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Campaigns vs Trademarks – Choosing your web address wisely

A guide to domain name disputes

1. Introduction
2. Guide to chosing a domain name
3. WIPO - rules of engagement
4. Conclusion
5. The UK situation
6. Disclaimer

Introduction

Any campaign against a company will have to mention its name or one of its products. This seems an obvious point to make, but what is often forgotten is that the name of the company can also be ‘owned’ by them as a trademark. Nominally this is to stop other companies from masquerading as the business in question, but it also has implications for activism.

 

However, many countries allow for fair use. That is, it is accepted that you have to be able to name the company in order to protesting against them. The main caveat is that you are not allowed to use this to primarily make money out of them or use it to defame the company in some way.

 

When it comes to the Internet, the rules are slightly different and this is where problems can arise. These days it is natural when doing a campaign against a company to set up a website criticising them. Often the address of the website contains the name of the target, and if that name is a trademark then you need to worry if you are infringing their trademark.

 

There is an important distinction to make here. There is the website itself, which contains all your material. It is hosted on an ISP somewhere, say for argument sake it is on our own host’s website, at www.redblackandgreen.net/megacorpsucks. For people to find that website they need to know it’s address. The address is not the same of the website. To promote your campaign you purchase the web address megacorpsucks.net and have it set up so that when people type http://www.megacorpsucks.net into their browser they immediately get taken to your website at www.redblackandgreen.net/megacorpsucks.

 

The final technical point is that www.megacorpsucks.net is the website address; while megacorpsucks.net is the domain name. It is the domain name that you actually purchase and control.

 

This may seem a bit pointless and technical, but it is important if you are going to make enemies of MegaCorp. MegaCorp finds out about your website and as a result make a decision to try and remove it. It can do two things:

 

  1. Approach the host of the website (in our example RedBlackAndGreen.net) and demand that they take it down. If this happens, this does not mean you lose control of the website itself (in our example www.redblackandgreen.net/megacorpsucks). What you can do is move the website to another host and redirect www.megacorpsucks.net to point at that instead.

 

  1. People know to look at www.megacorpsucks.com and not www.redblackandgreen.net/megacorpsucks, so losing control of the domain name ‘megacorpsucks.com’ means that people do not know where to find you any more. Thus, as a tactic MegaCorp may attempt to seize control of the domain megacorps.com from you. It is this particular issue we focus on in this article.

 

It is the latter situation we will focus on in this article. Firstly we provide a guide to protecting your domain name from potential pit falls.

 

However, this may not stop complaints being put in, so in the third section we provide an introduction to the ‘rules of engagement’ discussing the criteria you can defend your domain name with.

 

Guide to chosing your domain name

Losing control of your domain name can hurt your campaign, especially if you have put a lot of work into publicising it or it is on all your merchandize. Hence, it is important that you do not put your campaign in a position it can lose its domain name.

 

Here we provide a series of tips to help you protect your ownership of a domain name. We cannot guarantee that the target of your campaign will fail in its attempt to take control of the domain name from you; however, in order to do that they have to jump through several hoops. These tips will make it much harder for them to succeed.

Domain Name choices

If you are incorporating a trademarked word into your web address it can be broken down into three sections:

 

trademark + modifier + generic Top Level Domain (.gTLD).

 

In the case of megacorpsucks.com this is

‘megacorp’     =       trademark

‘sucks’         =        modifier

‘.com’            =          gTLD

‘.fr’, ‘.co.uk’ =         ccTLD

i)               Chose a domain name with a gTLD from the three big ones:

.com, .org, or .net

to allow you to take advantage of the US free speech laws and regulations. At the country specific level you can have instead of a gTLD, a ‘ccTLD’ such as .co.uk, .org.uk, .for the UK, or .fr for France, etc. These have different rulings that make them less attractive when it comes to protecting your ownership of the domain name, as it is harder to make use of US freedom of expression rules to guide decisions in disputes over ownership.

 

We assume in much of the following that you have a domain name with a gTLD of the form .com, .net or .org. If you have a domain name ending in .uk we have a separate set of notes at the end.

