In the recent domain name dispute decision of Rockstar, Inc. v. RSRESELLER LTD c/o Andrey Litovchenko (Nat. Arb. Forum FA1279865, September 29, 2009), a single member Panel was faced with a dispute over the domain www.thetruthaboutrockstarenergydrink.com. Complainant is the exclusive licensee of the ROCKSTAR and ROCKSTAR ENERGY DRINK marks in connection with its very popular energy drinks. Complainant has been using the marks since 1999 and has a registered trademark and maintains a web site at www.rockstar69.com. Respondent registered the domain in June 2009 and failed to respond to the complaint.

Paragraph 4(a) of the UDRP Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith.

In addressing the first element, the Panel noted that Complainant had sufficient rights to the mark under the Policy  ¶ 4(a)(i). The Panel next compared the disputed domain to Complainant’s mark and found that the disputed domain merely added the generic phrase “the truth about” at the front of the domain. The Panel found that this difference was not significant and found the domain to be confusingly similar.

Moving to the second element, the Panel found that Complainant presented a prima facie case, shifting the burden of proof to Respondent. The Panel found that Respondent was not commonly known by the disputed domain and had no license or permission to use the mark. The most significant findings from this section though were as follows:

Respondent’s disputed domain name redirects Internet users to a website that displays critical and disparaging information about Complainant.  Previous UDRP precedent has held that a respondent does not have the right appropriate Complainant’s mark in a disputed domain name in order to exercise free speech rights on a resolving website.  Therefore, the Panel finds that Respondent has not created a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).

The Panel’s support for this finding was based on one citation from a June 2000 WIPO decision and a Second Circuit decision from 2000 as well. As a result the Panel found Complainant satisfied this element as well.

In addressing the final element, the Panel explained that it was within its power to consider additional factors beyond those listed in Policy ¶4(b). The Panel acknowledged that the disputed domain resolved to a web site that criticized Complainant but quoted another decision in support of its finding:

In Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001), the panel stated that although the respondent’s complaint website did not compete with the complainant or earn commercial gain, the respondent’s appropriation of the complainant’s trademark with a view to cause “damage and disruption to [Complainant] cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trademark owner’s site into visiting the registrant’s site” in holding that the disputed domain name was registered in bad faith.

As a result, the Panel found that “Respondent’s criticism of Complainant’s business through the disputed domain name was achieved only through bad faith registration and use, as Respondent misappropriated Complainant’s trademark through the confusingly similar disputed domain name.” Ultimately, the Panel found that Complainant satisfied all elements of the Policy and ordered the domain be TRANSFERRED.

In the recent domain name dispute decision of Joseph Schlessinger, Ph.D. v. PrivacyProtect.org / Harold O Connor, JS Players Association (WIPO D2009-0695, July 21, 2009), a single member Panel was faced with a dispute over the domain www.josephschlessinger.com. The Respondent failed to provide a response. Complainant is Dr. Joseph Schlessinger is the Chairman of the Department of Pharmacology, at Yale University School of Medicine. He has hundreds of academic publications and often serves as a lecturer, consultant, book author, and has served on the editorial boards of a number of scientific journals. His biography can be viewed here.

Paragraph 4(a) of the ICANN UDRP Policy states that Complainant must prove (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith.

The Panel addressed the first element, noting that Complainant does not have any registered trademark in his name, but that he makes claim for common law rights based upon being famous in the scientific community. The Panel found he established common law rights noting, “Complainant is a person of considerable academic stature who has acquired ample secondary rights in his personal name, particularly in the fields of scientific discovery, development and authorship.” The Panel found the domain was identical to Complainant’s mark.

Moving to the second element, the Panel notes that Respondent is not commonly known by the domain. Interestingly though, the Panel explains as follows:

In the terms of paragraph 4(c)(i) of the Policy the Complainant says that the corresponding website conducts no bona fide business but is in fact a criticism site with defamatory content. In the terms of paragraph 4(c)(iii) of the Policy the Complainant says that the use of the website is not fair, as would be required under the Policy, because again, it is a criticism site that in the Complainant’s view exploits the Complainant’s name and is dressed up to appear initially legitimate.

Despite noting that Complainant acknowledges the use of the domain was criticism, the Panel still made the following finding:

The Respondent could perhaps be said to offer a service, whereby he tables his comments about the Complainant. But by the Respondent’s use of the Complainant’s mark in full and in isolation in the domain name without authority, such use is neither bona fide nor fair in the view of the Panel…. In the present case, the Respondent may well be entitled to express its opinion about the Complainant on a website, but in the Panel’s view such entitlement does not extend here to a right or legitimate interest under the Policy in doing so through a domain name that is identical and clearly confusingly similar to the Complainant’s trademark.

The Panel found Respondent lacked any rights or legitimate interest. Moving to the last element, bad faith, the Panel takes us through an interesting factual analysis of the content on Respondent’s site.

[T]he Respondent’s website in the space of only three pages ignores most of the positive dimensions of the Complainant’s stature and concentrates almost exclusively on two uncomplimentary (and contested) allegations distilled out of the Complainant’s life. Likewise these negative aspects predominate in the keywords supplied for the attraction of search engine hits. The Panel recognises the principles of freedom of speech and is not in a position here to assess the veracity or otherwise of the Respondent’s allegations or, on the other hand, whether the purported facts may otherwise be legitimately in the public domain. The key point is that the Respondent’s website posted at a domain name identical to the Complainant’s mark is targeted specifically at the Complainant’s name and mark and uses the domain name to focus on the denigration of the Complainant.

