Archive for August, 2008

Domains Which Criticize: Two Divergent Views

Tuesday, August 26th, 2008

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.

Trademarks in Metatags, But No Initial Confusion Says the 11th Circuit Appeals Court

Tuesday, August 26th, 2008

The Eleventh Circuit Court of Appeals recently ruled on an important case regarding trademarks and metatags. In North American Medical Corp. v Axiom Worldwide, Inc., (11th Cir. 2008) NAM alleged that Axiom used two of NAM’s registered trademarks on Axiom’s website within metatags in an effort to influence search engine results. One of the major issues the Court was faced with was whether Axiom’s use of the metatags constituted “use in commerce” sufficient to trigger liability under the Federal Trademark law (the Lanham Act). The Court explained:

However, we readily conclude that the facts of the instant case do involve a “use” as contemplated in the Lanham Act — that is, a use in connection with the sale or advertisement of goods. In deciding whether Axiom has made an infringing “use,” we focus on the plain language of § 1114(1)(a), which, as noted above, requires a “use in commerce . . . of a registered mark in connection with the sale . . . or advertising of any goods.” 15 U.S.C. § 1114(1)(a). The facts of the instant case are absolutely clear that Axiom used NAM’s two trademarks as meta tags as part of its effort to promote and advertise its products on the Internet. Under the plain meaning of the language of the statute, such use constitutes a use in commerce in connection with the advertising of any goods. Accordingly, we readily conclude that plaintiffs in this case have satisfied that (1) they possessed a valid mark, (2) that the defendant used the mark, (3) that the defendant’s use of the mark occurred “in commerce,” and (4) that the defendant used the mark “in connection with the sale . . . or advertising of any goods.”

The Court also discussed a key element of almost every trademark infringement action, whether there is a likelihood of confusion between Axiom’s unauthorized use and NAM’s rights.

[W]e ultimately conclude that a company’s use in meta tags of its competitor’s trademarks may result in a likelihood of confusion. However, because NAM and Adagen have demonstrated a likelihood of actual source confusion, we need not decide, as those courts did, whether initial interest confusion alone may provide a viable method of establishing a likelihood of confusion…. Because Axiom’s use of NAM’s trademarks as meta tags caused the Google search to suggest that Axiom’s products and NAM’s products had the same source, or that Axiom sold both lines, or that there was some other relationship between Axiom and NAM, Axiom’s use of the meta tags caused a likelihood of actual source confusion.

This is the first discussion of initial interest confusion by the 11th Circuit Court of Appeals. One of the more interesting developments in this case is found in a footnote wherein the Court limits its their opinion and opened the door to additional litigation in the trademark/metatag world.

We note that our holding is narrow, and emphasize what kind of case and what kind of facts are not before us. This is not a case like Brookfield or Promatek where a defendant’s use of the plaintiff’s trademark as a meta tag causes in the search result merely a listing of the defendant’s website along with other legitimate websites, without any misleading descriptions. This is also not a case where the defendant’s website includes an explicit comparative advertisement (e.g., our product uses a technology similar to that of a trademarked product of our competitor, accomplishes similar results, but costs approximately half as much as the competitor’s product). Although we express no opinion thereon, such a defendant may have a legitimate reason to use the competitor’s trademark as a meta tag and, in any event, when the defendant’s website is actually accessed, it will be clear to the consumer that there is no relationship between the defendant and the competitor beyond the competitive relationship. Resolution of the foregoing, as well as other factual situations not before us, appropriately await the day that such factual situations are presented concretely.

Ultimately the Court affirmed the district court’s findings with respect to the likelihood of success on the merits for the trademark and false advertising claims, but vacated the lower court’s preliminary injunction order.

Telstra.org- Complainants’ Most Wanted (Cited) Case

Tuesday, August 26th, 2008

As of this posting, the Telstra Corp Ltd v. Nuclear Marshmallows  (WIPO D2000-0003, February 18, 2000) case is the most cited WIPO decision, with a whopping 1643 references in WIPO Complaints to date. (This does not account for how many times it has been cited in the National Arbitration Forum cases, which is approximately 406 times.) Regardless, it must be important if so many UDRP Arbitration Panels rely on it.

At the time of the decision, Telstra Corporation Limited was the largest company listed on the Australian Stock Exchange and the largest provider of telecommunications and information services in Australia. Respondent registered the domain “tesltra.org” which, at the time of filing, did not resolve to a web-site or other online presence.

The UDRP Panel quickly found that domain name was identical or confusingly similar to Complainant’s trademark and that the Respondent did not have rights or a legitimate interests in the domain. The most important language came from the Panel’s review of the third requirement, namely “bad faith.”

The Panel noted, “The significance of the use of the conjunction ‘and’ is that paragraph 4(a)(iii) requires the Complainant to prove use in bad faith as well as registration in bad faith. That is to say, bad faith registration alone is an insufficient ground for obtaining a remedy under the Uniform Policy.”

The Panel observed the following relevant information regarding the Respondent:

Prior to the issuing of the Complaint, the Complainant made substantial efforts to identify and contact the Respondent, using the details then current on the Registrar’s registry. During the course of these attempts, some of the contact details of the Respondent changed. The Complaint then renewed its efforts to contact the Respondent, using the changed contact details. These combined efforts disclosed that the street and post box addresses of the Respondent were for persons unassociated with the Respondent, and that the telephone number was for a person unassociated with the Respondent.

Relying upon this information, the Panel found that the Respondent did “not conduct any legitimate commercial or non-commercial business activity in Australia….[took] deliberate steps to ensure that its true identity cannot be determined and communication with it cannot be made….[and that] it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain name….”

Another important finding for Complainant’s was the Panel’s discussion regarding Respondent inactivity.

[T]he relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name “being used in bad faith” is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.

The Panel explained that paragraph 4(b) of the Uniform Policy provides a list of circumstances where bad faith could be found. The question the Panel attempted to answer was: What circumstances establish bad faith? The Panel found:

(i) the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in Australia and in other countries, (ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name; (iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name, (iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and (v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.

Ultimately, the Telstra.org case found that passive holding of a domain was bad faith.

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