 

ii)             It is preferable to register the website through a US based registrar, eg www.tucows.com or www.networksolutions.com. Between this and using one of the above three gTLDs, it helps ensure that the dispute is resolved under guidance from a US bias.

 

iii)            Choose a domain name which make it clear that you are not directly connected with the target company or its trademarked words:

 

a.     www.megacorpsucks.net is clearly not connected directly with MegaCorp’s own website at www.megacorps.com. Domain names with modifiers with clear negative connotations, such as ‘sucks’ and ‘stop’, have a good history of being found in favour of the campaigners when challenged.

 

b.     www.megacorpcampaign.com is more ambivalent.

 

Modifiers such as ‘campaign’ and ‘about’ exist in a grey area. It is considered that for the general public, unaware of any campaign against the target company, that simply looking at a domain name of this form does not make it clear that the website is not directly connected with the target company.

 

In these cases other factors are considered when challenges over ownership are taken into account, making more work for you to justify continued ownership. However, there is a strong chance that it will be lost to MegaCorp unless there are good mitigating factors such as discussed below.

 

c.     megacorp.org.uk or megacorpation.com or are forms which use the trademark alone, or variations on it which the general public are unlikely to be able to distinguish from the actual company.

 

The chances are that unless you have a very strong case for using a word of this form or their trademarked name is weak in the sense it is very generic, you will lose this battle. The powers that be see this as ‘cybersquatting’ and frown heavily on it.

 

In the case of ‘MegaCorp’, the trademark is obvious. Less obvious but one that falls under this situation is where the acronym of your group happens to spell out someone else’s trademark. In this case you are going to have to have a strong case to keep it. Not impossible but you may be making work for yourself.

 

d.     Using the initials of the campaign as the basis of you domain name is another good tactic worth noting – though see c) for potential conflicts with other peoples trademarks. For example Stop Huntingdon Animal Cruelty, which campaigns against Huntingdon Life Sciences have a website at www.shac.net, the domain name of which makes no clear reference to the fact that it is to do with Huntingdon, though the actual website is clearly campaigning against it. An advantage to this style is that it can be just as memorable, especially if the initials can be vocalised.

 

e.     Use an acronym of the target by which it is clear who is being referred to, but is not a trademark they use. For example, Huntingdon Life Sciences have a trademark on Huntingdon, but not the acronym HLS. Hence, websites of the form “HLSCustomers.com” are unlikely to be open to challenge by Huntingdon Life Sciences, even though it will be clear to campaigners just whose customers are being referred to.

Other Tips

 

iv)            Meta-tags

These are identifiers put in the code used to generate the website. They are not visible to the average browser, but can be used by search engines both to rank the website and to provide a description of it. Including of trademarked words in particular combinations may give ammunition to your opponent. Hence, it helps to be explicit.

 

For example, in the Covance case (see below), the meta-tags were changed to

"The Covance Campaign - (not part of Covance Inc.)",

which helped prevent confusion that covancecampaign.com might actually be a website controlled by Covance themselves.

 

Using a trademark name or word in the meta tags should be done in a manner which gives the correct context and not look like an attempt to confuse search engines and other users into believing that the website may be run or endorsed by the company you are complaining about. This does not mean that you should avoid using the trademark names/words, but that you should consider how it is done.

 

v)              Commerce

If you have chosen a domain name which utilises someone else’s trademark name or word and the website you design to go with it is dominated by commercial interests this may go against you. For example, if selling T-shirts with slogans criticising MegaCorp is the main function of your website then this will be a black mark which could tip the adjudicator’s judgement against you.

 

This does not mean that a campaign cannot sell merchandise from its website; rather it should be clear that it is not the primarily function and or heavily pushed on the website.

 

This ties in with the notion of ‘cybersquatting’ where you are using the commercial value of someone else’s trademark to benefit yourself financially. It is generally applied to people who purchase domain names based on other peoples trademarks in an attempt to divert traffic to their website, but the applications are wider than this.

 

vi)            Defamation

It is one thing to criticise a company; it is another to defame it. In this case, the company can legitimately argue that you are tarnishing their trademark and thus affecting them financially, etc. This is a major no.

