Does free speech overrule a trademark owner’s interest in a domain name? According to Sutherland Institute v. Continuative LLC, a recent case by a WIPO domain dispute arbitration panel, the answer could be yes. Maybe. The case is interesting for two reasons: its discussion of free speech protection and domain names, and the deference of the international panel to local law.
The Sutherland Institute is a conservative think tank based in Utah. Their website is based at SutherlandInstitute.org. The respondent is a gay rights activist who set up a critical website at SutherlandInstitute.com. The respondent’s website looks very nearly identical to the complainant’s except for the background color and the text. Understandably, the Sutherland Institute was unhappy when a large donor confused the two and voiced their concern over the content on the Sutherland Institute’s website. The Uniform Domain Name Dispute Resolution Policy (UDRP) requires the complainant show three things: (i) the domain is identical or confusingly similar to the complainant’s mark, (ii) the respondent has no legitimate rights in the name, and (iii) the domain was registered and used in bad faith. For a much more detailed discussion of these elements, see “What Jay Leno taught me about domain disputes” on this website. Despite the confusion being generated and no defense being presented by the respondent, the arbitrator denied the Institute’s request for transfer of the domain on the grounds that the complainant had not shown it was held in bad faith.
Free Speech and Domains
This dispute can be viewed as being about the limits of trademark’s ability to infringe on free expression. Does the right to free speech give a person the legitimate right to use a trademark in a domain name? In copyright, fair use helps define this limit by protecting academic research, news reporting, and (in the US, anyway) parody. “Nominative fair use” of trademarks is recognized in US case law. You can use a trademark in speaking about the trademark owner subject to two conditions: you use the trademark only as necessary for your purpose and you do not imply that the trademark owner endorses your use. This was not the case here as the purpose of the respondent’s website was to (initially at least) confuse visitors. Could the usage be considered a parody? The issue in UDRP cases is the domain name—the use of the mark—not the website. The mark itself is reproduced in the domain name in its entirety and in isolation. A parody cannot be a mere copy and, as such, the panel determined that the Respondent’s use does not constitute parody.
However, despite finding no legitimate right to use the mark, the panel refused to say that the use of the domain was in bad faith—the third element the complainant must prove. The purpose of the UDRP is, primarily, to prevent the commercial exploitation of trademarks in domain names: to prevent companies from tricking users into visiting their site for monetary gain. In this case, however, the respondent was using the complainant’s trademark to trick people into listening to opposing political speech. The panel could have found this to be bad faith usage but instead said this:
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”.
This statement can be viewed in two ways. It has been criticized as eroding the uniform nature of the UDRP: by bringing local laws into the arbitration process they are moving away from the goal of uniformity and bringing complex choice of law issues into the mix. On the other hand, I believe it reflects the role of the UDRP. The UDRP provides an expedited arbitration process for quickly addressing the most common types of domain abuse. It was never intended to balance intellectual property rights against civil rights. The panel does not say that they are upholding the respondent’s right to the domain based on the US Constitution, rather they simply say that the issue is beyond their competency. I think that that is a fair stance for them to take.
So, does free speech protect domain squatters? I guess it’s an issue for the courts to decide.