Domain names, between freedom of expression and distinctive character of trademarks in domain name disputes
Disputes on generic domain names (gTLD, new gTLD) are handled, all together and without overlapping with judicial proceedings, by international arbitration authorities (WIPO, among others) which are called upon to apply a whole set of rules known as Uniform Domain Name Dispute Resolution Policy (UDRP).
The Policy is a compromise among the various stakeholders on the line: on one hand, registrars and registrants, interested in limiting the application scope of the rules only to clear cases of cybersquatting; on the other hand, brand owners more interested in a broad interpretation of the Policy, including more doubtful and controversial case#_ftn1s. The result, as often happens when different interests are at stake, is a text which leaves wide room for interpretation.
Highly discussed, since the entry into force of the Policy (1999), is the issue of domain names composed by third parties’ trademarks and used in connection with freedom of expression.
A first topic that needs to be cleared is whether disputes involving fundamental rights fall under the Policy application scope. In other words, given the current regulatory framework, Panelists could rule on domain name disputes if the registrant uses the domain name exclusively for criticism purposes (so called criticism sites)? This matter has already been discussed in the Policy’s drafting process, then debated in its initial application phase.
Some Panelists believe that the Policy has no “jurisdiction” if principles like freedom of expression are at stake, given that its application should be limited only to those cases where cybersquatting is clear and only when economic and commercial purposes are involved. Policy’s preparatory works are consistent with this approach, as it is stated that the scope of application should be limited to a restricted range of cases in which domain names are registered to exploit commercially and in bad faith third party’s trademarks, while all other cases should be left to courts. Following this approach, domain name disputes that raise non strictly commercial or economic interests (for example, fundamental rights like the freedom of expression), should lead to dismissal pronouncements, with no ruling on the merits, since the matter falls within the ordinary judiciary’s sphere of competence.
However, the overriding trend is to include in the Policy’s scope of application, also disputes involving fundamental rights. In fact, the regulation has no provision which justifies such exclusion. On the contrary, some of its rules seem to admit, even implicitly, that panelists are entitled to decide disputes not involving merely commercial interests. Some of these are the following:
- 4(c)(iii) sets forth a list of non-exhaustive cases in which registrants could claim to have an interest or a right to register the domain name, thus preventing the transfer of the disputed domain name. Domain names used for legitimate non-commercial purposes is one of these cases. Therefore, in order to defend a disputed domain name, it is not sufficient to prove that it is used with no commercial purposes, but also that such use is legitimate. Hence, the Policy seems to consider cases of non-commercial but illegitimate use of domain names, which should not be an obstacle to the transfer of the domain name;
- 4(b) lists several examples of registration and use in bad faith. Well, these cases do not distinguish between a commercial or non-commercial use of the domain name;
- finally, the Policy does not state that the commercial use of a domain name is a requirement to obtain its transfer or cancellation. Instead, paragraph 2 just refers to cases of domain names violating the trademark owner’s rights.
This is the approach followed by the great majority of panelists. Therefore, even though a dispute involves fundamental rights like freedom of expression, this doesn’t mean it shouldn’t undergo the Policy rules. In fact, it is not disputed that internet users could register domain names and use them to criticize brand owners, what is at stake, is to exert such freedom by registering domain names which are identical or similar to trademarks legitimately owned and used by third subjects.
Given that Panelists can theoretically rule on cases involving freedom of expression, the next step is to discuss when such freedom actually overrules brand owners’ interests and when, on the other hand, the latter prevails on the former.
According to the case law, Panelists give particular relevance to the nature of the disputed domain name. In case of identity between domain name and trademark (such as <trademark.com>), Panelists’ approach is that brand owners should prevail upon the freedom of expression. In these cases, the owner of the disputed domain name benefits of increased data traffic exclusively due to the reputation of a third party’s trademark and has nothing to do with the website contents and so to the merits of who is behind it. In other words, Internet users that visit a domain name identical to a trademark (<trademark.com>), expect to find a website directly managed by the trademark owner. However, in case the website is a blog criticizing the brand owner, such legitimate expectation is deceived and this circumstance for many Panelist is sufficient to exclude the applicability of the principle of freedom of expression. This approach draws its inspiration from the initial interest confusion theory (or pre sale confusion), which is the confusion of the protected trademark with a website recalling it with its domain name, when the user first approaches it. Additionally, the domain name’s owner is taking unfair advantage from the number of users visiting his website, trusting to find the brand owner’s official website.
On the contrary, domain names composed by the trademark combined with a descriptive word (such as <odiotrademark>, <trademarkfaschifo.com>, <trademarksucks>), give immediately to the internet user the idea of a website used to criticize or express negative opinions. As a consequence, in these cases, Internet users are aware, since the very beginning, that the domain names do not belong to the trademark owner’s official network and that they are used for criticism purposes. Therefore, pre-sale confusion’s theory falls short, and freedom of expression prevails on trademark owner’s interests.