 

In most cases this will not actually apply to the domain name as this sort of issue is related to the contents of the website. However, if your domain name is going to include a trademark name or word then you it is a legitimate reason for the target company to try claiming the domain name. They might not succeed, but adjudicators are very likely to take it into account.

 

vii)           Disclaimers

If there is any potential confusion that the website might be run by or endorsed by the trademark owner, then stick up prominent disclaimers to state that this is not the case. It does you no harm, and could stand you in good stead should a dispute arise.

 

Much of this is based on the WIPO Domain Name Decision D2004-0206 where Covance Inc attempted to seize control of it’s opposition’s website address at covancecampaign.com. This decision covered a set of important grey areas in the regulations allowing us to understand better the rules of engagement and of the pitfalls facing campaigns.

 

This decision can be found at http://arbiter.wipo.int/domains/decisions/html/2004/d2004-0206.html. We also reference the case of NiemanCarcass.com at http://www.arb-forum.com/domains/decisions/243503.htm.

 

Another scenario that can be considered is when a trademark is not registered in a particular country. For example, say MegaCorp does not actually control the trademark ‘megacorp’ in the UK. In this case, the there is a possibility that you will get away with setting up a UK domain name of the form ‘megacorp.org.uk’ or ‘megacorp.co.uk’ if those domain names are purchased from a UK based registrar. The reason is that according to WIPO rules, MegaCorp has to prove it has a right to the domain name in the particular jurisdiction. However this is no guarantee that you will win the case and you are best avoiding this situation in the first place; in particular as the chances are you will be called on to prove that you have a right to use the trademark in a give juridiction as well, something a campaign group may struggle with.

WIPO – rules of engagement

The WIPO (World Intellectual Property Organisation – www.wipo.org) is the organisation appointed (by ICANN – www.icann.org) to oversee issues surrounding domain names. It is based in Geneva though it deals with situations on an international level. Generally, it will be the organisation approached if you have a domain name ending in .com, .net or .org. If you have a domain name ending in .uk then you will be referred to Nominet (www.nic.uk) for resolution of disputed domain names. See below for more information.

 

As part of this service, it has created the WIPO Arbitration and Mediation Center (http://arbiter.wipo.org/center/) to deal with disputes over the ownership of domain names when for whatever reason there arises rival claims to the same domain name.

 

There are three sets of WIPO instructions relating to the Uniform Domain Name Dispute Resolution to read:

a.     The Uniform Domain Name Dispute Resolution Policy (the "Policy"):

http://www.icann.org/udrp/udrp-policy-24oct99.htm

b.    The Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"):

http://www.icann.org/udrp/udrp-rules-24oct99.htm

c.     The Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). Find them at: http://arbiter.wipo.int/domains/rules/supplemental/index.html

 

A general link for all these and other information is at http://arbiter.wipo.int/domains/rules/.

 

These are pretty straightforward and describe the rules and procedures both parties (domain name owner and the others claiming rights over it) need to follow. They are relatively easy to work through. A ‘model response’ is available at http://arbiter.wipo.int/domains/respondent/index.html. So that you can see how easy it is to follow the WIPO guidelines in the case a dispute arises, we also suggest you look at the response created by the Covance Campaign, also available in the WIPO archives, or by email from the Covance Campaign on info@covancecampaign.com.

 

In these and in what follows here, the person or organisation making the claim on the domain name is referred to as the “Complainant”. The original domain name owner is referred to as the “Respondent”. Though the terms are somewhat unwieldy, we follow WIPO terminology for practical purposes.

 

Trickier and more significant is putting together your actual defence. What the WIPO considers a valid defence is laid out in paragraph 4(a) of the Policy. It gives three criteria which the claimant must satisfy in order to have ownership of the website transferred to them. All three criteria must hold for the claimant must win, though it is not necessary for all the individual tests and sub-clauses under each of the three criteria to be upheld.

 

In what follows we have highlighted these three criteria in bold and italic; and relevant sub-clauses and tests in italics for ease of reading. Under each one we have outlined our understanding of how each one relates to disputes where campaigns are involved and possible defences based on what the arbitrators of the WIPO have decided in the past.

