A recent case resulted in a respondent relying on the free speech defence, but losing, is MIG Banque SA (MIG Bank Ltd) v. Akram Mohammad Khalid, (WIPO Case No. D2011-0159).
The Complainant, a Forex bank in Switzerland, had several MIG trademarks. The Respondent registered the domain name <migbankfraud.com> and claimed that it had been the victim of a fraud and “financial crimes“ perpetrated by the Bank that he wanted to bring to the notice of the public.
The panelist decided that the disputed domain name was confusingly similar to the MIG trademarks. Nothing remarkable about that and it is frequently so decided, although this case perhaps went a little further than others as the generic word “bank” had been added to the trademark and also the pejorative “fraud” , the equivalent in practical terms of “sucks”.
The panelist also decided that the Respondent had no right or legitimate interest in the domain name as, although the Respondent had relied on freedom of speech, this was a good thing only up to a point. Freedom of speech did not require using someone else’s identical or confusingly similar trademark, which the Respondent had done in this case. Thus, the panelist decided to follow the WIPO Overview and held that “…the right to criticise (sic) does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the Complainant’s trademark.”
On bad faith, the panelist said that although the Respondent had said in emails to WIPO that it was complaining about the alleged fraud and “financial crimes” of the Complainant, there was nothing on the website to support this contention. In other words “…the Respondent neither specifies nor explains the “financial crimes” and the other serious accusations on their web site nor is reference made in the Respondents emails to this issue but for affirming that it did not need to be substantiated.” Free speech was a right, but the statements made had to be supported. It seems the panelist was saying that the Respondent had to give a “valid basis” for its claims or it could not rely on free speech and the panelists relied in that respect on The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez, (WIPO Case No. D2003-0166).
This is not a decision that gives much encouragement to relying on free speech as a defence, but of course is not unique in its opinion. It will certainly give rise to some debate as to how far a panel has to involve itself in deciding whether the content of a website is valid or not. It would lead to some interesting exercises by panels if in fact they are now required to decide if criticism of the Complainant is valid or not, a task that panels in the past have rightly shied away from.
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