Free speech prevails over common law rights in WIPO panel decision

The IPKat's friend, Greek practitioner and scholar Nikos Prentoulis, has been getting very excited about a recept WIPO Panel decision over a domain name in which the respondent's freedom of expression prevailed over the complainant's common law service mark rights. Nikos writes:

"In deciding case D2009-0693, WIPO’s administrative panel rejected a domain name complaint filed by Sutherland Institute against Continuative LLC (both of Salt Lake, Utah, USA), after balancing conflicting interests in free speech and trade mark rights. Sutherland Institute, a non-profit organization/think tank, was incorporated in 1994. The institute contested the registration by Continuative of the domain name sutherlandinstitute.com, supporting its claim only on the basis that it enjoyed common law service mark rights.

Continuative LLC had used the contested website, which was essentially the same in layout and features, host political criticism against the Sutherland Institute because of its allegedly anti-gay political agenda. Continuative's site also included two small disclaimers, describing the site as “a parody site, an opposing political platform”. Continuative LLC filed no response to Sutherland's complaint.

Under WIPO rules, a domain name complaint will fail unless the following cumulative requirements are met: (a) the respondent’s domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights, (b) the respondent has no rights or legitimate interests in respect of the domain name, and (c) the respondent’s domain name has been registered and is being used in bad faith.

In this case, confusing similarity was evidently not hard to demonstrate. Additionally, the panel correctly held that Continuative LLC had no legitimate right or interest in the domain name (this is essentially the “parody site” argument, deriving from the “fair use” doctrine). The key point of its lengthy reasoning was that there was “no transformation into a potential parody object.

However, the complaint failed the criterion of bad faith. The panel held that the disputed domain name was being used for purposes of political speech, which is protected under US Constitution (nb both entities are US based) and, for this reason, the panel would not be willing to interpret “bad faith” in a broad manner. Thus it rejected the complainant’s argument that the domain name was registered for the purpose of disrupting the business of a competitor. According to the decision,

“... only by the exercise of mental gymnastics may a group of gay rights activists be defined as a “competitor” of a conservative public policy think tank. A person seeking the services of a lobbyist or advocacy group who is unable to secure the services of a conservative think tank is unlikely to decide to take its business instead to a group of gay-rights activists. Perhaps in some very attenuated sense these two entities are “competitors in the marketplace for ideas”, but the Panel does not think this is what the Policy means when it refers to “competitors”.

In the core of its reasoning on bad faith, the panel did not contend the fact that Continuative LLC registered and used the disputed domain name to confuse Internet users into thinking that the Sutherland Institute was a source, sponsor, affiliate or endorser of its website. However, it ruled that there was no evidence that it did so for “commercial gain”. The reference to “commercial gain” in paragraph 4(b)(iv) of the Policy, the panel held, was not designed to inhibit “pure political speech.” “In these proceedings the evidence before the Panel indicated that Respondent is engaged in “pure political speech”. There were no advertising links on Respondent’s website. There are no requests for financial support on Respondent’s website. Because this proceeding involves political speech that is strongly protected under the U.S. Constitution, the Panel will not in these proceedings involving two U.S. parties attempt to identify bad faith elements that are not specifically enumerated in the Policy. If the right of political speech is to be interfered with based upon Complainant’s service mark incorporated in Respondent’s disputed domain name, it is preferable that a federal or state court make that application of the concept of “bad faith”.

The pure/impure political speech dichotomy proved effective in this case. It is unclear however whether it can always do the trick. To begin with, as the panel hinted, when sponsorship or fund-raising or even commercial affiliation is involved, “purity” will be highly debatable. Moreover, the limits of pure criticism when it comes to attacking famous trade marks (because such limits do exist) are hard to draw.

The IPKat says thanks, Nikos, for taking the trouble to write. Merpel says, I'm not sure I understand the parody point. Continuative's site does parody that of the Institute. For example, the "real" site reads

"The Sutherland Institute’s philosophy is simple: We believe that parents are responsible for their children’s education and that the state role in education is primarily as a support to parents. We also believe that educational freedom is a necessary ingredient in providing the best education possible for each individual student".

and the respondent's echoes it:

"The Sutherland Institute's philosophy is simple: Unfortunately it's nothing more than a bunch of hate speech wrapped up in this feel good, community knows best garbage that doesn't hold water".

But what precisely is the nexus between the parody of the content and the right to retain and use the name? Perhaps a kindly reader can put the logic in feline-friendly format.

Sutherland here
Sutherland's Law here