Comments

• smlevy42 09:21 am 04-Sep-2015 Does this holding create a blanket rule against the use of trademarks in domain names? If a respondent cannot claim free speech rights where a domain incorporates a complainant’s trademark, regardless of the other words in the domain and the content of its website, what is left of the section 4(c)(iii) fair use defense? In what fact scenario could this defense be successfully argued? I'm concerned that this decision guts the entirety of the fair use defense as well as years of contrary UDRP precedent by setting out a blanket rule that, if a respondent uses a brand in a domain, it is doomed regardless of the web content or other words in the domain. For example, if one registered the domains philipmorrisprotest.org, ihatephilipmorris.com or even smokingphilipmorris.sucks, and resolved them to non-commercial pages which contain nothing but anti-smoking messages, would the Panel in this case nevertheless find that they violate the UDRP? It also seems odd that the Panel here followed the holding in an earlier case between the same parties (FA 1555882) which involved the domain philipmorrisusa.info. In this prior case it could be argued that the Panel took the "View 1" position of WIPO Overview 2.0 sec. 2.4 that the domain could not qualify for a fair use defense because the text of the domain, itself, does not clearly indicate that it is intended for complaints and other free speech and thus impersonates the brand. However, in the present case, some of the disputed domains quite clearly convey their critical nature. It will be interesting to see if the reasoning of these cases is picked up by other Panels faced with section 4(c)(iii) fair use defenses – especially as the .SUCKS TLD domains roll out. On the other hand, such reasoning may be rejected as an improper chilling of online free speech. A court appeal of this decision by the Respondent would certainly make for some interesting reading.