 

(i)         The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights .

The onus is on the Complainant here, and includes a sub-clause:

 

a.     The Complainant must prove that they have a right to the trademark.

 

Our reading of the judgements is that the WIPO is not particularly concerned about where the trademark is measured, but takes into account the nature of the Complainant and its business interests as a whole. This means that, say, the fact the Respondent is based in a country where the Complainant has no interests such as a registered trademark or service mark, would not necessarily form a significant form of defence.

 

It takes into account the global nature of the Internet, and looks at the damage that can be inflicted on the trademark on a global level.

 

This is not a cut and dried issue, and different national organisations, informed by their own country’s legal positions, as opposed to following the US and the WIPO, may actually take differing views. One would need to check previous decisions by the national bodies on a country-by-country basis.

 

On the whole this sub-clause is more for issues over trademarks where commerce or reputation is involved, as opposed to campaigning.

 

Regarding the issue of whether a domain name is identical or confusingly similar to a trademark, we have for the most part discussed this in the tips on choosing a domain name for your campaign that includes the trademark concerned (see above). Basically, if there is any chance of what is referred to as ‘initial confusion’ in the domain name, then this point is unlikely to be upheld in favour of the Respondent.

 

‘Initial confusion’ is considered to arise if there is any room for an ordinary Internet user believing from the domain name that the website associated with it could possibly be run or endorsed in some fashion by the trademark holder. The actual content of the website, including use of meta tags and disclaimers is not considered by the arbitrators as being relevant when deciding to uphold this particular criterion – all that matters is the prima facie impression presented by the disputed domain name.

 

Interestingly enough, in say the Huntingdon Life Sciences situation, who are often referred to by campaigners by the shorthand term HLS, Huntingdon would have problems trying to have this clause upheld, in cases such as ‘HLSinside.com” or “HLScustomers.com” as HLS does not appear to have ownership of the acronym ‘HLS’.

 

(ii)        The Respondent has no rights or legitimate interests in the disputed domain name.

From the Policy paragraph 4(c), the Respondent demonstrates their rights and/or legitimate interests to ownership of the domain name by proving, one or more of the following circumstances:

 

a.   Before any notice to the Respondent of the dispute, the Respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.

What this means is that the campaign website has to be genuine. This clause was to stop people registering websites with other people’s trademarks so as to try and get money out of the trademark owner, that is ‘cybersquatting’.

 

The Respondent will fail if the arbitrators believe there was no genuine desire to use the domain name for any business or campaign purpose other than to get money out of the Complainant.

 

The phrase ‘before any notice to the Respondent of the dispute’ means that changing the nature of the website after the Complainant has put in their claim will not cut any ice here.

 

For most genuine campaigns this clause will not be relevant.

 

b.    The Respondent (as an individual, business, or other organisation) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights.

What this is saying is that the Respondent can argue their case on the grounds that they do have some prior claim to the use of the trademark word even though they may have no direct legal right to it. It takes into account that the Complainant who owns the trademark may not have global, across the board, rights to use that word, and that there may exist a right at a given national level for the Respondent to make use of the trademarked word.

 

A good example of this is the dispute between the World Wrestling Federation and the World Wide Fund for Nature, both who used “WWF” as a trademark in differing arena.

 

Again, this is not a clause with great relevance to campaigns and we will not look at it further here. Saying that, there is a potential argument here that if the Complainant has not attempted to stop the campaign from using their trademark in their campaign name, then it begs the question of why they are now focusing on the domain name of the campaign website; in other words, by not taking other action they are implying that the use of the trademark by the campaign could be legitimate. We are not aware of a WIPO ruling applicable here and suspect that such an argument would be very context dependent.

 

c.   Respondent is making a legitimate non-commercial 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.

From the point of view of campaigning groups, this is probably the most important clause relating to this criterion, especially where the disputed domain name is considered to be vague enough to cause confusion as laid out in the first criteria above. The onus is really on the Respondent, ie. the domain name owner, that they have a legitimate right to the domain name. Saying that, the WIPO policy is open to the right to protest and do take it into consideration.

