Hot on the heels of Sutherland Institute v. Continuative LLC (WIPO case no. D2009-0693) comes another domain name decision that promotes the interests of free speech on the internet. The Mercury Case, decided recently and discussed here, has done this by means of a website claimed and accepted to be a parody.
In this case the Respondent registered a very provocative domain name; <glennbeckrapedandmurderedayounggirlin1990.com>, or, to separate the words to help you read it more clearly, GLENN BECK RAPED AND MURDERED A YOUNG GIRL IN 1990. Indeed, an alarming domain name.
Glenn Beck is a radio talk-back host and commentator who also sells promotional items from which he and his production company, the First Complainant, earn income.
He brought the claim to have the domain name transferred to him. Naturally he took great exception to the allegations contained in the terms of the domain name itself. In a nutshell the Respondent said that he registered the domain name in the terms used because he wanted to protest about the way that Beck operated on his talk back shows, i.e. by making claims and then demanding to know why his target refused to deny the allegation.
The domain name was linked to a website which carried on its home page the following:
GlennBeckRapedAndMurderedAYoungGirlIn1990.com
The Official Website About The Controversy
Did Glenn Beck Rape and Murder a Young Girl in 1990?
Important Information
This site is the official website about the controversy. We are, however, not the originators. Please see the “The Origin” link on the left to see how it all got started. The official forum can be found by using the “The Forum” link on the left. If you wish to contact the site operator, Name Withheld, click the “Email Us” link on the left. Alternatively, you can call (214) […] Please note that if we’re not around, and you leave us voicemail, we may post that somewhere (although any identifying information will be removed).
Tip: Check out the bottom of this page for a very important top secret piece Page 4 of information.
Notice: This site is parody/satire. We assume Glenn Beck did not rape and murder a young girl in 1990, although we haven’t yet seen proof that he didn’t. But we think Glenn Beck definitely uses tactics like this to spread lies and misinformation.
The site was quite specific and a further statement was as follows:
“Assorted Rumours”. An illustrative posting reads as follows: veritas aeternitas: I can’t believe evidence as to whether or not Glenn Beck raped a girl in 1990 … has not come to light! What are the law enforcement agencies doing? Every year hundreds of innocent girls go missing. How many of them have fallen prey to the murdering and raping hands of Glenn Beck? And how many more will have to suffer before we get to the bottom of this? /Never forget: Glenn Beck raped and murdered a girl in 1990 …
A further statement was added later:
Welcome This site exists to try and help examine the vicious rumour that Glenn Beck raped and murdered a young girl in 1990. We don’t claim to know the truth — only that the rumour floating around saying that Glenn Beck raped and murdered a young girl in 1990 should be discussed. So we’re going to do our part to try and help get to the bottom of this.
Why won’t Glenn Beck deny these allegations! We’re not accusing Glenn Beck of raping and murdering a young girl in 1990 – in fact, we think he didn’t! But we can’t help but wonder, since he has failed to deny these horrible allegations. Why won’t he deny that he raped and killed a young girl in 1990?
It also contains the following statement:
A reminder: I am not making any money off of this site, at all, in any way. I’m paying for everything – the domain, hosting, everything this costs, I’m paying. I’m not even accepting donations! Following discussion forums constituting the large part of the website, the following appears:
Notice: This site is parody/satire. We assume Glenn Beck did not rape and murder a young girl in 1990, although we haven’t yet seen proof that he didn’t. But we think Glenn Beck definitely uses tactics like this to spread lies and misinformation.
Read the last sentence again. That’s the point. Read it a third time and ignore the name of the site itself, because anyone who believes that we’re trying to actually get people to believe Glenn Beck raped and/or murdered is *whoosh* missing the entire point. So don’t be dumb like a lot of people are. I greatly expanded this text because so many people *read* it, and *still* didn’t understand.
Common Law Trademark
Mr Beck had to make out a common law trademark as he did not have a registered trademark. He succeeded in doing this because of the commercial aspect of part of his activities and the fame that attached to his name through his broadcasts and other activities.
Confusingly Similar
The Panel then found that the domain name was confusingly similar to the trademark GLENN BECK. That interesting result was arrived at by analogy to the “sucks” cases, as it was said that the internet user would be so struck by the character of the domain name and curious about what lay behind it, that he or she would go to the website to see if the site really was associated with the trademark owner, as it seemed to be, in this case Mr Beck.
Rights or Legitimate Interests
The Panel then went on to consider if the Respondent had a right or legitimate interest in the domain name. This is the really interesting part. The Panel decided that he did in fact have such a right or legitimate interest because the domain name and the website were a parody of Glenn Beck’s style and as such protected under the guarantee of free speech in the US Constitution. To see what the Panel said in detail, see below. But to summarise it to save you some time, the important points are as follows:
The Respondent domain name registrant had conceded on the website that what he was saying about Beck was untrue.
