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US Appeals Court clarifies protest website law

WIPO pseudo-law sucks.com

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A decision by the Ninth Circuit (California) of the US Court of Appeals has clarified where the law stands in relation in protest websites - and it doesn't look good for WIPO, one of the arbitrators for global domain disputes.

Despite a Mr Michael Kremer owning and running a protest website at the exact same dotcom address as a company's trademark, the Appeals Court ruled that trademark law was not broken because it was a non-commercial site.

The decision potentially sets a dramatic precedent – barring any intervention by the US Supreme Court - protecting protest sites' first amendment rights on the Internet and undermining a body of pseudo-law created by domain name arbitrator WIPO with regard to such sites.

WIPO has frequently found for the company in such situations, basing the decision on an infringement of a company's trademark. With the US stating categorically that this is not the case, it will be hard for WIPO (and other arbitrators acting under the UDRP domain rules) to follow such logic in future.

And while there are likely to be very few such cases in which a company's exact trademark is under dispute (because they will already have registered the domain), it does give a new lease of life to protest sites such as those that append a "sucks" to the end of a company.

Wal-MartCanadaSucks.com (and four similar domains) was the start point of a clampdown in July 2000 on what was becoming an Internet trend when a WIPO judge handed them over to Wal-Mart saying that since they infringed Wal-Mart's trademark they were therefore an abusive registration.

That case was soon followed by another that handed over a range of "sucks" website for UK companies, including FreeserveSucks.com, DixonsSucks.com, NatWestSucks.com and DirectLineSucks.com. These cases have since been used as the foundation for many subsequent domain disputes.

And while WIPO's frequently criticised failure to include an appeals process into its process makes it unlikely that the many "sucks" domains will be returned to their original owners, it does raise a very significant question about how disputes will be decided from now on.

Under the UDRP rules, an arbitrator is obliged to take into account the national law of the defendant. WIPO now finds itself in a bind between potentially going against US law by following its own previous decisions, or executing a large u-turn and dismissing its own case law.

This dilemma of running a parallel legal system is not just happening in the US either. Nominet in the UK has twice found itself going against the wording of a High Court decision over domain Phone4u.co.uk in decisions regarding the domains Game.co.uk and iTunes.co.uk.

Despite Nominet and WIPO's efforts to forge a separate channel for deciding domain name disputes, it is inevitable the national law, once settled and decided, will eventually take precedence.

In the recently decided case - Bosley Medical versus Michael Kremer - Mr Kremer was unhappy about hair restoration treatment he was given by the company, which advertises extensively in the US.

After a failed malpractice lawsuit against Bosley Medical, Mr Kremer registered two domains - www.bosleymedical.com and www.bosleymedicalviolations.com - and started outlining his gripes. Bosley Medical's own site is at www.bosley.com.

The Appeals Court found that Mr Kremer had not infringed the Lanham Act relating to trademarks. However, it did reverse the District Court's decision that Mr Kremer had not infringed Anti-Cybersquatting legislation. That does not mean Mr Kremer was guilty of infringing cybersquatting law - just that Bosley Medical can continue to argue that he has (it claims he attempted to sell the domain for a large profit).

For more information on the ongoing case and decision, visit Michael Froomkin's post at the ICANNWatch site.

Related links

Bosley.com
BosleyMedical.com
Ninth Circuit's decision [pdf]
WIPO decision on Wal-MartCanadaSucks.com

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