 

There are two points to test under this clause:

 

I. The Respondent is making a legitimate non-commercial or fair use of the disputed domain name?

 

(Note: this part of the discussion is long as it depends on how the disputed domain name is constructed. Much of it can be skipped once you identify how the disputed domain name would be classified by WIPO arbitrators.)

 

At the time of writing, it appears that the policy of the WIPO’s arbitrators is to accept that if the website which the disputed domain name points to has the purpose of ‘commenting on’ or ‘complaining against’ the owner of the trademark then this is a legitimate, non-commercial use of the domain name.

 

This is important as it recognizes that campaign websites and associated domain names have a legitimate use of the trademarked word, PROVIDED the website is being used for campaigning/criticizing purposes.

 

The onus is still on the Respondent, that is the domain name owner, to show that the domain name is being used in this fashion, though simply looking at the campaign website should be for the most part be sufficient. Where it may not be sufficient is when there is a degree of artistic merit used to create subtle criticism of the trademark owner.

 

The proviso is that it has to be obvious from the domain name that it could in no way be considered as being run by or endorsed by the trademark owner. The domain name has to be explicit. Examples are “StopCovance.com,” “BoycottCovance.com” and “CovanceSucks.com”.

 

HOWEVER , where the disputed domain name is considered to be the trademark or a word which is ‘confusingly similar’ or the trademark plus a ‘confusing’ modifier (see above under ‘tips for domain name choices’ for explanation of these) then the situation is different. In these situations the arbitrators in the Covance dispute have the following to say:

“The consensus approach in cases where a criticism site is based outside the United States appears to be that a Respondent has no right to use a domain name which is identical or confusingly similar to a Complainant's trade mark for the purposes of lawful criticism of the Complainant. However where a criticism site is based in the United States, or where a case is decided by US-based panelists, a number of panels have held that the Respondents use of an identical or confusingly similar trade mark as its domain name may give rise to a legitimate interest provided that there are no indicia of bad faith”

                                   

                                    Which is later followed by

“Nowhere is it expressly anticipated by the Policy that this paragraph may not operate if the domain name at issue is found to be identical or confusingly similar to the Complainant's trademark. However where the relevant criticism site is not based in the United States, the effect, as noted by Mr. Bernstein, of following the consensus Panel view is that once a Panel has found a domain name to be identical or confusingly similar to the Complainant's trade mark the domain name necessarily cannot qualify as being used for "legitimate" or "fair use" purposes. No matter that the Respondent's website may be truly a criticism site which in no way uses the trade mark in a trademark sense, or seeks to divert custom from, or tarnish the Complainant.”

(Referencing David H. Bernstein in Howard Jarvis Taxpayers Association v. Paul McCauley WIPO Case No. D2004-0014.)

                                   

Thus, in general it is advantageous to purchase the website from a US based register, and try and get one where the Top Level Domain (TLD) is one of .com, .org. or .net in order to take maximum advantage of US freedom of expression laws.

 

In general however, what these comments boil down to is the issue of ‘initial confusion’ presented in the disputed domain name, whether through identical use of a trademark or of a confusing modifier, becomes the deciding factor (regardless of what is written on the associated website).

 

If there are grounds to believe that there is confusion then there is a good chance the original domain name owner will fail this test. Part of the reasoning for this is that it can be argued that the Respondent could have chosen a better domain name to start with.

 

On the other hand, the Covance case made a judgment about the nature of this confusion that is significant for campaigning groups, thus putting a limit on the applicability of the earlier judgements.

 

According to these arbitrators, if the modifier has a ‘negative connotation’ then the confusion will be at ‘the lower end of the spectrum’, and it was the opinion of the panel in this case that this factor ameliorated the confusion as it means people are less likely to assume the website was associated with the trademark owner. In this case they argue that the Respondent does have a legitimate interest and therefore paragraph 4(c) (iii) of the Policy, should be found in their favour. If the domain name owner finds them in this position, it would be advantageous for them to argue just why the modifier should be considered as having a negative connotation.

