Animal welfare protestors allowed to keep ''


In Covance Inc v Covance Campaign, World Intellectual Property Organization (WIPO) panellist Alistair Payne has refused to order the transfer of '' to the complainant - the owner of the COVANCE mark.

Covance Campaign (CC), a UK-based animal rights activist group, registered '' to host a website used to protest against the complainants - Covance Inc and its UK-based subsidiary, Covance Laboratories Ltd. Covance is a drug development services company with global operations and it owns registered trademarks for COVANCE in a variety of jurisdictions. Covance filed proceedings with WIPO, claiming that CC's use of the domain name infringed its trademark rights.

Payne examined in detail Subparagraph 4(c)(iii) of the Uniform Domain Name Dispute Resolution Policy (UDRP), which provides that legitimate interest will exist where a registrant is "making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to ... divert consumers [misleadingly] or to tarnish the trademark or service mark at issue".

In his analysis, Payne confronted the divergent views on the issue of whether a domain name that is identical or confusingly similar to a trademark or service mark can ever be lawfully used for the purposes of criticism. He observed that the UDRP does not expressly provide that a registrant can have no legitimate interest in a domain name that is identical or confusingly similar to a complainant's trademark. Payne applied a sliding scale test to the assessment of legitimate interest, stating that cases in which a registrant will have a legitimate interest in a domain name that is identical to a complainant's trademark will be rare, whereas cases where the domain name includes a negative modifier, such as 'sucks' (eg, '') will be more likely to constitute a legitimate interest. He found that the modifier 'campaign' used by CC fell between these two extremes and was innominate, having neither a negative nor a purely neutral connotation. However, Payne concluded that CC's use of a bold disclaimer on its website dispelled any initial confusion that may have existed between Covance and CC's website.

He also found that the sale of t-shirts and other merchandise from the '' website was merely an ancillary use and did not give rise to "an intent for commercial gain" so as to make the legitimate interest found in Subparagraph 4(c)(iii) unavailable.

Accordingly, he found that CC had a legitimate interest in the disputed domain name and dismissed the complaint.

Mark Edward Davis, Ogilvy Renault, Toronto

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