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Recent Case Notes & Commentary

Free Speech Beats Trademark Rights: The Sutherland Institute Case

For example, trademark law protects the rights of trademark owners to a particular name, but what if this protection would mean that someone else’s rights – say, freedom of speech- are trampled on? Who will have the greater protection?

In a recent decision, Sutherland Institute v. Continuative LLC (WIPO D2009-0693) that question had to be resolved. And freedom of speech won.

The Facts

The case arose in Salt Lake City in the United States where a privately financed think tank, the Sutherland Institute operates. Sutherland makes no secret of the fact that it promotes a conservative agenda to influence law makers in the State of Utah, advocating small government, the traditional family, private property, religion, personal responsibility, charity and the merits of free markets. Inevitably it has become an opponent of gay marriage and other aspects of the pro gay agenda. Not surprisingly, this had not endeared the Institute to the gay community of Salt Lake City, some of whom conceived the idea of criticising the Sutherland Institute on the internet.

Their path was made easier than they might have expected, for they found that although the Sutherland Institute had registered as its domain name <>, it had not registered <>, which was still free. So, they registered it and set up its own website to carry on the debate asked them.

The 'Parody' Site

They decided to set up what they called and openly declared to be a ‘parody’ site: using the name and a style of layout and content similar to the official website of the Institute. So successful were they, that even donors and supporters of the Institute were confused and thought the spoof site was the real thing. Even suppliers started sending bills to the wrong address.

It was pretty clear that the intention was to give the impression , initially, that they were the official Sutherland Institute website and that once that had got the user’s attention , they would really open up with their criticism of the Institute’s views.


But they put a statement on the site that said: “NOTE: This website is not affiliated with, endorsed or sponsored by the Sutherland Institute. It is a parody site, an opposing political platform.”

At the bottom of the page they also put: “This site is a parody of The Sutherland Institute, a Southern Utah based ‘think tank’ that tries to mask its ‘anti-gay agenda’ as a do good public policy and political organization. Obviously we are not affiliated with, endorsed or sponsored by the Sutherland Institute but we still love them anyway.”

But once you got into the site itself, there was some pretty trenchant stuff. It said that the Sutherland Institute’s principles were really “Oppose The Gay Agenda. Limited Government Except When We Don’t Get Our Way. Our Bigoted Definition of Family. The One True Religion. Personal Responsibility & Taking Away Others Choice.Anti Same Sex Marriage Legislation. Free Markets, Exclude Homosexuals from Places of Employment.”

Then it really warmed up. “The Sutherland Institute’s philosophy is simple: Unfortunately it’s nothing more than a bunch of hate speech wrapped up in this feel good, community knows best garbage that doesn’t hold water.”

The site criticised the Institute for “…their irrational fear of homosexuals and what they would do if faced with the revelation that one of their own children or their grandchildren were gay? And how would they explain to them why they were denying them the right to seek and achieve the same happiness in life? Oh yeah, that’s easy, cast them aside and then blame them for tearing the family apart.”

There was also a lot more trenchant criticism. The Institute lodged a Complaint claim with WIPO.

Identical or Confusingly Similar

The Compliant was able to pass the first hurdle by establishing a common law service mark, for the activity of lobbying was a service .The domain name was then held to be identical to the service mark.

Right or Legitimate Interest

The panel held first that Respondent did not make a bona fide offer of goods or services using the disputed domain name within Paragraph 4(c)(i) prior to notice of a dispute. That was because it knew of the Complainant when it registered the domain name and intended to mislead people at least on their arrival at the website by making it similar to the official website.

But was the Respondent making a legitimate non-commercial use of the domain name because it was using the domain name for a criticism site? Did that give it a right or legitimate interest?

The Complainant advanced the argument that although Respondent had the right to criticise it and its policy positions, the Respondent did not have the right to do so with a domain name and website that give the impression that the Respondent was, in fact, the Complainant. That is the ‘New York Times argument’ from the Monty Roberts Case.

The Complainant then contended that to do this was misleading Internet users and that consequently , even taking into account some decisions under the Policy that allow the use of third-party trademarks in identical domain names for criticism purposes, Respondent did not fall within the category of a legitimate non-commercial user of its mark because of that intent to mislead. This argument seems to have been accepted by the panellist as he said: 

"The Panel determines that Respondent has not made legitimate non-commercial use of the domain name because of the extent to which the domain name and its website are designed to induce Internet user confusion.”

So, up to that point the Complainant was winning. But as in some domain name cases, it faltered at the third hurdle.

Bad Faith

The panellist held that although the criteria of bad faith set out in paragraph 4(b) of the Policy were non-exclusive, in the present case where the issue was free speech, it would be unwise to find bad faith outside those specific criteria. Those expressly enumerated criteria of bad faith reflected the Policy’s principal concern with conduct that took unfair advantage of trademark owners for purposes of commercial advantage and that was not the present case.

The question should therefore be confined to whether bad faith could be established solely by relying on one or more of the specified criteria.

Following that approach, the first conclusion to be reached was that the Complainant was not a competitor within the meaning of paragraph 4(b) (i) of the Policy. That was so because “… only by the exercise of mental gymnastics may a group of gay rights activists be defined as a “competitor” of a conservative public policy think tank. A person seeking the services of a lobbyist or advocacy group who is unable to secure the services of a conservative think tank is unlikely to decide to take its business instead to a group of gay-rights activists. Perhaps in some very attenuated sense these two entities are “competitors in the marketplace for ideas”, but the Panel does not think this is what the Policy means when it refers to “competitors””.

Nor was there the denial of access to another domain name, the criteria in paragraph 4(b) (ii) of the Policy, because there was no evidence of a pattern of such conduct on the part of the Respondent.

What about paragraph 4(b) (iv) of the Policy? As to whether the Respondent came within that provision, the panel said that although “Respondent undoubtedly registered and has used the disputed domain name to confuse Internet users concerning Complainant as a source, sponsor, affiliate or endorser of its website, there is no evidence that Respondent ha(d) done so for “commercial gain”.

The need for this commercial element is vital to establish bad faith as the prohibition “was not designed to inhibit “pure political speech.”

Freedom of speech thus won the day. The arbitrator had no trouble in deciding that freedom of speech meant that the Respondent could keep the domain name and keep running his website.

First, material put on the site was “pure political speech” and there was no evidence that the Respondent had set up his site for commercial gain. The site had no advertising links and carried no requests for financial support.

Secondly, freedom of speech was guaranteed by the US Constitution and both parties were domiciled in the US. But would the same result come about in Australia or other countries that do not have such a constitutional guarantee?

P.S: The decision reminded me of another case where the Complainant stumbled only at the third hurdle and in a quasi – free speech case: Nintendo of America Inc. V. Alex Jones, (WIPO case no. D2000-0998).

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