Disgruntled client keeps domain name

In Norton Peskett v Hampson  (Case D2009-0724, July 21 2009), a World Intellectual Property Organisation (WIPO) panel has denied the demand of Norton Peskett, a law firm located in the United Kingdom, for the transfer of the domain name 'nortonpeskett.com'.
To obtain the transfer of a domain name, a complainant must prove all three of the circumstances under Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (UDRP) - namely:
  • 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 the domain name; and
  • the domain name was registered and is being used in bad faith.
In the present case, the respondent was a former client of Norton Peskett. The website to which the domain name at issue was pointing was a criticism site on which the respondent made certain claims about the firm and its handling of his father's estate.
First, the panel found that Norton Peskett had satisfied the first requirement of the UDRP. In particular, the panel considered that even if Norton Peskett had not registered the trademark NORTON PESKETT, it owned a common law right in the mark, as the latter had become a distinctive identifier of Norton Peskett's services, notwithstanding the particular geographic area in which the firm had a reputation.
However, the main issue of the case related to the second element of the UDRP. The panel first recognized that the respondent was not known by the domain name and was not using it in connection with a good-faith offering of goods and services (both can be used to demonstrate rights and legitimate interests under the UDRP, in accordance with Paragraph 4(c)). The panel then considered whether use of the domain name for a criticism website could be seen as a non-commercial or fair use, in accordance with Paragraph 4(c)(iii) of the UDRP.
Norton Peskett asserted that even if the respondent did have a right to free speech, three main issues prevented a finding of legitimate non-commercial or fair use of the domain name:
  • the domain name was identical to its trademark;
  • the website was similar to Norton Peskett's previous website, leading to a likelihood of confusion among internet users; and
  • the content of the respondent's website was defamatory and, therefore, not legitimate.
The panel first underlined that there was no general rule that the use of an identical trademark in a domain name for a criticism website could not be seen as a legitimate use of a domain name under the UDRP.
The panel then explained that two approaches were usually taken in cases of criticism websites. On the one hand, some panels tended to use what the panel referred to as the 'domain name itself is misleading' approach, which focuses on the domain name (as opposed to the content of the website). This approach involves an analysis of the words in the domain name and whether they made it clear that the website was a criticism one (eg, the addition of the word 'sucks' to a trademark). On the other hand, some panels have looked at the content of the website itself to determine whether it was a genuine criticism site (referred to by the panel as the 'complaints site' approach).
This two-pronged approach is also reflected in the "Overview of WIPO Panel Views", as follows:
"In the event that a domain name confusingly similar to a trademark is being used for a genuine non-commercial free speech website, there are two main views. There is also some division between proceedings involving US parties and proceedings involving non-US parties, with few non-US panellists adopting the reasoning in View 2.
View 1: The right to criticize does not extend to registering a domain name that is identical or confusingly similar to the owner's registered trademark or conveys an association with the mark.  
View 2: Irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if the use is fair and non-commercial."

Despite being based in Australia, and not the United States, the panel preferred View 2. Taking into account that the website was not similar to Norton Peskett's current one and that the use was clearly not commercial, the panel considered that it was obvious that the website was a criticism website. In the panel's view, the content did not create a likelihood of confusion and the respondent had demonstrated a real grievance against Norton Peskett. Nothing suggested that the website had been set up for commercial gain. The panel concluded that the respondent had demonstrated a legitimate interest in the domain name and, therefore, the second element of the UDRP had not been met. As a result, the panel did not need to analyze the third requirement of the UDRP in relation to bad faith and the complaint was denied.
The decision illustrates the fact that criticism websites are one of the most difficult areas when it comes to the UDRP. Had the panel decided to follow View 1, the outcome could have been very different because the domain name exactly matched Norton Peskett's trademark.
It is usually relatively easy to predict the result of most UDRP cases, particularly as decisions have become more consistent in the 10 years since the UDRP was introduced. However criticism websites remain one of the rare areas where genuine differences of opinion exist among panels, which must balance the rights of trademark owners against the right of internet users to free speech. This degree of unpredictability makes it difficult for brand owners when deciding on a strategy to deal with such websites.
David Taylor and Elsa Dobler, Lovells, Paris

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