Free speech rules out transfer of Freemasons domain name under UDRP
- Owner of figurative marks containing word elements ‘Queensland Freemasons’ and ‘Freemasons Queensland’ sought transfer of ‘queensland-freemasons.com’ under UDRP
- Panel found that respondent was making legitimate non-commercial fair use of string that was not identical to any word mark used by complainant
- Any impression of association with complainant was offset by content of respondent's website
In a recent decision under the UDRP before WIPO, a panel has refused to transfer the disputed domain name ‘queensland-freemasons.com’, finding that the respondent was making a legitimate non-commercial use of the domain name.
The complainant was the United Grand Lodge of Queensland, Australia, an unincorporated association of approximately 230 Freemasons lodges and 6,000 members in the state of Queensland. The complainant was associated with the secular fraternal society of the International Order of Free and Accepted Masons (commonly known as the Freemasons), dedicated to self-improvement, community initiatives and charitable causes. The complainant was the owner of two Australian registrations for figurative trademarks bearing the masonic set-square compass image, one bearing the words ‘Queensland Freemasons’ (registered on 2 May 1996), and the other bearing the words ‘Freemasons Queensland’ (registered on 24 November 2008). The complainant also asserted common law trademark rights in QUEENSLAND FREEMASONS and FREEMASONS QUEENSLAND, having used the above in advertising materials in the 1990s.
The respondent had registered the disputed domain name on 9 June 2017 using a privacy service. The complainant had identified the respondent as Mr A Halton, but the registrar revealed the underlying registrant to be "Alfred Warburton" with a listed address in Manchester, United Kingdom. The respondent claimed to be an active member of several Freemasons organisations around the world, and stated that he lived part of the year in Queensland, Australia. The disputed domain name resolved to a website with the title "Queensland Freemasons Interest Group - Because Freemasons Queensland No Longer Represents Queensland Freemasons". The respondent's website posted critical messages about the complainant, focusing on statements made by the complainant's leadership, its handling of funds and its management of membership affairs. The respondent's website contained no commercial advertising.
The complainant asserted that it had, in April 2018, engaged in proceedings for defamation and breach of contract in the Supreme Court of Queensland, against Halton. Based on the documents provided, the panel was unable to conclude whether there were any pending judicial proceedings in which the disputed domain name remained in issue, and noted that Halton was not a party to the UDRP dispute. Therefore, the panel considered it appropriate to proceed to issue a decision.
To be successful under the UDRP, a complainant must satisfy the requirements of Paragraph 4(a) of the UDRP, namely that:
- the disputed domain name 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 disputed domain name; and
- the disputed domain name was registered and is being used in bad faith.
Under Paragraph 4(a)(i) of the UDRP, the panel considered the textual elements of the complainant's figurative trademarks, which were ‘Queensland Freemasons’ and ‘Freemasons Queensland’, respectively. Disregarding the generic top-level domain ‘.com’, and noting that the disputed domain name reproduced the textual elements of the complainant's figurative trademarks in their entirety, save for the addition of a hyphen, the panel found the disputed domain name to be confusingly similar to the complainant's registered trademarks, and that the first element of the UDRP had been satisfied.
Under Paragraph 4(a)(ii) of the UDRP, the panel considered whether the respondent's website, which was ostensibly a criticism or ‘gripe’ site directed at the management of the complainant's organisation, amounted to a legitimate non-commercial or fair use of the disputed domain name within the meaning of Paragraph 4(c)(iii). The panel noted that use of a domain name will not normally be considered "fair" if it falsely suggests affiliation with the trademark owner, noting that domain names that are identical to a complainant's trademark carry a high risk of implied affiliation. The complainant argued that the disputed domain name was identical to the textual elements of its QUEENSLAND FREEMASONS figurative trademark, and that there was an inherent risk of "initial interest confusion". However, the panel noted that the figurative elements of the trademark were a substantial part of the mark. The panel further noted that the complainant did not appear to have been using that mark since 2001, it was not published on the complainant's website, and did not resemble the domain name used by the complainant in connection with its website. The panel further noted that the complainant's trading name was listed as "Freemasons Queensland", and not "Queensland Freemasons", finding that teh record did not support a claim of common law rights in the QUEENSLAND FREEMASONS word mark.
The panel went on to note that it was clear from the content of the respondent's website that no reasonable internet user visiting the website would associate it with the complainant. Furthermore, there was no commercial advertising or activity on the respondent's website. In the panel's view, the use of the disputed domain name did not amount to "tarnishment", which is typically characterised by the association of a mark with unwholesome concepts such as drugs, violence or sexual activity; rather, the respondent's website served to protest actions of the complainant's leadership, including the employment or appointment to positions of responsibility of individuals who allegedly have a criminal history. The panel went on to note that it was not within the scope of the UDRP for the panel to determine whether the content on the respondent's website was accurate or defamatory.
In the panel's concluding statements under the second element, it summarised that the respondent was making a legitimate non-commercial fair use of a string that was not identical to any word mark used by the complainant, and that the respondent's use of the disputed domain name was not aimed at commercial gain or tarnishment. Accordingly, the panel found that the respondent had a legitimate interest in the disputed domain name, and that the complaint failed under the second element.
In the panel's brief analysis under Paragraph 4(a)(iii) of the UDRP, it stated that it was not in a position to make a definitive ruling on any allegations of defamation, noting that many UDRP panels have recognised that, under appropriate circumstances, respondents may be making a fair, nominative use of a domain name including, or similar to, a trademark for a genuine criticism website and, in the absence of other indicia of bad faith, such use was not in bad faith for the purposes of the UDRP. The panel found thatany impression of association with the complainant was offset by the content of the respondent's website, which made it clear to internet users that the respondent's website was not operated by the complainant. Accordingly, the panel found that the third element of the UDRP had not been established.
Notwithstanding the above findings, the panel considered that the issues of relying on the textual components of figurative marks, establishing common law trademark rights, and balancing fair use against trademark claims in the context of a criticism website were complex and fact-bound. Accordingly, the panel declined to enter a finding that the complainant had engaged in reverse domain name hijacking.
Had the complainant been able to adduce evidence of word mark rights in QUEENSLAND FREEMASONS, prior decisions tend to indicate that the complaint would have prevailed on the basis that the right to criticise does not necessarily extend to the right to register a domain name identical to a complainant's trademark, as such domain names create an impermissible risk of association with the complainant's trademark. In the present case, the panel's carefully-considered approach focuses on the evidence adduced by the complainant of there being an actual risk of confusion with the complainant's mark, noting that the textual elements of the complainant's figurative trademark were not the form on which the complainant principally relied to identify itself with the public, offsetting the risk of association between the disputed domain name and the complainant.
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