Split WIPO panel refuses to transfer 'legal-and-general.com'
A split World Intellectual Property Organization panel has rejected UK firm Legal & General's (L&G) complaint to have the domain name 'legal-and-general.com', which is used to host a complaints website, transferred to it. However, Dawn Osborne, the dissenting panellist, held that the right to free speech should not be confused with a legitimate right to a domain name.
In this case, US resident Zeev Golan registered the domain name and linked it to the Legal & General Complaints Club, inviting internet users to post negative messages about the UK firm. L&G argued that Golan is a disgruntled former L&G employee and that his use of the domain name is not legitimate as it tarnishes L&G's trademark. Golan argued that he has a legitimate right to use the domain name for the complaints site.
A majority of the panel held that the domain name is confusingly similar to L&G's trademark, but that Golan is not using the domain name in a commercial manner. Instead, the website is "maintained as a genuine criticism site" and any initial confusion by internet users that the website is linked to L&G will be dispelled by its content. The majority went on to say that there is no rule in the Uniform Domain Name Dispute Resolution Policy (UDRP) that using another party's exact trademark as a domain name to host a complaints site does not constitute legitimate use of the domain name.
Dawn Osborne, the dissenting panellist, held that Golan's right to free speech should not be confused with a legitimate right to the domain name in question. Golan had no right to register and use L&G's main trademark to conduct his complaints website. Osborne's decision is consistent with the bulk of previous UDRP decisions in which panels have held that if a trademark is registered as a domain name for a protest site, but with no additions such as 'sucks', the registrant is unlikely to win (see eg, Reg Vardy Plc v Wilkinson).
While the majority's decision may cause trademark owners concern, it was based on the application of the UDRP and not UK trademark law. Had the UK Trademarks Act 1994 been applied, the outcome may well have been different.
For a detailed discussion of the treatment of protest sites in UDRP proceedings, see The uncertain status of criticism and tribute sites.
Jeremy Dickerson, DLA, London
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