Nominet panel seizes domain name from Pharmacia critic
The recent decision in Pharmacia AB v Steve Wagstaff indicates that where a domain name is identical to a complainant's trademark and is used for a website that criticizes the complainant, Nominet panellists are likely to order the transfer of the domain name.
The complainant in this case was Pharmacia AB, a Swedish pharmaceutical company which had registered the mark PHARMACIA in several countries, including the United Kingdom. The respondent was UK resident Steve Wagstaff.
Wagstaff registered the domain name 'pharmacia.org.uk' and used it for a website that criticized Pharmacia and its subsidiary, Monsanto. His site linked to the websites of Pharmacia and Monsanto and bore a disclaimer that neither link was "an indication that either related company condones [his] site."
Pharmacia contended that the registration and use of the domain name:
- was abusive because the domain was identical and/or confusingly similar to its well-known trademark;
- took unfair advantage of and was unfairly detrimental to Pharmacia's rights
- was for the primary purpose of disrupting Pharmacia's business because people seeking information about Pharmacia would end up at Wagstaff's website, containing defamatory comments about Pharmacia; and
- was intended to confuse internet users.
Wagstaff argued that he should be free to use the domain name as a criticism site and the content "need not be seen as disruptive unless the complainant is unable to tolerate criticism." He pointed out that (i) Pharmacia had not commenced proceedings for defamation, and (ii) the disclaimer on his site was evidence that there would be no confusion between his site and Pharmacia's.
According to Nominet's Dispute Resolution Service Policy, where (i) the domain name is identical to the name in which the complainant asserts rights, and (ii) the respondent is using the name for the purposes of a tribute or criticism site, the domain name is presumed to be an abusive registration unless the respondent can show that on the balance of probabilities it is not.
The panel held the following:
- Wagstaff had failed to show that the domain name was not an abusive registration, on the grounds that the registration was made primarily to unfairly disrupt Pharmacia's business and the name was being used in a way that confused people or businesses into believing that it was connected with Pharmacia;
- There was disruption because some users looking for the official site of Pharmacia would be brought to Wagstaff's site and once there may be persuaded by the contents to refrain from buying Pharmacia's products; and
- Confusion was likely because the domain name was identical to the complainant's mark and the disclaimer on Wagstaff's site was insufficient to prevent users from concluding that the site and domain name were somehow endorsed as a forum for criticism.
This decision may give an indication of how Nominet panellists will decide similar cases in future.
Matthew Jacob, Willoughby & Partners, London
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