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Withering Heights: Parody, Criticism and Free Speech in the UDRP

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?”

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