University president fails in UDRP case against criticism site

In Ladner v Wetmore, a three-member National Arbitration Forum (NAF) panel has refused to order the transfer of 'BenLadner.com', used for a criticism site, to Benjamin Ladner - the president of Washington DC-based American University.

Ladner filed his UDRP complaint against Ben Wetmore, a 2003 graduate of American University, after a three-year dispute over Wetmore's operation of a website criticizing Ladner's administration of American University. Ladner asserted that he had used the trademark BENJAMIN LADNER in commerce in connection with educational services, scholastic research and public speaking since at least 1965. Although the "content appearing on the website could arguably enjoy First Amendment [of the US Constitution]
and fair use protection", Ladner claimed that Wetmore derived income and advertising sales from banner ads and other commercial uses, thus removing the website from the protection afforded under the First Amendment.

Wetmore submitted a detailed response, arguing that:

• Ladner had no protectable rights in the BENJAMIN LADNER mark;
  
  
• Wetmore had legitimate interests in the domain name; and
  
  
• he had registered and used the domain name in good faith, not for commercial gain.

Wetmore maintained that he founded the website in December 2001 for political reasons to highlight "chronic problems of customer service, academic quality, micromanagement and faculty and student independence" purportedly caused by Ladner and his administration. The website currently features news, opinion features and other information about American University.

The NAF panel agreed with Wetmore in determining that Ladner had failed to establish all three elements for transfer under the Uniform Domain Name Dispute Resolution Policy (UDRP). It stated that Ladner:

"is a noted educator and scholar who has published and spoken widely. However, this does not mean that he has service mark rights in the BENJAMIN LADNER mark … the mark would only be protectable upon proof of secondary meaning. We are not convinced that … [Ladner] has shown sufficient secondary meaning in his name to warrant protection."

The panel also found that Wetmore's use of the domain name for public criticism of Ladner's administration of American University constituted a bona fide, non-commercial use under the UDRP and the First Amendment. Citing the World Intellectual Property Organization decision of Howard Jarvis Taxpayers Association v McCauley as precedent, the panel held "that in cases involving US parties and/or panellists, a number of panels have ruled that the First Amendment protects trademark top-level domain names when they are used for legitimate criticism sites" (see Stopping criticism site proves taxing for mark owner).

Contrary to previous UDRP cases, the panel stated that "the fact that respondent solicits donations and ads does not make respondent's site commercial in nature". The overall character of the website as a site for criticism and news on American University demonstrated that Wetmore "is merely exercising his free speech rights under the First Amendment".

The decision is a landmark win for the operators of true criticism websites, but it is important to note that Ladner lacked sufficient trademark rights in his name to prevail under the UDRP. The specific facts in this case may not be present in every case involving a criticism site of a public figure or trademark owner.

The panel noted that Ladner may challenge the UDRP decision in federal court. It remains to be seen whether he will drop his battle against the website or whether he will file a challenge under the Anti-cybersquatting Consumer Protection Act in federal court to overturn the UDRP decision.

James L Bikoff and Patrick L Jones, Silverberg Goldman & Bikoff, Washington DC