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Does ICANN's UDRP Preserve Free Speech and Allow Room for Criticism?

Niel Harper

The phenomenal growth of the Internet has resulted in a proliferation of domain names. The explosion of '.com' registrations coincided with an increase in domain name disputes, and with it the legal branch of intellectual property devolved into virtual mayhem. ICANN's Uniform Domain-Name Dispute-Resolution Policy (UDRP) was created to allow for trademark holders to challenge domain owners, bring the respondents into binding arbitration, and possibly gain control of the domain name in question. The UDRP was brought into force in October 1999, and it can be said that it has contributed handily to the resolution of domain name disputes. However, deeper investigation into the UDRP paints a different picture.

The fair use of domain names relative to non-commercial negative or critical statements is the subject of many UDRP grievances. Nonetheless, panelists still express divergent views as to whether this constitutes 'fair use'. The evaluation of fair use hangs on the importance a panel attributes to the registrant's right to freedom of expression in each case. In some cases, free speech is not viewed as a legitimate right under the UDRP to register a domain that is 'indistinguishable' from a complainant's trademark for the purpose of criticism, even in the absence of commercial intent. An opposing view is also taken, where it is argued that non-commercial free speech is the justifiable fair use of a domain name to criticize a trademark owner. As such, a major complaint about the UDRP is that it is unconstitutional with respect to the protection of free speech.

'Sucks'-Type Cases

A problematic feature of UDRP cases regarding free speech, and one that is linked to the 'WIPO Overview Majority View' is where 'sucks'-type domain names are deemed as confusingly similar to complainant trademarks.

For example, in Walmart Stores, Inc. v Richard MacLeod, the panel explained that its decision to transfer wal-martsucks.com to the complainant was based on its belief that "the phrase 'identical or confusingly similar' [is] greater than the sum of its parts". The panel also concluded that their process does not examine if "the domain name causes confusion as to source… but instead whether the mark and domain name, when directly compared, have confusing similarity". Taking into account that the respondent admitted that his original intention in registering the name was to sell it for profit, there was a strong argument for ruling in favor of the complainant based on the third element of the UDRP, which refers to a domain being used in bad faith. Moreover, the precedent established in Bally Total Fitness Holding Corp. v Faber should have been considered whereby it was held that the addition of "sucks" prevents any reasonable user from confusing that website with an official website.

In Royal Bank of Scotland Group plc v Pedro Lopez, the domain name <natwestbanksucks.com> was registered by the respondent, along with some other domain names that included the complainant's mark. They all resolved to a site that incorporated criticisms of the complainant. Even though the domain name in question included 'sucks' after the mark, which could serve as a distinguishing factor, the panelist held that the use of a confusingly similar mark could not be determined as a legitimate non-commercial or fair use.

Another example is Chubb Security Australia Pty Ltd v Mr. Shahim Tahmasebi, where the respondent (a former employee of the complainant) utilized the <chubbsux.com> domain name for a website that detailed the complainant's poor employee relations practices. Acknowledging that the parties had no relationship to the U.S., the panelist adhered to other decisions that adopted the majority view and resolved that a 'gripe' site does not automatically endow any right or legitimate interest in a domain name. The panelist ultimately ruled against the respondent, concluding that "it is not in this panel's view legitimate to use the complainant's own trademark as a platform for criticizing the complainant itself."

The cases above represent the majority view, and demonstrate that a large number of panelists have, with minimal analysis, applied the argument of the complainant in Wal-Mart Stores, that appending a 'sucks' or similar term to a trademark is not sufficient to eliminate confusion. One could easily surmise that the confusion test under the UDRP requires only the slightest degree of confusion, somewhat comparable to the 'initial interest confusion' doctrine under U.S. trademark law. A deeper investigation into the UDRP suggests that its original goals were to limit occurrences of classic or unfair competition cybersquatting. It was not developed with the intention to obstruct the use of domain names for reasonable criticisms of trademark owners. As the UDRP does not grant preemptive rights to trademark owners over the use of all variations of their mark in domain names, it can be ascertained that an authentic 'sucks'-type website equates to a legitimate interest on the part of the registrant. As such, the WIPO majority view can be seen as restricting free speech and stifling criticism on the Internet.

Panel and Jurisdictional Issues

Another shortcoming of the UDRP is that it doesn't specify which local laws should apply in domain name disputes. Inconsistencies transpire when panelists apply dissimilar precedents to similar factual themes, apply different local laws to cases with similar issues, or disregard local laws altogether. Furthermore, the panelists that review UDRP cases come from all corners of the globe. Consequently, the panelists, who ostensibly possess expertise is trademark law to start with, are likely to apply the laws that they are familiar with to the cases they are tasked with arbitrating. What this does is introduce jurisdictional bias into the decision-making process. While this issue is pretty much expected, it is exacerbated by the fact that complainants engage in forum shopping to prejudice results in their favor.

