Agentless Backup is Not a Myth

A website that parodied the site of a political lobbying organisation has survived a domain name challenge from the target of its satire because there was no commercial exploitation of the name, even though it was deliberately confusing.

The Sutherland Institute in the US is a right wing think tank based in Utah that seeks to influence state policy. Its website is at sutherlandinstitute.org.

The Institute attempted to use the World Intellectual Property Organisation (WIPO)'s domain name dispute resolution service to gain control of the parody site's domain name but has failed. The WIPO panel said that it would not rule that the domain name was used in bad faith because the two organisations were from the US and the US constitution protects the right to free speech.

"Because this proceeding involves political speech that is strongly protected under the US Constitution, the Panel will not in these proceedings involving two US parties attempt to identify bad faith elements that are not specifically enumerated in the Policy," said the WIPO ruling.

"If the right of political speech is to be interfered with based upon [the Institute's] service mark incorporated in [the parody site's] disputed domain name, it is preferable that a federal or state court make that application of the concept of 'bad faith'."

WIPO panels can only transfer a domain name if all the elements of the dispute resolution policy are met. A name must be identical or confusingly similar to a trade mark held by someone else; the organisation or person holding the name must have no rights to it; and it must have been registered and used in bad faith.

The Sutherland Institute demonstrated the first two conditions but the panel refused to say that the domain name was registered and used in bad faith. The name was not transferred.

The panel said that the policy was designed to counteract commercial exploitation, and that this was not happening in this case.

"Here [the site owner] is in this Panel’s view using the disputed domain name for purposes of constitutionally protected political speech," said the ruling. "In this context, the Panel is reluctant to use a basis for a finding of bad faith other than those expressly enumerated in the Policy. Those expressly enumerated criteria of bad faith reflect the Policy’s principal concern with conduct that takes unfair advantage of trademark owners for purposes of commercial advantage."

The panel was dismissive of the Institute's claims that a commercial disadvantage was the result of the similar domain names.

"[The Institute] has principally argued that [the site owners] registered the disputed domain name for the purpose of disrupting the business of a competitor," said the ruling. "Yet 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," it said. "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'."

The parody site says on its home page: "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."

"Want to let these right wing nuts know what you think about their continued vilification of the homosexual communities?" it asks, and gives contact details of people connected to the Institute.

The Institute said in its evidence to the panel that the site had caused confusion and had caused one donor to the Institute to be worried about its direction.

But the panel said that the name should not be transferred even though it was most likely registered with the specific purpose of confusing internet users.

"While [the site owner] undoubtedly registered and has used the disputed domain name to confuse internet users concerning [the Institute] as a source, sponsor, affiliate or endorser of its website, there is no evidence that [the site owner has] done so for 'commercial gain'," it said. "The evidence before the Panel indicates that [the site] is engaged in 'pure political speech'. There are no advertising links on [the] website. There are no requests for financial support on [the] website."

See: The ruling

Copyright © 2009, OUT-LAW.com

OUT-LAW.COM is part of international law firm Pinsent Masons.

Cloud storage: Lower cost and increase uptime