpreted to mean that the domain owner is seeking to destroy the brand’s reputation through lies, misquotes, etc. If a brand owners suffers harm due to its actions, which are being criticized on a domain name, that is not prohibited.

UDRP Panels have upheld the use of trademarks in many prior decisions where the accused domains, and their resulting website content, have been used to express criticism of the brand owner or its products and services.  For example, in a now well-known case involving the domain f*ckcalvinklein.com, the Panel denied the complaint, stating that “[t]he addition of the graphic vulgarity ‘f*ck’ means that the domain name is neither identical to the Calvin Klein mark nor is it confusingly similar.”  In another case, the domain maracutaiasnapetrobras.com (Portuguese for “dirty tricks Petrobras”) hosted a website intended to be a bulletin board for news, interview links and postings that were generally critical of a large Brazilian petroleum company.  In this case, the Panel held that, where traditional free speech, such as  criticism, is portrayed on a website, noncommercial use of a domain name is legitimate where it does not “obstruct access to a complainant’s website or confuse the public about the website of the trademark holder.”  It also held that “[h]onest and legitimate fair-use criticism does not constitute tarnishment”.

Further examples of the section 4(c)(iii) fair use defense may be found in the legion of “sucks” cases where that word is appended to the end of a trademark to indicate that the domain and its website are intended to be critical of the brand owner.  In fact, in the New gTLD Program, there is an entire top-level domain (TLD) – .SUCKS – whose business model is predicated upon the fair use/free speech defense.  The .SUCKS registrar made headlines earlier this year by claiming it would offer special “consumer advocate” domains and websites for only $10 which would be specially designed to fit within the fair use defense (no commercial content and only criticism of the brand mentioned in the domain name).

Gutting the Fair Use Defense?

Against this backdrop, the Panel in a recent case appears to have veered away from precedent and gutted the fair use defense of section 4(c)(iii).  In Philip Morris USA Inc. v. LORI WAGNER / DAVID DELMAN / DAVID@DELMAN.TV, NAF Claim No. FA 1627979 (2015) the Respondent hosts an anti-smoking website at the domain www.philipmorrisgripesite.com, which contains an array of links and information about the hazards of cigarette smoking.  However, at issue in this case were a number of other domains that resolved to websites with the identical content, including philipmorriscigarettediseases.org and philipmorriscigaretteskill.com.  For its part, the Complainant acknowledged that the Respondent has operated a gripe site but claimed that it is intending to divert Complainant’s customers illegitimately and that its domain names cause confusion with the Philip Morris trademarks despite their use of additional, derogatory words.  As one would expect, the Respondent defended claiming that it makes fair use of the domains as permitted under section 4(c)(iii).

The Panel first addressed the likelihood of confusion noting that each of the accused domains does, in fact, incorporate Complainant’s trademark and that “adding a generic term to a complainant’s mark does not alleviate confusing similarity.”  While this seems to contrast with the Calvin Klein case, I think it is within the realm of established UDRP precedent since confusion is considered a mere threshold test for complainants.

Where things start to go off the rails is in the Panel’s discussion of the next two UDRP elements:

  • whether the Respondent has any rights or legitimate interests in its domains, and
  • whether it registered and used them in bad faith.

Much to my surprise, the Panel stated that, under the UDRP, a disputed domain is to be considered separately from the website content to which that domain resolves.  The Panel noted that “a Respondent has a right to comment or criticize Complainants’ business practices, however Respondent had no right to do so in this manner, namely registering a domain name which contains the entire PHILIP MORRIS mark.”  In support of this position, the Panel cited a 2014 case between the exact same parties in which the domain philipmorrisusa.info was ordered to be transferred to the Complainant. In that case, the Panel held that the “Respondent’s bad faith use or registration may not be defended by any claim that using a confusingly similar domain name is protected by free speech rights.”

What Are the Implications Moving Forward?

My questions for the Panels in both of these cases are: If a respondent cannot claim free speech rights where a domain incorporates a complainant’s trademark, regardless of the other words in the domain and the content of its website, what is left of the section 4(c)(iii) fair use defense?  In what fact scenario could this defense be successfully argued?

I think it guts the entirety of the fair use defense as well as years of contrary UDRP precedent to say that, if you use a brand in a domain, you’re doomed regardless of the web content or other words in the domain.  For example, if one registered the domains philipmorrisprotest.org, ihatephilipmorris.com or even smokingphilipmorris.sucks, and resolved them to non-commercial pages which contain nothing but anti-smoking messages, would these Panels nevertheless find that they violate the UDRP?

It will be interesting to follow these cases and see if their reasoning is picked up by other Panels faced with section 4(c)(iii) fair use defenses – especially as the .SUCKS TLD domains roll out.  Or, will such reasoning be rejected as an improper chilling of online free speech?  A court appeal of this most recent decision by the Respondent would certainly make for some interesting reading.

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