 

Where the modifier is in the middle of the ‘spectrum’, and can be considered neutral insofar as it has neither positive or negative connotations, then this ruling says that under paragraph 4(c) (iii) of the Policy, then the Respondent does not have a legitimate interest in the disputed domain name, as they have not attempted to ameliorate the initial confusion – the emphasis here is on the initial part, as transmitted by the domain name itself as opposed to the subsequent nature & content of the website. A neutral modifier is would be something like ‘about’, eg ‘aboutmegacorp.com’.

 

Innominate modifiers

Finally, in the case of covancecampaign.com, the arbitrators speak of “innominate” modifiers, where the modifier has neither neutral or negative connotations but serves to ‘distinguish’ the domain name from the trademark belonging to the Complainant and perhaps their associated website.

 

At this point the consensus among the arbitrators would appear to be that there would still be ‘initial confusion’ and thus the Respondent should lose on this point – regardless as to the nature of the associated website.

 

On the other hand, the arbitrators in the dispute over CovanceCampaign.com took into account the manner in which the ‘initial confusion’ would arise. It was considered that the most potential confusion would arise at the search engine stage, when typing in Covance would list the Covance website at covance.com and covancecampaign.com.

 

In this case, the correct use of meta-tags and content by the website by the Respondent at CovanceCampaign.com meant that the description associated with the website made it clear that CovanceCampaign.com was not connected with Covance, or was in any way run or endorsed by Covance, and indeed was ‘concerned with criticism’ of Covance.

 

Backed up with prominent disclaimers on CovanceCampaign.com once the link was clicked through, the arbitrators decided that the potential for confusion in this situation was reduced through the actions taken by the Respondent, and therefore they could actually rule in favour of the Respondent on this clause, despite the domain name being ‘innominate’.

 

Hence, in a case where ‘innominate’ modifiers are likely to be a consideration, the Respondents should include in their defence evidence of how the ‘initial confusion’ would arise – that is how the average person would actually discover their website; this is going to be for the most part through search engines so evidence of how the website is listed in search engines becomes important. This is where meta-tags and disclaimers come in, though they should be in place before the complaint goes in. The CovanceCampaign.com ruling should also be cited.

 

To summarise, a disputed domain name constructed from a trademark word and an innominate modifier has a chance of remaining with the original owner if they have taken appropriate steps to reduce the initial confusion so that anyone reaching the site will not mistake it for one run or endorsed by the trademark owner.

 

II.         Is the Respondent’s intention to misleadingly divert consumers or to tarnish the trademark?

      ·Misleadingly Diverting Consumers

From a campaigning point of view, this is going to be challenged on the grounds that they are selling merchandize or soliciting donations through the website and thus seeking some commercial gain. In all likelihood, it will only become an issue if the domain name contains a trademark word, so that the trademark owner can say the trademark is being used in a commercial fashion.

 

As long as

                                                      i.     this is secondary to the actual purpose of the website,

                                                      ii.     there are prominent disclaimers indicating that the website is not actually connected with the trademark owner,

                                                      iii.     and the disputed domain name itself is not ‘initially confusing’

then the Complainant is unlikely to prevail on this issue as you are not actually trying to take customers away from them. That is, you are not abusing their trademark by offering similar services as the trademark owner.

 

· Tarnishing Trademark

To tarnish a trademark, the website associated with the disputed domain name has to be linking that trademark to

“unrelated pornographic, violent or drug-related images or information”

- see the ruling in Britannia Building Society v. Britannia Fraud Prevention (WIPO Case No. D2001-0505)

 

For most campaign websites this is not going to be an issue.

 

(iii)      The disputed domain name was registered and is being used in bad faith.

According to the WIPO Policy, paragraph 4 (b), ‘bad faith’ use of the domain name means that there is evidence of one of the following four situations being true:

 

(i)    circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name;

 

(ii)    retered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct;

 

(iii)     you have registered the domain name primarily for the purpose of disrupting the business of a competitor;

 

(iv)    by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

 

For campaigns defending themselves against claims under these clauses, the Respondents should show that they are not competitors of the Complainant in any way, so as not to be attempting to user actual or potential customers of the Complainant away from the Complainant in order to acquire their business. Genuine campaign websites clearly do not fall into this category.

