Criticism website does not fall foul of French trademark law

France
Smart&co SAS, a French company specializing in packaged gift boxes containing themed vouchers, has lost a complaint filed with the World Intellectual Property Organization (WIPO) in relation to the domain name 'smartbox-arnaque.com' under the Uniform Domain Name Dispute Resolution Policy (UDRP) (Case D2009-1402, December 10 2009).
 
The decision is in line with the majority of UDRP precedents relating to criticism websites and with French court precedents on the same issue.
 
Smart&co, which is based in Levallois-Perret, France, filed a complaint against Alain Turby, a French individual residing in Bordeaux, France, seeking the transfer of the domain name 'smartbox-arnaque.com' into its ownership.
 
To obtain a transfer of a domain name under the UDRP, a complainant needs to prove all of the three following circumstances:
  • The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
  • The respondent has no rights or legitimate interests in respect of the domain name; and
  • The domain name has been registered and is being used in bad faith.
Smart&co sold its gift boxes under the brand Smartbox, in which it held several trademark registrations covering France and predating the registration of the domain name.

Turby registered the domain name on August 22 2009 and pointed it to a website reporting on the difficulties that he allegedly encountered when using Smart&co's products. The website also provided a forum for other users to express their criticism in relation to Smart&co. To convey the nature of the website, Smart&co used the descriptive French word 'arnaque' in the domain name, which means 'con', 'trickery' or 'scam'.
 
In response to Smart&co arguing that the three requirements of the UDRP were met, Turby did not file a procedural response, although he sent an email response to WIPO which the panel decided to consider for the proper administration of the dispute.
 
Establishing the first prong of the UDRP did not prove difficult for Smart&co, given that:
  • the term 'Smartbox', in which Smart&co had rights, was exactly reproduced in the domain name; and
  • the mere addition of a dictionary word was insufficient to set aside all risks of confusion within the meaning of the UDRP.
As for the second criteria of the UDRP, Turby alleged that:
  • he had a legitimate interest in exploiting the domain name because his purpose was to expose the various problems that he had suffered at the hands of Smart&co; and
  • his good faith could not be questioned, as the veracity of the facts reported on the website could be verified.
In addition, Turby alleged that he was not making a commercial use of the domain name and did not wish to disrupt Smart&co's activity. He stressed that he was not a competitor, but merely a dissatisfied and unhappy client.
 
The panel considered whether the use made of the domain name could justify the reproduction of Smart&co's exact trademark. In order to conduct such an assessment, the panel considered that, as both parties were resident in France, the issue of whether Turby had a legitimate interest in using the domain name would need to be decided in relation to French law. The panel took the view that French law was relevant in this instance pursuant to Paragraph 15(a) of the UDRP Rules, which provides that "a panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the policy, these rules and any rules and principles of law that it deems applicable", as applied in many previous WIPO domain name disputes (see, eg, Sermo Inc v CatalystMD LLC (Case D2008 0647)).
 
In the present instance, the panel highlighted that, under French IP law, the use of a trademark in a domain name for the purpose of criticism did not fall foul of French trademark law, since it was not a use in the course of business (referring to the Greenpeace decision of the Paris Court of Appeal of November 17 2006). The panel considered that:
  • Turby's purpose in using the domain name was to facilitate the expression of criticism relating to Smart&co's products; and
  • there was nothing to suggest that the domain name was being used for a commercial purpose.
Finally, the panel considered whether Turby had abused his freedom of expression by going too far in his criticism. The panel's view was that the criticism expressed via the website to which the domain name was pointing was not excessive, inflammatory, abusive or disproportionate. Thus, the panel found that Smart&co had not made a prima facie showing that Turby had no rights or legitimate interests in respect of the domain name.
 
Turning to the third criteria, Smart&co claimed that Turby had registered and was using the domain name in bad faith, given the well-known nature of the SMARTBOX mark and the fact that Turby had referenced his website on internet search engines. The panel noted in passing that when the keyword 'smartbox' was typed into search engines, the list of initial results did not refer to Turby's website. In any event, as the second requirement had not been met, the panel considered that it was unnecessary to examine the third requirement in order to come to the conclusion that the transfer of the domain name should be denied.
 
This decision gives an interesting illustration of the justification of the use of a trademark when it does not fall within the commercial sphere and when it is instead used as a means of freedom of expression. In this instance, the issue of whether Turby had legitimate interests in the domain name was solely decided on the basis of French law, thus narrowing the scope of the decision, as the application of some other national laws may have led to a different outcome. The decision thus stresses the need for UDRP complainants and respondents to potentially consider the impact of national legislation in their submissions, in particular when dealing with difficult issues under the UDRP, such as criticism websites.
 
David Taylor and Rana A Nader, Lovells LLP, Paris

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