That was the basis for its being a parody.
But he (seemed to) believe(d) that the style he had adopted in the parody was the style that Beck used in his political commentary.
The parody was therefore itself political commentary and as such protected by the free speech guarantee.
In reaching that conclusion it is permissible to look at the website as well as the domain name as this had to be done to get in on the joke.
There was some sale of products on the website but not enough to give the site a commercial activity sufficient to deny the free speech protection.
Now read on for some more details.
The Panel ruled in the following way.
Respondent principally argues that it is using Complainant’s mark in the disputed domain name to parody the political interviewing and commenting style of Complainant. Respondent argues that is engaged in nominative fair use of Complainant’s mark, and that its political parody is protected as free speech under the U.S. Constitution.
Respondent states that Complainant engages in an interviewing and commentary style that involves making an allegation that even Complainant may stipulate is not true, then asking why the interviewee or subject of the commentary refuses to deny the allegation. In Respondent’s view, Complainant’s methodology places the subject of the allegation in an unfavourable light virtually regardless of the response (or lack of response).
In the present context, the disputed domain name contains a statement that Respondent concedes on its website is untrue (or at least that there are no known facts to support it). Respondent then demands to know, and Respondent’s forum participants demand to know, why Complainant refuses to deny the untrue allegation set out in the disputed domain name.
As Complainant has pointed out, the full effect of Respondent’s domain name parody is unlikely to be ascertained by the “average Internet user” (i.e., not party to the “inside joke”) without the second step of visiting Respondent’s website.
The disputed domain name standing alone (i.e., without the second step of visiting Respondent’s website) itself is undoubtedly unflattering, pejorative and inflammatory (presumably Respondent’s intent). Whether it is “defamatory” is likely to be a difficult question, and in any event one more suited to resolution by a court than in an administrative proceeding under the Policy. Respondent’s Page 13 Supreme Court reference to Hustler Magazine, Inc. v. Falwell, 485 U.S. 46 108 S. Ct. 876 (1988) provides some guidance on that issue.
The Panel said “… Respondent has conceded that it knows the statement embodied in the disputed domain name is false.”
The essence of the decision was that
“… if Internet users view the disputed domain name in combination with a visit to Respondent’s website, the “total effect” is that of political commentary by Respondent, capable of protection as political speech by the First Amendment under the Hustler Magazine standard.
Respondent appears to the Panel to be engaged in a parody of the style or methodology that Respondent appears genuinely to believe is employed by Complainant in the provision of political commentary, and for that reason Respondent can be said to be making a political statement. This constitutes a legitimate non-commercial use of Complainant’s mark under the Policy. It equally appears that Respondent is making nominative fair use of Complainant’s mark in the sense of using it to identify a well-known public figure (in a manner that does not use more of the mark than is necessary and does not create confusion as to Complainant’s sponsorship of Respondent’s activities). In making such findings, the Panel makes no assumptions as to the potentially defamatory nature of any of the content on Respondent’s website, which is beyond the scope of the present Policy proceeding.
It can be and has been argued by Complainant that the disputed domain name should be assessed “standing alone” because at least some Internet viewers will only have that first impression (i.e., they will not click through). However, this case involves a form of speech arguably strongly protected under the First Amendment of the U.S. Constitution. This Panel is very reluctant to reject Respondent’s claim of legitimate noncommercial and fair use on the distinction between viewing of the disputed domain name itself and clicking through to Respondent’s website. On the same basis by which the Panel has determined the disputed domain name is confusingly similar to Complainant’s trademark – that is, Internet users viewing the disputed domain name will be curious and motivated to visit the website – the Panel also considers that Respondent’s speech should be assessed as a whole, both by reference to the disputed domain name and the content of Respondent’s website (i.e., on the assumption the preponderance of Internet users will indeed click through).
The Panel determines that Respondent has in the present circumstances established that it is engaged in legitimate non-commercial or fair use of Complainant’s mark in the disputed domain name. While there is some evidence that at some stage third-party vendors of goods and services critical of Complainant may have earned some income on sales of T-shirts and bumper stickers embodying political slogans based on click-throughs from Respondent’s website, the Panel does not believe this is sufficient “commercial activity” to change the balance of interests already addressed.”
Bad Faith
In the light of this decision, the Panel said it was not necessary to go on and consider bad faith. However, the Panel added:
“The Panel notes, however, that the combination of political speech engaged in by Respondent and the substantial lack of commercial intent makes it unlikely to this Panel that Complainant would have succeeded in demonstrating bad faith registration and use (see, e.g., Sutherland Institute v. Continuative LLC, WIPO Case No. D2009-0693).”
An Interesting Position
The Respondent having won and proved his point, has since offered the domain name to Glenn Beck…free of charge. It is not known if the offer has been accepted.