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Posts Tagged ‘Parody’

Glenn Beck May Have Been Raped And Murdered By WIPO Arbitrator?

Friday, November 6th, 2009

               beck-glenn

For anyone following UDRP cases, this one was highly anticipated. The case of Mercury Radio Arts, Inc. and Glenn Beck v. Isaac Eiland-Hall (WIPO D2009-1182, October 29, 2009) dealt with the domain www.glennbeckrapedandmurderedayounggirlin1990.com. (For all the case filings and opinion please go here.) If you don’t know anything about this case you should read the full decision to get an understanding of the UDRP process. It seems as though Mr. Beck got a taste of his own rhetoric today, but if you want to know more about him visit his web site at www.glennbeck.com. Our friend Marc Randazza has won another case with some very “eloquent” language in his pleadings and has provided many First Amendment proponents with a significant case for later use.

Essentially, the Panel found that the domain was confusingly similar to Mr. Beck’s trademark. The case turned on the issue of whether the domain was being used in a manner consistent with the First Amendment rights to publish satyrical content. The Panel believed that the disputed domain was a parody and should be afforded such protection. The Panel explained:

It can be and has been argued by Complainant that the disputed domain name should be assessed “standing alone” because at least some Internet viewers will only have that first impression (i.e., they will not click through).  However, this case involves a form of speech arguably strongly protected under the First Amendment of the U.S. Constitution.  This Panel is very reluctant to reject Respondent’s claim of legitimate noncommercial and fair use on the distinction between viewing of the disputed domain name itself and clicking through to Respondent’s website.  On the same basis by which the Panel has determined the disputed domain name is confusingly similar to Complainant’s trademark – that is, Internet users viewing the disputed domain name will be curious and motivated to visit the website – the Panel also considers that Respondent’s speech should be assessed as a whole, both by reference to the disputed domain name and the content of Respondent’s website (i.e., on the assumption the preponderance of Internet users will indeed click through).

The Panel did not address any issues of bad faith since they found that there was legitimate rights involved. The Panel stated “The Panel notes, however, that the combination of political speech engaged in by Respondent and the substantial lack of commercial intent makes it unlikely to this Panel that Complainant would have succeeded in demonstrating bad faith registration and use.”
A large tip of the hat goes out to Mr. Randazza for a great win.

Update: The Respondent pulled a fast one on Mr. Beck and relinquished the domain. See his letter to Beck (here)

“Hairy Winston”: Diamonds for Dogs?

Thursday, October 30th, 2008

In the recent case of Harry Winston, Inc. and Harry Winston S.A. v. Jennifer Katherman WIPO D2008-1267 (October 18, 2008), a Panel was presented with an interesting decision which covered numerous topics defenses not often raised by Respondents, which included fair use and parody. The Respondent registered the disputed domain, www.hairywinston.com on March 11, 2008, to purportedly run her business of retail sales of dog and cat supplies and accessories (for example: leashes, collars and toys). The Complainant is the well known Harry Winston, who owns the federally registered trademark HARRY WINSTON for jewelry, diamonds, and timepieces and operates a website at www.harrywinston.com.

Respondent acknowledges that the name was selected to make a playful use of the name of her dog, Winston, and that the name will bring to mind the Complainant. The Respondent contends that her use of the name is fair use by way of parody. The Respondent notes that “for the Panel to hold that she has no rights or legitimate interests in respect of the Domain Name, is tantamount to a finding of trade mark infringement, a finding that is outwith the scope of the Policy and the Panel’s competence.”

In addressing the three prong UDRP test, the Panel first addresses whether or not the domain name is identical or confusingly similar. The Respondent argues that anyone who simply views the site could not possibly believe that it is related in any way to the Complainant. However, as the Panel explained, “it is now well-established that the content of the Respondent’s website is an irrelevant factor when assessing confusing similarity under the first element of the Policy. The test is to be conducted by way of a side-by-side comparison of the Complainants’ trade mark and the Domain Name.” Therefore, the Panel found this factor in favor of the Complainant.

The Panel next briefly addressed the second prong, whether the Respondent had any rights or legitimate interests. The Respondent claims that she had a bonafide offering of goods and services prior to notification by the Complainant. However, the Panel explained that the potential for the dispute arose the moment she considered adopting the parody name, and thus she could not enjoy the benefit of the bona fide offering. Interestingly though, the Panel did not make a decision regarding the second prong, and instead explained that the third prong was determinative of the case.

The Panel appears to almost chastise the Complainant for their attempt to “adopt a scatter gun approach” regarding their contentions of bad faith. One of the Complainant s arguments is explained by the Panel as follows:

The Complainants then go on to contend that the commercial gain that the Respondent is hoping and expecting to derive from the Domain Name will be achieved by visitors visiting the Respondent’s website in the mistaken belief that, because of the confusing similarity of the Domain Name to the Complainants’ trade mark, the Respondent’s website is a site of or associated with the Complainants (paragraph 4(b)(iv) of the Policy). On arriving at the site, those visitors will appreciate their mistake, but insofar as any of those visitors may be interested in acquiring pet supplies and accessories, the Respondent will thereby have derived an unfair business opportunity, the unfairness lying in the deceit by which the Respondent has diverted the visitors to her site.

Interestingly though, the Panel explains that it is not their task to “attempt to assess whether the Respondent’s activities constitute infringement of the Complainant’s trade mark rights.”
The Respondent acknowledges that the Complainant’s name will come to mind among consumers, but believes it will not lead to confusion. The Panel agreed and explained:

In the view of the Panel, it is inconceivable that people of the sophistication of the Complainants’ clientele will believe that the Complainants could begin to countenance use of such a variant of their name for their business. Even if the Complainants were minded to consider brand extensions, it is most unlikely that Hairy Winston would feature as a candidate.

The Panel also examined the parody arguments, and apparently believed that in the domain context her usage was not bad faith in accordance with the UDRP. The Panel noted that it may constitute trademark infringement, but that is not within the Panel’s decision making powers. The Panel explained:

The Panel is satisfied that the Respondent’s intention in registering and using the Domain Name as she has was to parody the Complainants’ famous name and trade mark and that she was justified in believing that the parody would successfully differentiate the parody from the original such as to obviate any significant risk of confusion or deception. In such circumstances it would be perverse to categorise the Respondent’s intentions when she registered the Domain Name as bad faith intentions for the purposes of the Policy.

Ultimately, the Panel DENIED the request for transfer.

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