The nature of the use of the domain name is an additional factor often considered by the Panelists. As mentioned, commercial use is not a necessary condition according to the Policy, but it still is, in practice, an important element to establish whether or not there is fair use. It is clear that, if freedom of criticism is just a pretext to actually make business using a third party’s trademark, then fair use cannot be claimed. Let’s imagine that the domain name links to a criticism website, which has sections where it is possible to purchase goods bearing the trademark or competing with it. Or again, think about a blog reporting several advertising links or pay per click, next to the comments about the brand. Finally, let’s imagine the case of the owner of the domain name (used for criticism purposes) that contacts the brand owner and offers the domain name for sale at a very expensive price. These circumstances have been considered useful to support bad faith use of domain names, thus favoring the brand owner’s position in previous domain name disputes.
Beside these factors, Panelists considered, other elements such as:
(i) multiple domain name registrations. Panelists exclude a fair use finding when the same subject registers many domains, containing a trademark, albeit used to express criticism and negative opinions about the brand owner. Basically, the idea is that registering one or two domain names is enough to create a criticism website; on the contrary, in case multiple domain names are involved, the result is to prevent the brand owner from using his/her own trademark in the corresponding domain, thus damaging his/her commercial activity;
(ii) layout of the website which the domain name redirects to. If it’s extremely similar to the brand owner official website and there’s no disclaimer informing users that the domain name owner has no right upon the protected trademark, then the brand owner has more chances to tip the balance in his/her favour in some controversial cases.
At this point, let’s see how this case law applies to the case of the domain name <trumphotels.org>, registered by an American lawyer and used to post articles and negative comments about internal and external policies carried out by the current US President.
As many people know, Donald Trump beside his political role is also a very successful businessman. His activities also cover the hospitality industry and are obviously protected by IP rights all over the world. In particular, TRUMP has been registered worldwide as a trademark for hotel services. Therefore, <trumphotels.org> is very likely to be an attractive and interesting domain name for the President and his legal team.
The domain name is composed by the protected trademark TRUMP combined with the generic term “HOTELS”, clearly linked to the potential claimant business area. To me, this is an element favouring the trademark owner, since the domain name, as such, does not make it clear to the visitor that it is actually a blog about the President’s activities. On the contrary, an Internet user landing on <trumphotels.org> will reasonably think to visit the brand owner’s official website. Furthermore, other companies linked to the US President own trademarks for “TRUMPHOTELS”, so perfectly identical to the domain at issue.
On the other hand, other elements seem to favour the website owner. Firstly, the website hosts exclusively post and articles about the President’s internal and external policies. There is no evidence of any economical activity or advertising links revealing the aim to commercially exploit the trademark TRUMPHOTELS. In addition, a further research has shown that there are no other domain names composed of the protected trademark registered by the owner of the domain. Another issue to be considered, is that the website shows a clear and visible disclaimer informing all users that the website does not have any right connected to the trademarks TRUMPHOTELS or TRUMP and it only hosts informative and satirical contents.
This case is interesting because it brings in all factors that the case law has considered so far, with reference to the relationship between trademarks and freedom of expression. The nature of the domain name is an element favouring the potential claimant, while the absence of commercial purposes and the presence of a clear and visible disclaimer are evidence supporting the potential defendant. As a consequence, the outcome of this possible dispute is quite uncertain, but I believe chances of success are slightly higher for the New York lawyer. The nationality of the Panelist selected to settle the dispute could be a crucial factor in this case. In fact, the parties involved are both American, so in case of domain name dispute, the Panelist would very likely be American. Under this regard, US legal experts take into strong account the First Amendment to the American Constitution establishing, among others, the principles of freedom of expression and publication. Looking at the previous case law, it appears that many American Panelists have cited the First Amendment in deciding in favour of the domain name’s owner, even if it was identical to the trademark. In light of this, I consider unlikely that Mr. Donald Trump could succeed in a domain name dispute on <trumphotels.org> and, probably, that’s the reason why the website is still online.
Conclusively, Panelists reached a consolidated approach extending the scope of the Policy also to those cases not falling into the typical definition of “cybersquatting“, including cases involving fundamental rights. On the merits, its up to the counselors verify, on a case by case basis and accordingly to the case law outlined above, whether the disputed domain name could be transferred or not.
 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”).
 WIPO case n. D2006-1627, Joseph Dello Russo M.D. vs. Michelle Guillaumin; WIPO case n. D2008-0647, Sermo Inc VS CatalystMD LLC; v. anche WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), 2.6.2., 2.6.3.
 WIPO case n. D2000-0662, Wal-Mart Stores INC vs Richard MacLeod; WIPO case n. D2016-1465, De Beers Intangibles Limited vs. Domain Admin; v. anche WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), 2.6.1..