Criticism Sites using Confusingly Similar or Identical Domain Names

Medhavi Singh, an intern at Khurana and Khurana, Advocates and IP Attorneys, looks into trademark litigation relating to criticism sites using confusingly similar or identical domain names.

Cybersquatting is the buzz word in the arena of domain name disputes and various.IN Domain Name Dispute Resolution Policy (INDRP) and Uniform Domain Name Dispute Resolution Policy (UDRP) decisions regarding cybersquatting have taken the front seat when it comes to recent Intellectual Property Law developments. The World Intellectual Property Organization (WIPO) has defined cyber squatting[1] as pre-emptive registration of trademarks as domain names by third parties, wherein the ‘first-come-first-serve’ nature of domain name registration system is exploited by the virtual hoodlums of the cyber world called Cybersquatters to register names of trademarks, famous people or business. These Cybersquatters then auction the domain names or offer them for sale directly to the company or person involved at exorbitant prices far beyond the cost of registration; at times they also keep the registration and use the well-known marks or famous names to attract business or unwary customers to their own sites.

Increasing domain name disputes have raised numerous questions when it comes to adjudicating cybersquatting matters and one such interesting question pertains to the status of genuine, non-commercial criticism sites having deceptively similar domain names. WIPO panel for UDRP disputes has explicitly discussed this question and there seems to be a dichotomy of views[2]. A set of panel decisions, especially in case of US disputes, held that the respondent will have a legitimate interest in using the trademark as part of the domain name if the registration of the criticism site is for fair and non-commercial use. Whereas other panel decisions affirmed that the right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant’s trademark.

Before we elaborate on the above-mentioned views of the UDRP panel it is pertinent to discuss the relevant provisions in the UDRP (identical to INDRP) when it comes to adjudicating domain name disputes. Para 4(a) of the UDRP (identical to Para 4 of INDRP[i]) lists the following three essentials[3] that need to be established in order to prove that a domain name conflicts with the legitimate rights of the complainant:

• A disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
• The registrant of the disputed domain name has no rights or legitimate interests in respect of the domain name; and
• The disputed domain name has been registered and is being used in bad faith.

In the administrative proceeding, the complainant must prove that each of these three elements is present.

Para 4(b)& Para 4(c) of the policy provides for ‘Evidence of registration and use in bad faith’ and ‘How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name’ respectively.

Keeping in mind these provisions we can now discuss a few panel decisions elucidating the two prevalent views when it comes to non-commercial criticism sites having controversial domain names.

Cases where domain names were transferred

Walmart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, Case No. D20000477

In the instant case disputed domain names were “walmartcanadasucks.com”,”walmartcanadasucks.com”, “walmartuksucks.com”, “walmartpuertoricosucks.com” and “walmartpuertorico.com”. No evidence was furnished by the respondent (the registrant of the disputed domain name) to demonstrate that “Walmarket Puerto Rico” or “Walsucks” was an established legal entity. The panel in this case cited WalMart Stores, Inc. v. Walmarket wherein it was held that the “Wal-Mart” trademark is well-recognized in many countries including the United States & Canada. It was stated by the panel that Walmartpuertorico.com is identical to the complainant’s trademark except for the presence of the generic top-level domain name “.com”, lowercase letters excluding the hyphen from the complainant’s trademark and the addition of ‘puertorico’. The generic top-level domain name and lowercase letters are devoid of any legal significance when it comes to establishing similarity or identity between marks. Also, the panel observed that the elimination of hyphen may create visual difference but there won’t be any phonetic difference between the domain names. The addition of a place name, a common method for indicating the location, doesn’t alter the underlying mark to which it was added as a user is likely to assume that the complainant is associated with the domain name. When it comes to “sucks.com” sites registered by the respondent the panel held that the addition of the pejorative term “sucks” is tantamount to creating a phrase “Wal-Mart Canada Sucks” thereby clarifying that the addition of a common or generic term following a trademark does not create a new or different mark in which respondent has rights. In this manner, the panel addressed the first element of para 4(a) of the UDRP Policy.

