There have been numerous decisions regarding whether criticism websites fall under the UDRP exceptions for legitimate non-commercial use.
In the first case, Bridgestone Firestone, Inc. v. Jack Myers (WIPO D2000-0190, July 6, 2000) the Panel found that the domain owner’s use of “Bridgestone-Firestone.net” was allowable usage and fell within the scope of legitimate non-commercial usage. See opinion here. In this case, Respondent was a former employee and current pensioner of the Firestone Tire and Rubber Company, and had been engaged in a dispute with Complainant over pension payments since 1990. As a result, Respondent registered the disputed domain and posted content thereon, which included sharp criticism of the Complainant and also included the following quote “Why Bridgestone/Firestone must pay John Myers.”
The Panel quickly acknowledged that the domain name was identical or confusing similarity of Complainant’s trademark. The crux of the decision rested on the second prong of the UDRP Policy, namely, whether there was any legitimate interest in the domain. Paragraph 4(c)(iii) of the Policy states that one of the ways to show legitimate rights is by “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.”
The Panel explained:
In this case, the Respondent’s principal purpose in using the domain name appears not to be for commercial gain, but rather to exercise his First Amendment right to criticize the Complainants. The use of the <trademark.net> domain name appears to be for the communicative purpose of identifying the companies, which are the subject of his complaints. He is not misleadingly diverting users to his website, as he has not utilized the <.com > domain and has posted adequate disclaimers as to the source of the website. It does not appear that his actions are intended to tarnish, or have tarnished, the Complainants’ marks. Nor does it appear that Respondent’s registration and use of the Domain Name have harmed Complainants commercially. Respondent’s use of the <.net>domain has not prevented Complainant from making its commercial presence known on the Internet. The Panel notes that the Complainants themselves have registered various <trademark.com> and <trademarksucks.com> domain names, but apparently decided not to register the <trademark.net> domain name before it was registered by Respondent. Since there are now seven generic top level domains, with more in the process of being approved, as well as some 240 country top level domains, there are hundreds of domain name permutations available to Complainants. Respondent’s use of one of those permutations other than the principal <.com> domain name for purposes of critical commentary is a legitimate noncommercial and fair use. Complainants have thus failed to prove the second element of a claim for transfer of a domain name under the Policy.
The Panel examined the bad faith prong of the Policy and came to the conclusion that Respondent did engage in bad faith registration and use. Ultimately, the Panel ruled in favor of Respondent, applying fair use and free speech principles and denied the requested transfer of the domain.
Compare the first case with a later case, Kirkland & Ellis LLP v. DefaultData.com, American Distribution Systems, Inc. (WIPO D2004-0136, April 2, 2004), where the Panel found Respondent’s use of “kirklandandellis.com” was not acceptable under the Policy and did not qualify as fair use. (See decision here). In this case, the well-known law firm Kirkland & Ellis brought the UDRP action. Although Respondent never replied to the complaint, the Panel made some of the following factual observations:
The website to which the domain name resolves declares “Freedom of Speech using Parody” and further states that the “website is merely a ‘free speech flyer’ being passed out at a possible electronic address to an Established business (no different than free speech at a physical address to a business)…” and “…attempts a U.S.A. Constitutionally granted free speech parody of the Supreme Court Judges, U.S. Legal System, U.S. Constitution, U.S. Attorney General, U.S. Jury and U.S. Courtroom…” The website further states that it “has no relation to any person, organization, lawyer or law firm claiming rights to Kirkland & Ellis.”
Ultimately the Panel found the following:
(a) Respondent’s website is not a parody in that it does not seek to imitate any distinctive style of the firm for comic effect or ridicule, and (b) that material critical of the U.S. legal system is not fair use of the Policy….it does not seem a fair use that Respondent deliberately chooses law firm names, including Complainant’s name, in order to criticize the legal profession as a whole. Rather, it seems that Respondent’s purpose is to tarnish the legal profession as a whole, and specifically tarnish Complainant’s firm, it being a prominent member of the legal profession…. the right to express one’s views is not the same as the right to identify itself by another’s name when expressing those views. Thus, while Respondent may express its views about the quality, or lack thereof, of the U.S. legal profession, in general, or any firm offering legal services, in particular, Respondent does not have the right to identify itself as that particular firm. And, there is nothing in the domain name to indicate that the site is devoted to criticism, even though that fact is apparent when visiting the site.
These two UDRP decisions show divergent views of criticism or fair use – an apparent split of authority. Some may argue that UDRP decision are not precedential and that each case should be decided on its facts in conjunction with the UDRP Policies. However the Policies are broad enough to require a careful review of the domain owner’s free speech and fair use rights and the trademark owner’s ability to protect their marks.
