The UDRP lists three nonexclusive circumstances for rebutting lack of rights or legitimate interests in domain names, which if successful also concludes the issue of abusive registration in respondent's favor. The third circumstance is "you are making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." Noticeably, 1) what is legitimate is expressed in the disjunctive (it is either one or the other); and 2) the "without intent" clause is not "without intent for commercial gain" but "without intent for commercial gain to misleadingly divert consumers." In other words, there can be commercial gain as long as there is no intent "to misleadingly divert consumers." The term "fair use" is generally associated with protected speech; the right to express opinions in the form of commentary or criticism, but nominative fair use which fails under "noncommercial" (because it is definitely not that) qualifies under "fair use."
How panelists construe these very different "fair use" circumstances open a window into the assessment process and of the determining factors for proving or rebutting legitimacy. In both nominative use and protected speech legitimacy rests on answering the "why?" question. Incorporating trademarks is intended to achieve particular and lawful ends which in either instance is beneficial to consumers even if intolerable to owners.
Taking nominative use first.
In Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001) (<okidata parts.com>) (one of the two or three most cited decisions in the UDRP database) the Panel formulated an indigenous version of nominative use for the UDRP that rested on a four-part test. (See an earlier essay on this topic, Fair Use Incorporating Trademarks in Domain Names citing cases from the 2nd, 3rd, and 9th Circuit Court of Appeal). Over time the right has expanded from dealing in owners' products (authorized in the case of Okidata but now including unauthorized resellers, service providers, and distributors) to include what is now also permitted under U.S. law, namely using domain names descriptively for goods or services identifiable to consumers from the trademarks but not in competition with the owner.
While the Respondent in Oki Data passed the test as an authorized dealer of OKIDATA products, the Respondent in Swarovski Aktiengesellschaft v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Steve Hosie, CJ, LLC, D2015-2351 (WIPO March 7, 2016) (<swarovski.jewelry>) did not. The Respondent contended that "(i) the disputed domain name was purchased legally and within the legal fair use laws concerning domain names, and is being used by the Respondent under 'Nominative Fair Use.'" The Respondent continued with a list of other reasons the registration was lawful. However, the three-member Panel in Swarovski was not impressed:
The Respondent's primary contention, putting it at its highest and in its most relevant form, would appear to be that it has rights or legitimate interests in the disputed domain name because the domain name is descriptive of the use to which the Respondent intends to put the domain name. The Respondent's asserted intended use of the disputed domain name is to resolve to a website at which the Respondent will advertise and sell jewelry items that are either made by the Complainant or that are made by the Respondent and which incorporate gemstones and crystals that are made by the Complainant.
But Respondent fails the test because,
[First, the] asserted intended use (resale of the Complainant's jewelry), the Complainant has indicated that the Respondent is not, and will never be, an authorized reseller of jewelry made by the Complainant. . . . In particular, the Respondent's asserted intended use would not satisfy the requirement that the Respondent sell only the trademarked goods (because of the Respondent's second asserted intended use, discussed below).
[Second, the] asserted intended use (sale of the Respondent's jewelry), items made by the Respondent that incorporate gemstones or crystals made by the Complainant could not legitimately be described as "Swarovski jewelry", since SWAROVSKI is the trademark of the Complainant and the items being sold are made by the Respondent not the Complainant.
Respondent fails the "why?" question by admitting it intended to sell its own jewelry thus misleading consumers looking to purchase Complainant's jewelry, which is both a violation under paragraph 4(b)(iv) and a classic example of trademark infringement.
The "why?" question for protected speech is answered by expressing a point of view about the trademark owner or its goods or services in content, language, and voice that however outrageous or intolerable to complainant is nevertheless lawful, unless it crosses some invisible line as it did in Jody Kriss and East River Partners, LLC v. Felix Sater / Larissa Yudina, FA160200 1660728 (Forum March 22, 2016) in which Respondent "threatened" in an email to one of Complainants business associates before Complainant filed its complaint "to defame online a co-plaintiff in [an ongoing] litigation" (Complainant's award, but currently in ACPA litigation).
Unlike nominative use, speech is protected only if a resolving website is free of commercial use; which renders the registration infringing if it does. Also unlike nominative use panelists are split as to what qualifies for protection, whether it applies to website content or extends to the composition of domain names. The split is generally based on engendered views of panelists or citizenship of the parties. While legitimate free speech rights may be considered an international norm its parameters are not universally accepted. As a result, panelists' philosophy and parties' citizenship can make a difference to the outcome of a dispute.
This point is illustrated in Fraternal Order of Moai, Inc v. Tim Glazneraim, FA160700 1686147 (Forum August 30, 2016) (<fraternalorderof moai.com> and ), both U.S. citizens; and White Ribbon Australia v. Whois Privacy Protection Service, Inc / Erin Pizzey, D2016-1234 (WIPO September 5, 2016) (<whiteribbon.org> in which the parties Australian and U.S. citizens. In both cases the domain names are identical to the trademarks. The WIPO Overview describes the two views. View 1 panelists (White Ribbon) limit protection to content speech; not domain name composition. View 2 panelists (Fraternal Order) make no distinction; if website content qualifies for protection then domain names can be either identical or confusingly similar.
The Panel in White Ribbon "acknowledg[ed] that the Respondent has the right to freedom of speech, [but] is of the view that there is a clear distinction between a right to express critical views and freedom of speech, and a right or legitimate interest in respect of a domain name which is identical to a complainant's trademark. The Respondent's right of free speech can be exercised by using a domain name which suggests very clearly to visitors the content and intent of the website thereby obviating any risk of deception."
In Fraternal Order the "Panel [found] that Respondent uses the domains in connection with a legitimate criticism website [therefore] it holds that Respondent has rights or legitimate interests in the disputed domain names." Of course, the Panel cannot mean that criticism is "legitimate" in any objective or absolute sense only that it appears so. Whether commentary/criticism is legitimate or genuine sometimes appears except for suspicious inconsistencies that support the opposite.
Whereas the facts appeared plainly to support Respondent in Fraternal Order; it was plainly the opposite in De Beers Intangibles Limited v. Domain Admin, Whois Privacy Corp., D2016-1465 (WIPO September 14, 2016) (<debeers.feedback>):
In the Panel's view, the decisive consideration relates to the history of the posting of the reviews. The 11 reviews posted on the website do not on their face appear to be fake.
But this is contradicted by the temporal postings of "reviews":
The Complainant says that initially the only "review" that appeared on the website was a comment "Nah mate" dated January 22, 2016. There were other aspects of the website which were noticeably incomplete. The other purportedly "real" reviews appeared on the website only after the Complainant's lawyers sent a letter of demand on March 24, 2016. The Complainant also points out that no further reviews have been posted after April 19. The Complainant also says the uniformly positive nature of the reviews is consistent with and gives an appearance of pretext.
Complainant showed restraint. It collected evidence before it gave notice and collected further evidence after notice and before commencing the proceedings.
Written by Gerald M. Levine, Intellectual Property, Arbitrator/Mediator at Levine Samuel LLP