Stopping criticism site proves taxing for mark owner
In Howard Jarvis Taxpayers Association v McCauley, World Intellectual Property Organization (WIPO) panellist David H Bernstein has refused to order the transfer of ‘hjta.com’ to the complainant - an association that claimed to have common law trademark rights in the acronym HJTA. He held that the complainant had failed to establish that the respondent had no legitimate interest in the domain name because it was being used solely for bona fide, non-commercial criticism.
The Howard Jarvis Taxpayers Association (HJTA), a non-profit corporation offering tax advice, filed a complaint with WIPO following the registration of ‘hjta.com’ by the respondent, Paul McCauley. McCauley was using the domain name to host a website that was highly critical of HJTA's practices and management staff. HJTA maintained that the domain name infringed its common law rights in the acronym HJTA. McCauley responded that he was using the domain name for legitimate criticism of HJTA.
Bernstein first stated that the case posed a fundamental - and somewhat unsettled - question of law under the Uniform Domain Name Dispute Resolution Policy, namely:
“Can a respondent have a legitimate interest in a domain name consisting solely of the complainant's trademark plus a top-level domain if the website is used solely for bona fide, non-commercial criticism?”
Bernstein considered previous decisions and noted that the weight of authority suggested a consensus was emerging that answered the above question in the affirmative, especially in the absence of bad faith. He stated that McCauley’s use of ‘hjta.com’ was for bona fide, non-commercial criticism and therefore he had a legitimate interest in the domain name. He also reasoned that HJTA had failed to establish that McCauley had registered or was using the domain name in bad faith.
Accordingly, Bernstein dismissed the complaint.
Rachel Aaron, Hammonds, London
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