Concerns regarding panel and jurisdictional bias in fair use and free speech cases involving U.S. panelists and respondents have thus emerged. For instance, it has been discovered that panelists from the U.S. are more predisposed than those from other nations to rule in favor of respondents in fair use and criticism-related cases. Additionally, it was found that the chances of respondents from the U.S. succeeding in a fair use defense are higher than those originating from other countries. This means that, under the UDRP, respondents from the U.S. enjoy greater speech protections than those from other countries, and that arbitrators from the U.S. are more sympathetic to speech interests than arbitrators from other countries.

There are a few explanations for this. For one, the largest percentage of panelists originates from the U.S., making up 24% of all WIPO panelists. The next four countries with the greatest share of panelists are the UK (10%), Australia (6%), France (5%), and Switzerland (5%). Additionally, U.S. panels are deciding nearly 50% of all fair use cases. Finally, U.S. trademark law allows for uses of marks to criticize or comment on them, either under the fair use defense or a parody defense. Still, as previously mentioned, to the extent that a fair use defense exists in the UDRP rules, it tends to be ignored by panelists. This has the effect of creating a strong bias for trademark holders at the expense of guarantees over freedom of speech.

The Spanish Constitution includes explicit provisions that protect freedom of speech. Section 20 of the Spanish Constitution confers broad protections for the dissemination of information. This section ensures protection for "the right to freely express and spread thoughts, ideas, and opinions through words, in writing, or by any other means of reproduction." In the past, this provision has been used in ruling that a statute that criminalized denials of genocide was unconstitutional. In reaching this decision, the Court argued that freedom of expression was essential to a democratic society. The exercising of the principle of free dissemination of ideas and opinions incorporates freedom to criticize. That freedom applies to all opinions, whether they are considered erroneous or dangerous or challenge the democratic system itself. As previously discussed, UDRP panels are inclined to ignore the rights of domain registrants to criticize trademark holders. Such criticism would likely constitute protected expression under the Spanish Constitutional Court's jurisprudence, and the UDRP would violate the country's free speech protections.

For domain disputes heard in Ireland, country-specific supplemental UDRP rules known as the ieDRP are used. However, the ieDRP prescriptions are quite similar to the UDRP rules. Unfortunately, similar concerns for freedom of speech exist with the ieDRP. Article 40 of the Constitution of Ireland protects the right to free speech and guarantees the "right of the citizens to express freely their convictions and opinions." The UDRP represents an insular view of the right to free speech, highlighted by its liberal interpretation of the term "confusingly similar" and its confined view of the respondent's "rights or legitimate interests in the domain name." As such, it is in diametric opposition to the constitutional free speech protections of Ireland.

As is presently the case in the U.S., Spain, Ireland, and other countries, the UDRP violates constitutional protections over freedom of expression. And they aren't simply technical violations, but actually indicators that the process is void of the fairness that such provisions were devised to safeguard. Moreover, the UDRP creates problems of legitimacy given its foundation in U.S. public law, the fact that it regularly conflicts with domestic law, and the absence of input from other nations.

Free Speech Issues with New gTLDs

With ICANN's new gTLD system, trademark owners are expected to be proactive in either registering new gTLDs similar to their own marks, or at a minimum blocking registrations of such gTLDs by others. While trademark owners possess legitimate rights to protect their valuable commercial brands within the new gTLD space, either of these possibilities — registration or defensive objection to registration — has the potential to impact negatively on free speech. In the new gTLD program, successful applicants may choose to run their gTLD registry as open or closed registries; registrations within a closed registry would be available only to a specific type and a limited number of users.

For example, in early 2015, ICANN's new gTLD Program Committee set a policy that limited registrations in the .doctor name space to strictly 'medical practitioners'. This decision to summarily exclude various lawful users of the word, including persons who are Ph.D's, DBAs, or Juris doctors, is a serious violation of free expression. In what could be viewed as a preventative measure for such occurrences, ICANN's community set out to embed certain protections for freedom of expression in the new gTLD program via core principles in the GNSO's final approved new gTLD policy. Take for instance Principle G in the new policy: "The string evaluation process must not infringe the applicant's freedom of expression rights that are protected under internationally recognized principles of law." Sadly, these provisions were replaced by so-called "Public Interest Commitments", which ran contrary to the clauses that were designed to preserve Internet users' free expression rights.

