The Acroplex Blog reports on The shameful WIPO case of Aspis.com.
Aspis is a registered trademark of a Swedish company. However, it is also refers to Aspis Pronoia, a Greek insurance company. Interestingly enough, the Swedish Aspis is the successor in interest to the Greek company. Back in 1998, Aspis Pronoia ticked off Mr. Dimitri Kukurinis, and he registered aspis.com to vent his frustration with the company. The Swedish successor corporation filed a UDRP action. See Aspis Liv Försäkrings AB v. Neon Network, LLC, Case No. D2008-0387.
The panel found that:
Mr. Kukurinis [the registrant] is a resident of New York and at all material times has used the Domain Name to host a criticism site. The site contains text in both Greek and English and criticises stock investment advice that Mr. Kukurinis claims to have received from Aspis Pronia and, in particular, one Mr. Kosta Karavasilis of Aspis Pronia.
Nevertheless, two of the three UDRP panelists found that this was not a legitimate use of the domain name and that it was both registered and used in bad faith. More surprisingly, they seemed to suggest that criticism sites were, per se, not legitimate uses of domain names.
It is not the Panel’s role to pass comment on the content of a genuine criticism website. No matter how robust that content may be, that content is incidental to the consideration of the issue of bad faith. The bad faith that exists in this and similar cases arises not from any critical statement or alleged “smear” but from the fact that the Respondent has chosen a domain name that comprises without modification a mark used by the Aspis group and the misrepresentation and impersonation that this involves.
The dissenting panelist, G. Gervaise Davis, wrote the longest UDRP dissent I have ever seen. The key elements of it are reproduced below:
I recognize that my view is one of a minority of UDRP panelists and that most of those with my view are panelists from the U.S. where Freedom of Speech is so strongly protected. However, even aside from the First Amendment argument, I strongly believe that simply ruling that all criticism sites are automatically improper even if they use a very weak, generic trademark as a domain name, as the Majority here appears to conclude, is simplistic and unfair to Respondents like the one here.
“[H]owever, the conclusion that no legitimate noncommercial use can ever be made of a domain name which is identical to the complainant’s mark is not consistent with the balancing test envisioned by Paragraph 4(c)(iii), at least not when there otherwise is no evidence of cybersquatting or bad faith. Clearly, a respondent has no right to use the complainant’s mark or a corresponding domain name so as to trick the public into believing that the complainant endorses any of the critical views expressed on the respondent’s website. See Justice for Children v. Rneetso / Robert W. O’Steen, WIPO Case No. D2004-0175 (bad faith may be found if the respondent’s criticism site created “look and feel” of the complainant’s official website). And a respondent cannot make a legitimate noncommercial or fair use of a domain name within the meaning of Paragraph 4(c)(iii) if such use is merely a pretext to cybersquatting, or if bad faith registration and use of the domain name otherwise is indicated from the circumstances of the case. See Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.
The CBS case, and common sense, cause me to feel that as part of our obligation of fairness to all parties, any Panel concluding that use of a domain name for a criticism website is improper has an obligation to first examine the website, the timing of the postings and registration, and the other relevant facts. Only if it is shown that the Respondent has attempted to commercially profit from the use of the trademark, or has engaged in conduct suggesting the hope of being bought off, as in many cases, then can and should the Panel find for a transfer.
There is simply no such evidence of commercial use or purpose in the instant case, and as has been pointed out before by the parties, the domain was registered and put into use years before the Complainant come into existence; it does not even direct its criticism to the Swedish trademark owner; and the Registrant and the Domain Name Registrar are all in the U.S. and would normally expect to have their actions judged by the law that existed at the time. More significantly, even the Policy and Rules did not exist at the time the domain name was registered and the website was first posted, and it has not changed since then. There is simply no suggestion that Respondent expects to profit from posting criticism or the description of the alleged misconduct of the Greek company.
Davis then suggests that the case should be appealed:
Suffice it to say, I believe the Respondent has been improperly deprived of the Domain Name, in violation of his or its U.S. Constitutional rights of free speech, and feel that if this case were brought in virtually any court in the U.S., the result would be different, or the decision of the Majority overturned.
I must concur with Panelist Davis. While the First Amendment may not be international in nature, the concept of trademark fair use should be recognized by UDRP panelists.