In the recent case of Patel v Allos Therapeutics Inc (20/6/2008, unreported), the legitimacy of using trade marks in domain names for websites that criticise the activities of the trade mark holder was called into question. Whilst domain name dispute resolution panels have not always agreed on the criteria applicable to the assessment of the legitimacy of such use, absent clear commercial use the registration of third party trade marks as domain names is not necessarily precluded by the Internet Corporation for Assigned Names and Numbers (ICANN) Uniform Dispute Resolution Procedure (UDRP) rules and policy.
Striking out a challenge, based amongst other things on infringement of the Claimant’s free speech rights, to a UDRP ruling in which a World Intellectual Property Organization (WIPO) panel ordered the transfer of the domain name allostherapeutics.com to the U.S. pharmaceutical company Allos Therapeutics, Sonia Proudman QC, sitting as a deputy English High Court judge, provides some rare judicial insight into the factors that may determine legitimacy of trade mark use in domain names for criticism sites. Whilst domain name panels apply domain name rules and not trade mark law, a judge’s view may influence further panels’ determinations of legitimate interest in criticism site disputes under the UDRP.
Allos is a global pharmaceutical company that has traded under the name Allos Therapeutics Inc since July 1996. It owns a number of U.S. trade marks for ALLOS and ALLOSTHERAPEUTICS INC and holds the domain name allos.com, which it uses for its trading website.
Mr Patel had a habit of registering the names of pharmaceutical companies, not just Allos, as domain names. A horticulturalist by trade, he had no business interest in the pharmaceutical industry and claimed no rights in the name Allos Therapeutics. His purpose was to wage an ideological war against what he saw as the evils of the pharmaceutical industry, which he blamed for the death of his mother as a result of inappropriate drug treatment. That grievance was extended to the lawyers acting for pharmaceutical companies, whom he said would “lie, harass, steal and defraud in order to crush anyone who rightfully wishes to oppose the immoral activities of the industry”. He also regarded the judiciary as inherently biased in the industry’s favour.
It was common ground that, in registering the domain names, Mr Patel’s actions were not undertaken to steal the company’s business for his own financial gain but, as he saw it, to expose the immorality of the industry and its lawyers. The domain names containing the relevant companies’ trade marks were used as protest or “gripe” sites. They were acquired with the intention of directing internet users searching for the company in question to a website in the name of the company and on which the company’s logo was displayed. The home page would then be fully viewed before a disclaimer was seen or the user could otherwise realise that the site was not affiliated with the company. In the present case, however, the domain name did not actually lead to an active criticism site.
Mr Patel registered allostherapeutics.com in June 2005. Allos submitted a complaint under the UDRP in April 2007 and the panel upheld it. Based on Mr Patel’s pattern of past conduct of multiple domain name registrations, it appeared to the panel that he was a serial cybersquatter. In addition to this, the panel found that Mr Patel had failed to provide sufficient evidence to persuade it of his stated intention to create a legitimate criticism site. Accordingly, the panel ordered the transfer of the domain name to Allos.
Mr Patel issued proceedings against Allos challenging the panel’s order. He claimed that the UDRP process should be set aside on the basis that it infringed his human rights and in particular his right to freedom of expression under Article 10 of the European Convention on Human Rights. Allos applied for the claim to be struck out pursuant to Part 3.4 of the Civil Procedure Rules on the ground that the claim form disclosed no reasonable grounds for bringing a claim and, alternatively, for summary judgment on the basis that Mr Patel had no reasonable prospect of succeeding on the claim and there was no other compelling reason why the matter should go to trial. In brief, Allos alleged that the case was fanciful and not fit for trial at all.
The English High Court granted Allos’s application. The deputy judge acknowledged that the UDRP does not preclude a party from “submitting the dispute to a court”. She acknowledged that this appeared to assume that the court to which the matter is referred may be able to review the panel’s decision on the merits. Nonetheless, since the proceedings were not an appeal, nor were they a judicial review of the UDRP decision, she stressed that the burden was on Mr Patel to plead and prove a cause of action giving him an interest in retaining the domain name. An unsuccessful registrant in such circumstances therefore faced considerable difficulty in identifying a cause of action upon which the panel’s decision could be challenged.
