rayden-engineering.co.uk (2009): Use of trade mark for protest or criticism website was abusive as it amounted to impersonation of the Complainant.

Background

Established in 1979, Rayden Engineering Limited is a family run engineering business. It was incorporated as a company in 1996. It has operated a website at raydenengineering.com since May 2000. In July 2006, Rayden registered raydenengineering.co.uk.

Ms. Charlton lives next door to Rayden's premises. Both parties were engaged in a long-standing dispute over an adjoining piece of land. In March 2008 Ms. Charlton registered rayden-engineering.co.uk and rayden-engineering.org.uk - the domain names in dispute. She redirected the domain name to a website at councilanddeveloper.net comprising various allegations against the local authority and Rayden. Rayden filed a complaint under the Nominet UK Dispute Resolution Service seeking transfer of the domain names.

To win its domain name dispute, Rayden needed to prove it had rights in respect of a name or mark which was identical or similar to the domain names and that the domain names, in the hands of Ms. Charlton, were an abusive registration.

Comparison of trademark and domain names

It was not disputed that Rayden had "common law" rights in the name "Rayden Engineering" deriving from extensive use of that name for some 30 years. Because hyphens were disregarded for the purpose of assessing similarity, the domain names were held to be identical to the name in which Rayden had rights.

The initial domain name dispute decision - fair use

The expert in the first instance (ie initial) decision suggested the fair use element of the Nominet Policy underlying the Dispute Resolution Service was borrowed from trade mark law such that uses that were not 'use in trade' or 'use in commerce' or 'use in a trademark sense' were permitted. This included nominative use (when you call someone by their name or say something about someone). The expert pointed out that fair use can include websites operated solely in tribute or criticism of someone. The expert found in favour of Ms. Charlton concluded that the domain names were not abusive registrations.

The domain name dispute appeal

Rayden appealed. It contended that the domain names were abusive registrations because they were identical to its established business name. While fair use may include criticism sites, the registration of a domain name identical to Rayden's business name, for the purpose of criticising Rayden, amounted to impersonation and was unfair. Rayden argued that the use of Rayden's mark was not nominative use and that the concept of initial interest confusion (see further below) was an established approach under Nominet's DRS. Also, the DRS was not a forum for determining allegations of defamation, trade mark infringement or passing off. It was, therefore, out of the expert's remit to make judgment on any potential claim in defamation and this should not be allowed to influence an expert's decision.

Ms. Charlton sought to distinguish previous decisions relied upon by Rayden by arguing that in those cases, the registrant had used the website, not just for criticism or protest, but for websites selling goods and services in competition with their opponent. Ms. Charlton maintained that she was not using the site as an impersonation site or to sell goods and services. Internet search results included descriptions which made it clear that the site is not connected, operated by or authorised by Rayden and that the site is obviously one of criticism. There could, therefore, be no initial interest confusion. There was also a disclaimer on the website, along with an opening paragraph detailing the dispute between the parties.

Nominet experts not in a position to assess libel claims

The Nominet appeal panel observed that, for these domain names to amount to abusive registrations, they must have been registered to or used in a way which has taken unfair advantage of or is detrimental to Rayden's rights. Whilst there had been many cases cited by both parties, many of them turned on their own facts.

The significance an expert could place on the content of a protest website was limited. Experts were not in a position to assess whether statements were untrue or defamatory. The Nominet UK DRS was not geared towards a resolution of detailed factual disputes or the forensic analysis of competing accounts.

Use of name identical to trademark for a protest website

The panel agreed that, according to the Nominet DRS Policy, a domain name may not have been abusively registered if it was legitimately and fairly used for a website operated solely in tribute to or in criticism of a person or business. The Policy did not, however, explicitly address the distinction between domain names identical or confusingly similar to a trade mark and those where the domain name included a variant showing it is obviously associated with a protest website.

The issue at the heart of this case was the registration of Rayden's identical name as a domain name for the purposes of pointing to a protest site, without any indication that that the domain names led to that site. This was why Ms. Charlton registered the domain names.

The panel concluded that Ms. Charlton was, in effect posing as Rayden to attract the public to her protest site (including people who would not knowingly follow a "….sucks" link). The panel disregarded Ms. Charlton's argument regarding the disclaimer. By the time the user read the disclaimer, the damage was done and the advantage sought by Ms. Charlton achieved. (This is known as "initial interest confusion"). Additional text found within search engine results was unpredictable; it may still not have been obvious that the domain names would direct users to a protest site. Those most likely seeking a website under a name identical to Rayden's name were existing or potential Rayden customers.

It was irrelevant that Rayden had not sued Ms Charlton for defamation.

The appeal panel, therefore, overturned the original decision, finding that the domain names in dispute were abusive registrations under Nominet's Dispute Resolution Policy. The panel pointed out that the decision did not deprive Ms. Charlton of the right to free speech as she could carry on her campaign via a domain name which did not impact upon the Complainant's trade mark ie by including a modifier within the domain name making clear that involved was a protest or criticism website.

"Take home"

If a business is the subject to a (genuine) protest or criticism site, the key factor in recovery via Nominet's DRS is not the whether the content of the website amounts to libel but, rather, the similarity or otherwise between the domain name and the Complainant's trade mark.

For a free initial chat and more information about our domain name legal advice and services, call Adam Taylor of Adlex Solicitors on +44 (0) 207 317 8404 or email.