Recent Case Notes & Commentary

What is Criticism? And What is Criticism in Good Faith?

Eden Care Communities Management, Inc. v. Kevin Douglas Klassen [1]


In the matter of a complaint pursuant to the Canadian Internet Registration Authority Domain Name Dispute Resolution Policy[2], the question of what is criticism in good faith arose. The matter concerned the registration of the Canadian domain names <reginalutheranhome.ca> and <theedengroupofcompanies.ca>. The Eden Group ran charitable facilities including the Lutheran Home in Regina, Canada.


The registrant[3] relied on a defence under the Canadian Policy that the domain names he registered and the resulting websites he set up were used for criticising the complainant's company and were made in good faith. In fact, the Policy provides that if a domain name was used, in good faith, for “criticism”, this gave the registrant a legitimate interest in the domain name and, thus, a defence. Then, the Policy also provided that.


So what is criticism?

The panel[4] found that criticism is 'passing judgement, even severe judgement and faultfinding,' but that 'criticism must be legitimate and objective', meaning that 'it should not be abuse masquerading as criticism'.


What then, is criticism in good faith?

The relevant policy enables a panel to look not only at the way the domain name has been used, but how it has been used “in association with” the criticism at issue. Taking this into account, the panel agreed with a prior Canadian domain name decision[5] that criticism in good faith should be a “legitimate, objective form of criticism of the Complainant's services…”.


Why did the Registrant in this matter fail?

Registrants relying on this kind of defence have a reasonable chance of success, provided of course that the evidence shows that the commentary is in fact criticism. Not only is the onus on the complainant to prove the domain name is registered in bad faith, but the registrant will succeed if it proves on a balance of probabilities that it has a legitimate interest in the domain name. The panel will take the entirety of the website into account, so it could be possible to have parts that may fail 'the criticism test' and yet the use of the website my pass overall, on balance, because “ the substance” of the comments is legitimate criticism.


The issue in this matter was that the registrant relied heavily on a "report" he had prepared that detailed his “criticism” of the complainant's charitable businesses. The panel found that as a whole, the report was really “an attack on the complainant's management and directors”, particularly the Chief Executive Officer.


The panel concluded, making its own judgment on the website and on all of the comments made by the Registrant during the heated dispute between the parties and interested onlookers, that it was malicious and went beyond legitimate criticism and that some of it came “perilously close to being a vendetta”.


It is not surprising, therefore, that the panel went on to say that not only was the registrant’s material not “criticism”, but it was not made in good faith.


The same conclusion was reached on the other relevant test that the Complainant had to satisfy. It had to show that the domain name was registered in bad faith and it was consistent with the above conclusions that the panel was able to go and conclude that, yes, the registrant had registered the domain name in bad faith, within the generally accepted meaning of that word.


It did not go without notice that the entire issue could have been avoided if the registrant had used a domain name that was not the same as or confusingly similar to the complainant's trademark; the first domain name was the exact name of the major facility operated by the Complainant and the second one was a direct reference to the group of companies that ran that and other facilities.


QUESTION: is the panel’s decision a workable definition of “criticism” such that in a future case, with different facts, you would be able to tell if the conduct of the registrant was legitimate “criticism” or not?


POSTSCRIPT

While the above proceeding was underway, other proceedings were also on foot in WIPO under the UDRP on two related .com domain names, <reginalutheranhome.com> and <theedengroupofcompanies.com>. The matter was decided by a sole panellist on 8 February, 2018. Applying the tests under the UDRP the panel found that the respondent did not have a legitimate interest in the domain names in the form of non-commercial free speech, which can give rise to a legitimate interest. This was because, in the first place, the domain name <theedengroupofcompanies.com> was not used for criticism at all, as it redirected Internet users to the website to which the domain name <reginalutheranhome.com> resolved, which of course used the Complainant’s entire trademark in its composition. With respect to both domain names, therefore, they were being used to convey the respondent’s views by using the Complainant’s trademark, which denied legitimacy to both of the disputed domain names.


The panel also found, which is a requirement of the UDRP, that the domain names had been registered and used in bad faith, having regard to all of the circumstances; the fact that what the Respondent had done was to mislead Internet users into believing that his views were endorsed or operated by the Complainant, in order to divert Internet users who were searching for the Respondent and also that the Respondent was disrupting the Complainant’s business.


The result in the UDRP proceedings was therefore the same as the earlier Canadian proceeding, the transfer of both domain names to the Complainant. The essential reasons were the same: the domain name holder had no legitimate interest in registering the domain names and he had acted in bad faith.




[1] A case administered by the British Columbia International Commercial Arbitration Centre and found at www.bcicac.com. January 10, 2018.

[2] The Policy may be seen at https://cira.ca/cira-domain-name-dispute-resolution-policy

[3] The Defendant in Canadian domain name cases is “the Registrant”; the equivalent of “ the Respondent” in UDRP cases.

[4] A unanimous three person panel on which The Hon Neil Brown QC was the Presiding Panelist.

[5] Carleton University Students’ Association Inc. v. Justin Essiambre (CIRA 00153, 2010)