The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).
The Respondent is not identified in the WHOIS as synonymous with the disputed domain name and has not acquired trademark rights in this term. Indeed, past panels have held that a Respondent was not commonly known by a disputed domain name if the WHOIS information was not similar to the disputed domain name itself (see for instance FORUM Case No. FA 1781783, Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Chad Moston / Elite Media Group <bobsfromsketchers.com>). Furthermore, the Respondent is not affiliated with the Complainant nor authorized by it in any way to use the trademark BIODERMA® in a domain name or on a website. The Complainant does not carry out any activity for, nor has any business with the Respondent.
The Respondent argues that it is making fair use of the disputed domain name to engage in protected speech such as criticism and commentary. It correctly points to section 2.6 of the WIPO Overview 3.0 as a guide to what previous panels have found in this area. For this Panel, the Respondent’s case fails in connection with section 2.6.1 of the Overview whereby “the respondent’s criticism must be genuine and non-commercial” noting that “in a number of UDRP decisions where a respondent argues that its domain name is being used for free speech purposes the panel has found this to be primarily a pretext for cybersquatting, commercial activity, or tarnishment”.
Here, it is important to note that the Respondent is not the person who is said to be making the allegedly free speech commentary or criticism. The Respondent is a third party, or at least claims to be. Yet the Respondent is the registrant of the disputed domain name, not some other person who may or may not have a genuine gripe to make about the Complainant. In fact, the Respondent has no way of knowing anything of the genuineness of any criticisms made on the associated website. The process by which the disputed domain name was registered seems to be automatic and, importantly, took place before any criticism whatsoever was even present on the website (as may be inferred from the Parties’ evidence, namely the Complainant’s screenshot of June 24, 2020). The alleged criticism seems to have been added as an afterthought between that date and the date when the Response was filed, further calling its genuineness into question.
The Respondent has no direct relationship with any person who might, or might not, be able to invoke rights of free speech/freedom of expression under the laws of any particular jurisdiction (or indeed who might be able to invoke the fair use defence under the Policy, were it the registrant of the disputed domain name). The Respondent has no knowledge of whether any such person using its site might be able to invoke such rights, nor is it in any position to engage in any balancing exercise with the trademark owner’s rights. Even assuming a third party generated the page on the Respondent’s website in order to engage in non-commercial criticism, rather than the Respondent itself, the Respondent immediately proceeds to exploit the position commercially by registering and offering the disputed domain name for sale. In fact, the Respondent is an offshore company (Honey Salt Ltd., based in Turks and Caicos Islands) doing business, among others, in registering ".sucks" domain names and selling them.
In the circumstances of this case, the Respondent’s entire endeavour seems to the Panel to be a pretext for commercial activity. Section 2.6.3 of the WIPO Overview 3.0 notes that use may be fair if prima facie non-commercial, genuinely fair and not misleading or false, adding that incidental commercial activity e.g. fundraising may also be permitted. This does not apply here – the use is prima facie commercial, potentially furthering the ultimate commercial aims of the Respondent’s website, and it is definitely commercial in the sense of a proposed sale of the disputed domain name (the Respondent says it intends to develop the websites and to resell domains such as the disputed domain name “to parties that may wish to use [it] for expanded or enhanced commentary or feedback purposes on their own site”). In the present case, there is also doubt as to the genuineness of the criticism (a matter on which the Respondent must accept that it can never answer as it is not, nor does it act for, the party allegedly making the criticism). A useful discussion of the overall position is to be found in HAI Global v. Dane Rose, CAC 102016, June 25, 2018. This suggests that the assessment on rights and legitimate interests proceeds in light of available evidence including the website at the disputed domain name but is not a full assessment of the merits and demerits of the substantive criticism. It adds that such assessment will necessarily overlap with consideration of the wording of paragraph 4(c) of the Policy, excluding situations where there is intent for commercial gain etc. The Panel considers that this accords with its approach as outlined above – intent for commercial gain is present and there is no need to go further than that.
UPWORK INC. v. Sunny Kumar, CAC 101294, October 30, 2016 and Novartis AG v. BRANDIT GmbH, CAC 103013, May 26, 2020 are both decided by the same panelist and take broadly the same approach as each other, even using some of the same wording. These focus perhaps a little too much on EU law for this Panel (attracting the same criticism as those decisions which originally applied US First Amendment principles). Nevertheless, the cases apply an “all circumstances” view which the Panel believes is consistent with its own analysis above. Importantly, in each of these cases, the respondent, in whose favour the panel found, was the person seeking to make genuine criticism or to publish genuinely held views/commentary about the complainant. It was not a third party, as in the present case.
Finally, the Panel has reviewed Intesa Sanpaolo S.p.A. v. Robert Sloan, CAC 102267, January 24, 2019. The panel in that case notes that “it has been said time and time again in relevant decisions that to rely on the free speech defence, the site must be used solely for a real criticism or fan site and not for commercial purposes under the guise of a criticism site."
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