The Panel disclaims any view as to the validity of the content posted on the disputed domain and concludes with the following statement:

Regardless of how benign or otherwise the material, the over-riding consideration in this Panel’s view is that the Respondent’s undoubted freedom of speech within the law, unfettered as it is except by his ability to pay for any possible consequences, does not grant him authority to register a domain name identical and clearly confusingly similar to the Complainant’s mark and use it to point to a website clearly derogatory of the Complainant’s mark.

Ultimately, the Panel found the Complainant satisfied all three elements and ordered the domain be TRANSFERRED.

DefendMyDomain Commentary: We normally do not provide our opinion about whether a domain decision was right or wrong, but this one appears to be wrong. It is clear the web site was used for commentary and criticism without commercial gain. Maybe the only criticism against the web site is that it did not contain a disclaimer on the page (which some panels have previously found helpful in finding for Respondents). This appears to be a classic “sucks” case. However, when the Complainant admits it is a criticism site and when a Panel talks about First Amendment rights, yet still decides to transfer the domain, we begin to question the whole UDRP process.

In the recent decision of Kohler Co. v. Thomas Mcivor (Nat. Arb. Forum 1245293, March16, 2009), a single member Panel was faced with a dispute over the domain www.kohlersucks.com. Complainant, Kohler, is the well known kitchen and bath supplies company. Kohler maintains a website at www.kohler.com. Kohler also sells other various services and products including furniture, engines, generators, and golf resorts. Respondent appeared to be operating a criticism web site related to Kohler. Respondent claimed to never have used the disputed domain for commercial gain and sought protection of his free speech rights.

Generally panels are tasked with the UDRP policy developed by ICANN: Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1)   the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2)   the Respondent has no rights or legitimate interests in respect of the domain name; and (3)   the domain name has been registered and is being used in bad faith.

In the instant case, the Panel declined to address both the first and second prong of this test and focused its efforts on the third prong. “The Panel finds that Respondent has not registered or used the disputed domain name in bad faith since Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii).” The Panel went further to explain:

The Panel finds that the “sucks” suffix would create an initial impression of a complaint website that is unaffiliated with Complainant, and when coupled with a link to a better business bureau website, would reinforce this fact and be viewed as a vehicle for enabling visitors to voice complaints.

Based upon the Panel’s findings, it determined that Respondent’s use of a commentary or criticism web site demonstrated a right or legitimate interest and that it fell within the fair use exception stated in Policy ¶4(c)(iii).

Ultimately, the Panel DENIED Complaint’s request for transfer.

DefendMyDomain Commentary: As of the date of this posting, it appears that the disputed domain no longer resolves to an active website. It remains unclear if there was a post-decision settlement agreement between the parties.

In a recent WIPO decision, the worlds of trademark, domain disputes, initial interest confusion, parody, criticism and first amendment all collided. In the case of Aspis Liv Försäkrings AB v. Neon Network, LLC (WIPO D2008-0387, June 2, 2008), a three member UDRP panel ruled FOR THE TRANSFER of the disputed domain. The Complainant, Aspis Pronia, was incorporated in 2004 and is successor in interest to Aspis Pronia General Insurance Company S.A (“Aspis Pronia”), a company registered in Greece. The Complainant Aspis Pronia is the owner of a Swedish trademark for ASPIS and a European Community trademark for the same mark. The disputed domain was registered in 1998, prior to the creation of the of the Complainant’s company. The Respondent’s web site was a criticism and gripe forum which was directed to Complainant Aspis Pronia, and was used for more than ten (10) years to communicate the perspective of one unhappy investor.

The panel’s decision was split 2-1 with a long, dissenting opinion. Regarding the rights or legitimate interests prong of the UDRP test, the Panel explained:

The majority of the Panel in this case are of the view that the cases cited in paragraph 2.4 of the WIPO Overview as being authority for the proposition that the use of a domain name which essentially comprised a trade mark without any additional “modifier” for a criticism site will not provide “rights” or “legitimate interests”, are to be preferred.

The majority of the Panel held that the critical commentary site at aspis.com should be transferred since the domain was Complainant’s trademark “without any additional modifier.”

One of the more interesting findings by the Panel, one which many U.S. trademark and domain owners should pay close attention to, relates to the First Amendment implications.

This conclusion involves no real curtailment of the principles of free speech. What is being curtailed is not free speech, but impersonation. A respondent can always choose a domain name that does not carry with it the perception of being authorised by the trademark owner. It is also an approach that involves no judgement being made on the content of the criticism site. Of course, it may be that as a consequence of using a different domain name less people will see the criticisms that the registrant wants to make public. However, if this is true, this of itself is evidence of the fact that the misrepresentation inherent in the domain name is the thing that draws people to the site.

The Panel’s discussion regarding bad faith also highlighted the continued split of authority regarding the use of criticism web sites.

It is not the Panel’s role to pass comment on the content of a genuine criticism website. No matter how robust that content may be, that content is incidental to the consideration of the issue of bad faith. The bad faith that exists in this and similar cases arises not from any critical statement or alleged “smear” but from the fact that the Respondent has chosen a domain name that comprises without modification a mark used by the Aspis group and the misrepresentation and impersonation that this involves.

The dissenting Panelist in this decision provided a very long opinion, which covered topics from parody, criticism, commercial use, initial interest confusion, parked pages, and generic words. This dissenting opinion was a strong, scathing indictment of the majority’s decision and discusses issues important to trademark owners, domain owners and UDRP practitioners highlighting divergent UDRP opinions.  Most likely, this case will be cited by many trademark owners fighting against criticism web sites. The larger question still remains though, namely, “What is the extent to which the UDRP process can reach into other areas of the law?”