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Sunday, 19 August 2012

Fouling one's Neste? Domain names, bad faith and the borders of parody

Open criticism of modern corporations and their business practices has become increasingly inventive in the sphere of modern society. Could the activist group Greenpeace use the name of a Finnish oil refining company, Neste Oil, in its online campaign against that corporation’s business practices, or might this activity infringe its trade marks in the name by doing so? This issue was brought before the World Intellectual Property Organization in a domain name arbitration ruling reported here.

Parody ...
Neste Oil contested the use of its name in Greenpeace's domain names nestespoil.com and nestespoilreturns.com, maintaining that the use of these domains would lead to confusion and cause harm to the corporation's image. Also, it claimed that the activist group had no right to use the name and that it was used in bad faith; with the objective of causing loss, disrupting its business activities and benefiting Greenpeace through the receipt of donations. Greenpeace responded that the use of Neste's name was merely an exercise of its freedom of expression through parody -- and therefore not an infringement. The domain names nestespoil.com and nestespoilreturns.com were said to be distinct enough to avoid causing confusion and were used in a non-commercial way. Nor did they cause any loss to Neste, as Greenpeace were not the company's commercial competitors. The sites were not registered in bad faith, but for a legitimate protest purpose.

... no parody
The panel decision ruled that the domain names registered by Greenpeace would be sufficiently similar as to cause confusion, even with the added letters “sp”, and that the use of words had negative connotations. However in this instance the change, although negative, was insufficient to enable Neste to succeed. The panel decided that the website was not used for commercial gain, as the website was used to voice environmental concerns as opposed to leading visitors to a webpage soliciting donations. The nature of the site was to protest, not to promote Greenpeace's monetary self-interest. The website also did not divert sales away from Neste. Finally the website did not tarnish the Neste's trade mark, since previous cases indicated that the disputed websites would have to contain content of an objectionable nature, such as pornography. Greenpeace was thus able to retain the domain names for its own purposes.

The decision of the panel was not wholly unanimous, since one member voiced a dissenting opinion. The minority saw that the deep similarities between  the respective websites would cause confusion as to their true owner. Given the nature of the content of Greenpeace's website, it could not be viewed as merely a parody: Greenpeace should have taken further steps to distinguish the parody website from the original.

The panel acknowledged that there was a need to balance the interests of the party holding the trade mark with that of freedom of expression in utilizing the trade marks. Although the majority did not discuss the issue of bad faith in registering the domain names, the minority thought this was an issue of critical significance, regarding Greenpeace as having abused the similarities between the two websites for it own gain, in the form of actual donations and ad revenue, so the domains were therefore registered in bad faith.

Getting the right balance between these competing interests can be tricky. One cannot overly restrict the use of trade marks in parodies: criticism is an essential part of social discourse, and trade marks should not be used as a sword in any and every situation in which an expression of criticism of the trade mark owner makes reference to its trade marks. However, where that use oversteps the line and becomes defamatory or gratuitously insulting, such use becomes difficult to justify.

Thank you, Jani Ihalainen. for preparing this note on behalf of the IPKat.

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