Another example of free speech violations in new gTLDs is where the American Bible Society (ABS), acting as registry for the .bible domain space, prohibited any content that they deemed unsuitable. In their published Acceptable Use Policy, the following was stated: "Pointing to any content that, as determined in ABS's sole discretion, espouses or promotes a religious, secular or other worldview that is antithetical to New Testament principles, including but not limited to the promotion of a non-Christian religion or set of religious beliefs." This is clearly a form of censorship and suppression of freedom of speech.

But what do these examples have to do with the UDRP and free speech? The uniform adoption of the UDRP by all ICANN-accredited Registrars means that its use and application are geographically widespread. Failure to reform the UDRP and resolve major issues such as the narrow view of the term "confusingly similar", forum shopping, disregard for local laws, and inconsistent use of precedence coupled with the increasing prevalence of closed registries, will lead to greater violations of fair use and free speech in domain disputes.

Conclusion

Given the phenomenal growth of the Internet, and the launch of new gTLDs, domain name disputes will increase in frequency. With this increase, we should expect trademark owners to continue to employ any and all means to protect their marks. However, this unbridled enthusiasm must not be permitted to deny domain registrants of their legitimate rights. In its present manifestation, the UDRP broadly violates the constitutions of the U.S., Spain, Ireland and numerous other countries. By disregarding protections over free speech, the UDRP weakens the fundamental concepts of fairness that these provisions were created to safeguard. A number of changes need to be made to the UDRP to formulate a more balanced framework between trademarks and free speech on the Internet.

One clear option would be to reform the UDRP thereby scaling back trademark infringement rulings, so they are restricted to scenarios where there is authentic consumer confusion as opposed to initial interest confusion. Furthermore, trademark dilution actions should seldom, if at all, be available in cases involving parody and critical commentary. The prevailing opinion should be that such occurrences are non-commercial, fair use and fall under the protections afforded to free speech. Also, the UDRP should be limited to cases of evident cybersquatting and bad-faith and not be extended to circumstances related to cybergripe or parody sites.

Finally, I believe it is imperative that ICANN completes its transition to an international multistakeholder body. This type of governance structure with underlying self-regulating constitutional principles can guarantee that free speech rights are protected while retaining much of the features that have made the UDRP attractive. Such an arrangement would appeal to nations on the legal and policy levels, and to trademark owners and registrants on an individual basis. It would drive policy uniformity, improve the consistency of decisions, legitimize the UDRP process, and increase accuracy in arbitrations. The UDRP would remain as an efficient apparatus for handling cybersquatting, and simultaneously ensure that dispute adjudication is fair and precise.

By Niel Harper, Managing Director. More blog posts from Niel Harper can also be read here.

Related topics: Censorship, Cybersquatting, Domain Names, Law, UDRP

 
   

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Comments

Join the ICANN Working Group that will review the UDRP George Kirikos  –  Jun 05, 2017 8:40 AM PDT

The "Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group" was formed last year to review the UDRP (and other RPMs). I strongly suggest that you join it (it's not too late), in order to have your views fully considered if you're concerned about this issue.

As you can see from the list of members, there's over-representation of TM interests in that working group, so having stakeholders from outside the TM lobby would definitely help to provide balance to the group.

George is right: look to join the ICANN working group Paul Tattersfield  –  Jun 06, 2017 9:45 AM PDT

I've had a cursory look at the three cases you cite. To be fair to the panellists they considered in depth the individual circumstances of each case and came to what seems on the surface at least the right decisions.

There are issues with UDRP that need fixing but I don't believe the cases cited above at least, make the case for it failing to preserve free speech or not allowing room for criticism.

George is right; you should look to join the ICANN working group I'm sure the working group would welcome your input.

The determination of whether or not the Niel Harper  –  Jun 06, 2017 10:13 AM PDT

The determination of whether or not the right decision is/was made is highly subjective. In many UDRP cases, there is recorded dissenting opinions among the panelists on such. However, my position is that one of the reasons that the UDRP is problematic with regards to free speech is because the majority decision of 'identical or confusingly similar' is regularly adopted, and often times with little to no consideration if the registration was actually abusive or used in bad faith. The de facto reasoning is that "Not all Internet users are English speaking or familiar with the use of 'sucks' to indicate a site used for denigration". This is too convenient a catchall and comes across as though panelists are either lazy or siding by default with the Complainant (trademark owner), hence not allowing room for legitimate criticism.

If such a domain name is genuinely registered Paul Tattersfield  –  Jun 06, 2017 12:48 PM PDT

If such a domain name is genuinely registered and used for the purposes of criticism of the brand, the second and third requirements which the Complainant has to establish will not be met.

See:
http://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-1195.html
Which is where I believe the wording you are concerned with originated.

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