 

Paragraph 4 (b) (iv) (given above) of the Policy may be cited by Complainants where the campaign website is selling campaign related merchandise. However, this paragraph depends on there being confusion between the disputed domain name and that of the Complainant’s trademark. If this does not exist then it is unlikely that this clause will be found against the Respondent, as this clause is focused on situations where the trademark is being deliberately abused through confusion for commercial gain. A protest site will not be deliberately confusing and will not be seeking commercial gain as it’s primary function, though in a dispute you will have to show why this is the case.

 

On domain names and the WIPO Policy, we leave you with this final comment from the arbitrators in the CovanceCampaign.com case:

 

“ A genuine criticism site, undertaken by its proprietors with no intent other than to protest, ridicule and mock its targets, does not fall astray of the dictates of the Policy, regardless of the outrageousness of the allegations it contains or the vigorousness with which they are made.

This Panel has previously remarked that "[t]he `legitimate interest' and `bad faith' factors should adequately insulate true protest sites from vulnerability under the Policy.”

In saying this, it cites the decisions made in Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.

 

Defamation, threats and other issues

This article has focused almost entirely on domain names themselves, and only occasionally touched on the actual websites except where website content illuminates issues relevant to the domain name.

 

That you win control of a domain name does not absolve you from any other issues arising out of the content of the website itself. The WIPO is simply not concerned with them. The content of websites and the legal issues surrounding them is a legal minefield that has not been fully resolved, partly because there are many conflicts between national laws and the global nature of the Internet.

 

Some disputes try to point out differences between .com, .org, etc, and any regional variations when they exist (eg .co.uk and .org.uk), saying that while corporations may have a right to domain names ending in .com, the same does not apply to .org or .net. The notion that corporations use .com, internet companies use .net and organisations use .org is nominal only and has no real standing. Arguments based on this will not get anywhere.

 

Conclusion

We hope you find this article useful, both in choosing suitable domain names for your campaign sites and the grounds on which you can defend them should a trademark holder decide that your use of their trademark in the domain name gives them a right to it.

 

We recommend that you choose a domain name that avoids trademark issues, though we understand that this may not always be suitable or possible. If you do find yourself challenged over use of a trademark in the domain name, follow our tips to help protect yourself against claims of infringement

 

If a claim is filed against you over trademark infringement in a domain name, follow the WIPO process and defend yourself on grounds applicable to it for the best results. There is no point appealing on moral or ethical grounds, as these are not the WIPO’s criteria. However, the WIPO have in place protections for genuine campaign websites that can be used, though they are not explicit in the Policy. We have tried to highlight them and cite some of the relevant rulings to aid you. The case of Covance Inc vs the Covance Campaign over CovanceCampaign.com is a very useful ruling in that it lays out a number of important issues relevant to campaign groups and also clarifies some of the grey areas over when a domain name can be considered to be confusing in itself.

 

It is not necessary to be a lawyer or hire one to defend yourself. Simply read through the rules of engagement and understand how they apply to your domain name. Write concisely and clearly, tailoring your response to suit the arbitrators of the WIPO; avoid spending too much time defending yourself against the claims of the trademark owner, the Complainant, as often they can be irrelevant and distracting from the issues at hand.

 

Finally all decisions may be open to appeal and also judgments made by courts depending on where the appropriate jurisdiction lies, but in most cases disputes are unlikely to go this far unless there is a lot of money at stake.

 

 

The UK Situation

If the domain name end in .uk, then the complaint in the situation where a dispute arises will come to Nominet, the organisation with the responsibility for overseeing domain names ending in .co.uk, .org.uk, .ltd.uk, .me.uk, .plc.uk and .net.uk. Their Dispute Resolution Service website is at http://www.nic.uk/DisputeResolution/ and has full details on what to do if someone is disputing your domain name, and the rules they go by. On the whole it is straightforward so there is no point us repeating it in detail.

 

The case law here is much less than is available for top level domains such as .com, .org or .net. However, our reading of what has been written so far would indicate that the decision making process is not much different from

 

For example in the case of the domain name pharmacia.org.uk, in which a ‘critique’ site of the multinational Pharmacia, control of this domain name was passed to Pharmacia. Our reading of this judgment is that a protest group which registers a .uk domain name almost exclusively using someone elses trademark is going to find it very difficult to keep that domain name should a complaint arise. The reasoning is very similar to that done by the WIPO for top level domain names, and essentially based on the fact that on seeing the domain name there will be a degree of initial confusion as to the ownership of the website.