The respondent in this case claimed that he had created the website for his forthcoming book “Wal-MartCanadaSucks.com” and was inviting stories of dissatisfied customers for his book. In addition to this, the respondent characterized himself as a “domain name consultant’ in a mail wherein he declared that the disputed domain names were for an auction; this proves that the domain names were not mere non-commercial criticism websites but were created for commercial gains. It was, therefore, concluded by the panel that the respondent’s claim to a ‘freedom of speech’ interest in establishing the disputed websites was contradicted by his own words and the respondent engaged in abusive registration of the above-mentioned domain names within the meaning of Para 4(a) of the UDRP. Consequently, the respondent was ordered by the panel to transfer the domain names to the complainant.

Anastasia International Inc. v. Domains by Proxy Inc./rumen kadievCase No. D20091416

The disputed domain name in this case “Anastasia-international.Info” was created to be used as a website to warn prospective customers of the complainant’s business malpractices and the intent was to share the truth about the complainant, according to the respondent. The panel, in this case, held that since the respondent selected a domain name identical to the complainant’s trading name and did so deliberately keeping in mind the complainant’s rights it cannot demonstrate rights and legitimate interests merely because the intent was to publish content that may be critical of the complainant; the panel did acknowledge that a person is entitled to express his views subject to legal restrictions and a person may use a domain name to do so provided the domain name in question doesn’t cause confusion or mislead the public as noted in The Royal Bank of Scotland Group plc case[4]. Hence, even if the respondent created the website in good faith for non-commercial purposes, the use of a confusingly similar domain name was tainted. The subject domain name was thus ordered to be transferred to the complainant.

Cases where the complaint was denied

Howard Jarvis Taxpayers Association v. Paul McCauley Case No. D20040014

The domain name at issue is “hjta.com”, and it is evident that ‘hjta’ is an abbreviation for Howard Jarvis Taxpayers Association. The respondent asserted he’s a critic not a competitor and the domain name did not aim at disrupting the business of the complainant. The respondent also contended that confusing his website with the complainant’s website was improbable for the users as the appearance of the website and representation of criticism on the website was in such a way that it was highly unlikely to deceive a user into associating the website with that of complainant’s. Ergo, the respondent asserted that by creating the disputed website he was exercising his divine and lawful right to speak freely and to speak the truth. The panel, in this case, suggested that in the case of U.S based criticism sites a legitimate interest can be construed especially if there are no other indications of bad faith; it was then concluded that the respondent was entitled to the protection of para 4(c)(iii) of the UDRP as he was making a legitimate non-commercial or fair use of the domain name without the intention to mislead consumers or to gain commercially. There was no evidence of cybersquatting and the website of the respondent appeared to be a classic criticism site. The complainant in this case in spite of prima facie deceptive similarity of the domain name with the trading name of the complainant failed to prove a lack of legitimate interest as well as the existence of bad-faith and the panel, therefore, declined the transfer of domain name to the complainant.

Sermo, Inc. v. CatalystMD, LLC Case No. D20080647

“sermosucks.com” is the disputed domain name in this case and as the name suggests the respondent is highly critical of the complainant’s management practices and hence registered the domain name. The panel reiterated the “Wal-Mart case” decision as far as the deceptive similarity of the domain name is concerned and held that a domain name containing the trading name of the complainant along with a pejorative term giving rise to a phrase is confusingly similar to the complainant’s mark. However, when it came to the question of respondent’s legitimate rights in the domain name, the panel held that both parties in the matter were residents of the US and if the panel ordered a transfer, the same would be prevented by the US courts. The panel for that reason believed in applying US legal principles and on this basis it was stated that the complainant had failed to establish a lack of legitimate interest of the respondent in the domain name as the website was a criticism website. The panel pointed out that tarnishment prohibited by UDRP as held by the panel in previous decisions includes “unseemly conduct such as linking unrelated pornographic, violent or drug-related images or information to an otherwise wholesome mark and fair use even if libelous will not constitute tarnishment”. The respondent’s website clearly mimics the complainant’s website but is highly critical of the complainant and it was obvious that no right-minded organization will create a website like that for criticizing its management practices and therefore there was no likelihood of confusion on the part of consumers. There was also no evidence of commercial activity on the website and hence, there was no cogent proof to establish a lack of respondent’s legitimate interest or rights in the domain name or existence of bad faith. The transfer of the domain name was therefore denied in this case.

