WIPO Case No. D2019-1544
September 2, 2019
One of the toughest issues concerning most forms of IP law is balancing the exclusive rights of trademark (or other forms of IP) holders, with acceptable fair and non-commercial public uses. The UDRP provides an avenue to achieve this balance under the second element: A Respondent may demonstrate it holds a right or legitimate interest in a domain name by providing evidence of a “legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the [complainant’s] trademark or service mark.”
The following case, in which the two parties fall either side of the debate surrounding the psychological effects of pornography, demonstrates how a Panel may approach the issue of “fair use.”
The Complainant, an individual from the US, operates a website at <yourbrainonporn.com> which promotes books, videos and other articles by the Complainant and others about pornography and pornography addiction.
The Respondent operates a website at the disputed domain name <realyourbrainonporn.com>, and made no denials that the domain was meant to refer to the Complainant’s website. Rather, the site was used to both educate the public and criticise the Complainant’s views.
Asserting that the website had “no commercial aspect whatsoever,” the Respondent argued that they were making fair use of any marks the Complainant may have. It was not seeking to trick users into thinking they were the Complainant, but to express genuinely held opinions contrary to that of the Complainant.
However, the Panel noted that the Respondent had not entirely avoided a risk of confusion with the Complainant, and in some instances had amplified it. Moreover, it appeared there was in fact some, but not a universal, commercial aspect to the website, with links to book sales for those whose opinions appeared on the Respondent’s site.
However, the Panel found any commercial aspect to be subsidiary to the predominantly informational, advocacy and criticism purposes of the Respondent’s website. Given that this in itself has been regarded as a legitimate non-commercial use under the Policy, the only matter left for the panel was whether the potential confusion the domain may cause between Respondent and Complainant constitutes a “fair use.”
In balancing the concern of confusion with the Respondent’s non-commercial use of the website, the Panel interestingly pointed to the fact that both residents reside in the United States:
“UDRP panels have tended to give weight to United States constitutional First Amendment principles of free speech in respecting the interests of a respondent using a domain name for a criticism site despite the inherent risk of confusion with the trademark owner, unless the respondent is found to be using the supposed “criticism site” as a pretext for cybersquatting, commercial activity, or tarnishment.”
Ultimately, despite the Respondent detracting from its “fair use” of the Domain by seemingly heightening a risk of user confusion, the Panel ultimately found on balance that this risk did not outweigh the Respondent’s interests in critical expression, and the Complaint was denied.
Therefore, it is evident that deciding if the use is “fair” is quite the balancing act. The distinguished panellist in this case was obviously at pains to weigh every factor and achieve a balanced result. The outcome of such cases is hard to predict. But the value of this decision for practitioners is that it is virtually a check-list of the evidence that should be looked for- and then presented to the panel in an acceptable form.
 UDRP paragraph 4(c)(iii)