- see http://www.nic.uk/DisputeResolution/Decisions/PharmaciaAb-v-SteveWagstaff.html

 

The case of ScoobyDoo.co.uk, a fan site, shows the importance of the website not being primarily commercial. Though in the UK, a reading of this judgment indicates a harder line would be taken against any monetary gain being made from the website, as opposed to the WIPO where some latitude is given as long as monetary gain is not the primary purpose of the website. Though under appeal, the owner of ScoobyDoo.co.uk managed to keep the website.

- see http://www.nic.uk/DisputeResolution/Decisions/Hanna-barberaProductionsInc-v-GraemeHay.html

 

As far as we can tell, the difference between this judgment and the one for Pharmacia.org.uk, is that the latter as a protest site was considered an ‘abusive registration’. This implies a much harder line is been taken by Nominet over domain name disputes, with the bias being in favour of the trade mark holder. However, the ScoobyDoo.co.uk case does show that there is an ability to use trademark words in the domain name and in the meta-tags.

 

Saying that, the issue of initial confusion can be dealt with by using a modifier of the form ‘stop’ or ‘sucks’.

 

Another feature of the Nominet approach is there is greater emphasis on “abusive registration”, which allows for the content of the website in question to play a greater role in decision making than is the case with the WIPO rules. For campaign websites this is going to be a matter of how disruptive the website would be on the Complainant’s (trademark owner) business. If there is no or little ‘initial confusion’ to be drawn from the domain name, then the chances are that this will be of any consequence. However, where there does exist initial confusion through the lack (or non-existence of) a distinguishing modifier, then this will kick into play in a strong way.

 

In this situation, it seems to us that Nominet can rule against any campaign where ‘initial confusion’ may arise in the domain name under dispute, regardless of how disruptive the actual website is to the business of the trademark owner. There is not as strong freedom of speech regulations here as exist with top level domains.

- see http://www.nic.uk/DisputeResolution/Decisions/BritishBoardOfFilmCl...ardForFilmCensorship.html

 

In conclusion, we would not encourage campaign groups using .uk domain names consisting only of trademarks; if they are planning using a .uk domain name with a trademark in it, then best practice is to make it very clear that it is not connected with the trademark owner by attaching a strongly distinguishing modifier to the domain name. Whereas pharmacia.org.uk was transfered to Pharmacia in the end, the chances are that stoppharmacia.org.uk would not.

 


DISCLAIMER

This guide is not formal legal advice and should not be treated as such. It is for informational purposes only and consists of our personal interpretation of WIPO and Nominet rulings on disputed domain names as they may relate to campaigning groups. We cannot take any responsibility for any disputes arising out of your choice of domain name or that outcome of any dispute will necessarily be in your favour. It is not possible for us to guarantee that following this advice will mean you will keep your domain name should it become disputed. If you need legal advice in this matter, we suggest you contact a lawyer who specialises in these fields of law.

If we have missed anything or are not particularly clear on any issue please let us know and we will endeavour to improve. If you are a bona fide campaign group facing this sort of challenge we are willing to provide limited help in preparing in preparing your defence, though in some cases we may charge.

This article is for information purposes only; its aim is to let people to know their full rights under UK law. Nothing on these pages is absolute as the law is always changing; if in doubt contact a trusted solicitor for further advice. We do not encourage you to break the law.

Please feel free to copy and distribute these articles to fellow activists, but do not alter the text in any way. These articles are anti-copyright for non-commercial purposes. Please visit www.freebeagles.org for the latest version of our articles and to learn about the freeBEAGLES Ethical Open Document License under which this document is distributed.

If you see any errors, or we have missed any changes to the legal situation please contact us as soon as possible, at info@freebeagles.org, as wrong information can prove costly to people's freedom.

© Copyright freeB.E.A.G.L.E.S.; last updated: June 2004