Although not clearly pleaded, the deputy judge began by considering whether Mr Patel’s right to a fair hearing under Article 6 of the ECHR had been infringed. The basis for such a claim was that he could not have a fair trial under the UDRP because of inherent bias in the system towards complainants. He contended that such bias was “well-known” and that the vast majority of WIPO conducted arbitrations are decided in favour of complainants. In the deputy judge’s view, however, there was nothing in this case to establish bias in law and such a claim was bound to fail. Mr Patel’s complaint amounted to no more than the fact that he was dismissive and distrustful of the procedure in which all his arguments were heard and rejected.
It was also clear to the deputy judge that Mr Patel’s claim that his free speech rights were undermined in relation to his domain name site was bound to fail. The deputy judge acknowledged that it was generally considered to be in the public interest to provide free speech forums on the internet to criticise companies and their actions. However, certain factors took the present case out of this general proposition. Mr Patel used a domain name that was no more than a trading name of the company itself, without any additional indication to show that it was a protest site. Furthermore, the site adopted Allos’s own trade mark. In effect, Mr Patel was posing as Allos in order to attract members of the public to the site. It was intended that there should be confusion in the mind of the public. The deputy judge commented that it was hardly free speech to use a domain name and trade marks that internet users would (and were meant to) associate with Allos in order to trick those users. Moreover, there was no active criticism site, or link to one from the domain. Mr Patel could not accept that he was the aggressor, not the victim. He was not debarred from making legitimate criticisms of pharmaceutical companies, or from setting up proper criticism websites from which he and others might do so. However, he had chosen to usurp names and logos contrary to the UDRP policy.
Amongst the other grounds upon which Mr Patel’s claim was based was that by threatening to file a law suit against him, Allos had infringed Section 21 of the Trade Marks Act 1994 which affords a right of action to any person aggrieved by groundless threats of infringement proceedings. The deputy judge suggested that this perhaps afforded Mr Patel his best opportunity of airing his assertion that he had not been guilty of any infringement of Allos’s marks because of his lack of commercial motive. Allos nevertheless contended that they were entitled to summary judgment on this point on a proper construction of what is use “in the course of trade in relation to goods or services” for the purposes of Section 10(3) of the Act. The deputy judge avoided that analysis by deciding that the 1994 Act was in any event inapplicable as the threat to file a law suit was plainly a threat of proceedings in the U.S. and not under the 1994 Act.
THE COURT’S CONCLUSION
In conclusion, the Court held that Mr Patel’s claims were totally without merit. Neither the claim form, nor the particulars, disclosed any reasonable grounds for bringing the action. Whilst the claim was inherently coherent, the causes of action pleaded were obviously ill-founded. Alternatively, Allos was entitled to summary judgment on the basis that Mr Patel had no real prospect of succeeding in his claim and there was no compelling reason why the case or issue should be disposed of at trial.
This is a good decision for trade mark holders, not least in the pharmaceutical industry where protest sites are prevalent. Not only does it separate unqualified use of trade marks in domain names from the exercise of the right to free speech through websites dedicated to criticising the trade mark holder, but it recognises the considerable difficulties that a losing party will face when seeking to challenge a UDRP decision upholding a complaint brought by a trade mark proprietor before the courts. Two practical issues arise from the circumstances of this case. First, it is notable that the protest website was not active when the UDRP dispute arose, which strengthened Allos’ case for transfer of the domain. Brand owners who pro-actively monitor registration activity and move swiftly will therefore have the upper hand in maintaining their rights. Second, the prospect of an English court action for unlawful threats of trade mark infringement being capable of overturning a UDRP decision was clearly flagged. Thus, care should be exercised at the earliest stages when communicating with registrants with any UK connection