Paragraph 4(c)(iii) of the Policy recognizes the free speech defense but this is one of the blurry areas of domain name jurisprudence. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition describes two views on criticism. View 1 states that “The right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant's trademark.” View 2 states that “Irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is fair and noncommercial.” Whatever their viewpoint panelists agree that the criticism site must be “genuine”. But, the question is, What is genuine?
Everyone can agree when there is no merit to the defense. In Rolex Watch U.S.A., Inc. v. Spider Webs, Ltd., D2001-0398 (WIPO July 20, 2000) “whilst the disputed domain name resolved to a website which purported to be a site for consumer commentary, this was found to be a sham, devoid of content, which in any event made no reference to the complainant’s watches.” The issue is tighter when there is actual expression of a point of view, except it is not legitimate criticism when the topic is completely unrelated to a complainant or its mark. The speech in PepsiCo, Inc. v. “The Holy See,” D2003-0229 (WIPO June 18, 2003) expressed an anti-abortion position that had nothing to do with Complainant’s food and beverage business. There is a blurry center to the continuum of speech. Expression may be genuine but not its context.
The most recent illustration is Challenger Limited and Challenger Group Holdings Limited v. Domain Privacy Service FBO Registrant / Sean Butler, D2014-0852 (WIPO July 21, 2014). The majority held the content protected over a vigorous dissent. Citing PepsiCo the dissent pointed out that “[l]egitimate criticism on a topic completely unrelated to a complainant or its mark is not bona fide under paragraph 4(a)(ii) of the Policy.” The question is whether the criticism of Challenger’s CEO is too attenuated to be “genuine.” The dissent believed it was not:
In this case the relationship between the Complainants and the criticism is tangential at best – in my opinion too attenuated to allow. As noted there is no indication that the Respondent’s gripe is with the Complainants, or that the Complainants and Mr. Benari are interchangeable, or that one is the alter ego of the other.
The majority explained why the criticism of the CEO was not “too attenuated.” It made sense to recognize the criticism as genuine because
[r]ecent public controversies concerning Australian financial institutions have raised prominently not merely the misconduct of employees and management attempts to cover up that misconduct, but also the issue of the ethical standards of those in management. The Respondent is entitled to draw conclusions from this public debate that his dealing with Mr. Benari raises this very issue, however misguided the Respondent may be. Contrary to the submissions of the Complainants, the Respondent’s website does not merely ventilate his dispute with Mr. Benari but covers the full field of the ethical standards to be met by those who manage financial institutions and the danger to consumers and investors presented when those managers have compromised moral and ethical standards.
To the dissent it is all too plain. There is no blurriness. He sees View 2 as premised on a “principal flaw,” namely that
[i]n an ordinary criticism case, in which the respondent in fact criticizes the complainant, View 2 panels emphasize the non-commercial nature of legitimate criticism and the need to safeguard free expression. That’s not the issue in a Policy proceeding. The Policy does not impair the Respondent’s or any other person’s free speech rights in any way. The UDRP exists solely to determine a party’s entitlement or not to use the complainant’s mark in the domain name at issue – to borrow a metaphor I have used in other cases, to use the complainant’s soapbox without authority as the broadcast medium.
The answer to the question of what is “genuine” turns out to be what two out of three panelists say it is. It depends on whether the majority adheres to View 1 or View 2. If the dissent were the sole Panel in Challenger he would have sided with the Complainant.
