In Sutherland Institute v Continuative LLC WIPO D2009-0693 (10 July 2009) sole World Intellectual Property Organization (WIPO) panellist Frederick M Abbott refused to find bad faith in the use by a group of gay activists of a domain name identical to the service mark of a “conservative think tank” on a parody site. The facts of the dispute did not fall within the nonexhaustive list of circumstances that constitute bad faith under the Uniform Domain-Name Dispute-Resolution Policy (UDRP) and the panellist was reluctant to add to that list in a dispute involving two U.S. parties and a question of political speech which was protected by constitution in the United States.
The Complainant, Sutherland, is a non-profit organisation that describes itself as “a conservative public policy think tank committed to shaping Utah Law and policy based on a core set of governing principles”.
Sutherland was incorporated in 1994 in Utah and had no registered trade marks but, in 1999, it established a website at www.sutherlandinstitute.org, which it had since maintained. It also claimed federal common law service mark rights in the words SUTHERLAND INSTITUTE.
In February 2009, apparently after a public debate in which the president of the Sutherland Institute, Paul Mero, clashed with member of the public, Nick West, the respondent Continuative (whose administrative contact was Mr West) set up a parody website at www.sutherlandinstitute.com. It had a green background instead of blue, but otherwise mirrored the look and feel of the Sutherland website, including replicating Sutherland’s service mark. Continuative included two disclaimers, one of which was a simple statement that it was not affiliated with, endorsed or sponsored by the Sutherland Institute and another that stated specifically that it was a parody.
Sutherland issued a domain name complaint under the UDRP, alleging that Continuative lacked rights or legitimate interests in the disputed domain name in that it had not used the domain name for a bona fide offering of goods or services prior to notice of a dispute. Sutherland claimed that the website was intended to mislead the public and so distinguished its complaint from those under the UDRP which had allowed the use of third party trade marks in identical domain names for the purpose of criticism. Continuative did not file a response.
Mr Abbott concluded that Sutherland had established rights in the service mark SUTHERLAND INSTITUTE and that the disputed domain name was identical to its mark. He also concluded that Continuative had not made legitimate noncommercial use of the domain name because of the extent to which the domain name and its website were designed to induce internet user confusion.
However, the Sutherland Institute failed to convince Mr Abbott of the bad faith in Continuative’s behaviour. He concluded that, because this proceeding involved political speech, which was strongly protected in the U.S. Constitution, the panel would not, in proceedings involving two U.S. parties, attempt to identify bad faith elements that were not specifically enumerated in the UDRP. He went on to state that, if the right of political speech was to be interfered with based on the incorporation of Sutherland’s trade mark in Continuative’s domain name, it was preferable that a federal or state court should make that application of the concept of bad faith. Accordingly, he did not order transfer of the domain name.
Treatment of free speech and parody sites has been the subject of much discussion at WIPO, which sees a difference in the way that U.S. and non-U.S. panellists have decided cases involving freedom of speech. This gives rise to questions about the extent to which the UDRP should be influenced by national laws. The panellist in this case was clearly of the view that detailed issues under the U.S. Constitution are beyond the scope of the UDRP.