Recently the WIPO panel for UDRP disputes decided the following case wherein the domain name was transferred to the complainant.

Pinsent Masons LLP v. Peter Smith Case No. D20150796

The disputed domain name, in this case, is “pinsentmasons.lawyer” registered with GoDaddy.com LLC. The respondent contended that the intent behind registering the domain name was to provide a platform to the clients of the complainant (a law firm) and others to post their feedback and comment about the organization. The respondent was using a domain name identical to the trading name of the complainant and the respondent had no Legitimate Right or Interest in the domain name, this disputed domain name was also offered for sale before notice to the respondent of the instant dispute and there was evidence that the respondent had given a false registration address thereby creating reasonable doubt establishing bad faith. WIPO panel in accordance with the above discussion ordered the respondent to transfer the domain name to the complainant.

Indian case

RPS Infrastructure Limited v Jayanta Barua decided on 08/05/2010

The disputed domain name was “rps-savana.co.in” and the respondent registered the domain name as a common discussion platform for customers of the SAVANA construction project in which the respondent had personally invested and was concerned about the health and status of the project. According to the respondent, the website clearly specified that it was a personal, non-commercial website and was not affiliated to the complainant; it was further stated by the respondent that anyone visiting the website would easily find out that the website belonged to the respondent and not to the complainant. In the respondent’s defense, the complainant was aware of the presence of the website and even welcomed the creation of the website through an e-mail to the respondent; the appearance of the website was nothing like that of the complainant’s and the respondent was ready to address the copyright issues of the complainant. The arbitrator, in this case, held that the disputed domain name was definitely confusingly similar to that of the complainant’s trading name, the respondent also lacked a legitimate interest in the domain name as the domain name consisted of the complainant’s trading name and nowhere was it specified that the website was a discussion forum and was likely to result in confusion. Therefore the complainant’s use of the disputed domain name was not considered fair use under para 7 (iii)[ii] of INDRP policy and it was held by the arbitrator that use of such a domain name under para 6 (ii)[iii] of the INDRP policy prevents the owner of the trademark from reflecting its mark in the corresponding domain and establishes bad faith. The respondent had registered other domain names using the complainant’s trading name and it was beyond a reasonable doubt that the same was done in bad faith. The domain name was thus ordered to be transferred to the complainant by the arbitrator in this case.

Conclusion

There is an abundance of domain name dispute decisions addressing the status of criticism websites and it is evident that confusingly similar domain names are discouraged from being used as criticism websites unless the legal principles of the concerned country encourage otherwise. However, it is pertinent to protect trademarks from being used by cybersquatters for directing users to their websites in the garb of criticism websites and the divine right of freedom of expression.

[1]http://www.wipo.int/amc/en/center/faq/domains.html

[2]http://www.wipo.int/amc/en/domains/search/overview2.0/#24question 2.4

[3]https://archive.icann.org/en/udrp/udrp-policy-24oct99.htm

[4] The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez, WIPO Case No. D20030166

[i]Any Person who considers that a registered domain name conflicts with his legitimate rights or interests may file a Complaint to the “.IN” Registry on the following premises:

• the Registrant’s domain name is identical or confusingly similar to a name, trademark, or service mark in which the Complainant has rights;
• the Registrant has no rights or legitimate interests in respect of the domain name; and
• the Registrant’s domain name has been registered or is being used in bad faith

[ii] Registrant’s Rights to and Legitimate Interests in the Domain Name

Any of the following circumstances, in particular but without limitation, if found by the Arbitrator to be proved based on its evaluation of all evidence presented, shall demonstrate the Registrant’s rights to or legitimate interests in the domain name for the purposes of Paragraph 4 (ii) :

• the Registrant is making a legitimate non-commercial 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.

[iii] Evidence of Registration and Use of Domain Name in Bad Faith

For the purposes of Paragraph 4(iii), the following circumstances, in particular but without limitation, if found by the Arbitrator to be present, shall be evidence of the registration and use of a domain name in bad faith:

(iii) by using the domain name, the Registrant has intentionally attempted to attract Internet users to the Registrant’s website or other

on-line location, by creating a likelihood of confusion with the Complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of the Registrant’s website or location or of a product or service on the Registrant’s website or location.