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Use of "trademark.com" domain names for criticism sites

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

The IPKat's Greek friend Nikos Prentoulis wrote a guest article last week, "Free speech prevails over common law rights in WIPO panel decision", Though it attracted only a couple of posted comments, the Kat received some very thoughtful emails on the subject. One of these is from Matthew Harris (a partner in Waterfront Solicitors), who has written to the IPKat as follows:

"I thought you might be interested to learn that for quite a few years there has been a debate ongoing among UDRP panelists as to the extent to which <[trade mark].com> domain names can be legitimately used for criticism sites.

WIPO chose this as one of the subjects of discussion during the meeting of panelists in Geneva last October under the heading ?Criticism sites and other free speech - bridging the divide??. The ?divide? is recorded in paragraph 2.4 of the WIPO Overview of Panel Views. It is broadly between a US approach that has been prepared (at least in cases that involve only US parties) to be influenced by US case law on the issue, and non-Americans that have tended to be less impressed by such arguments and more often than not have concluded that <[trade mark].[tld]> domain names, even when used for criticism sites, are abusive.

In the last couple of years the question has arisen as to whether this divide is logically defensible. This in turn raises fundamental questions as to what extent the UDRP can or should be seen as providing a sui generis system of law (albeit one created by contract) or should be influenced by provisions in national law (including free speech rights under the US constitution as well as national law concepts of ?fair use?).

For those who are interested in the subject, decisions in which this debate has been conducted include:

1066 Housing Association Ltd. v Mr D. Morgan, WIPO Case D2007-1461 [declaration of interest: Matthew drafted this ...]

Fundación Calvin Ayre Foundation v Erik Deutsch, WIPO Case No. D2007- 1947

Sermo, Inc. v CatalystMD, LLC, WIPO Case No. D2008-0647 and

Grupo Costamex, SA de C.V. v Stephen Smith and Oneandone Private Registration / 1&1 Internet Inc. WIPO Case No. D2009-0062

The decision in D2009-0693 mentioned by your correspondent is of some interest in that the US panelist reached different conclusions on the issues of ?right or legitimate interest? and ?bad faith?. However, ultimately it is a decision that appears to be consistent with the traditional ?US view?. It does not appear to address the more fundamental debate taking place on these issues.

It is also perhaps worth recalling that the English courts recently strayed into this discussion (perhaps unknowingly) in Patel v Allos [2008]. The decision was picked up by the IPKat at the time but was not as extensively reported as it perhaps deserves. It has not found its way on to the BAILII site. However, a full copy is accessible on Nominet?s website here".

Thanks, Matthew, says the IPKat, for taking the trouble to write in and to elucidate the current state of play in this obvious area of IP v free speech so neatly.

Full post as published by IPKat on July 27, 2009 (boomark / email).