Whether domain names that blacken third-party brands should be used to host protest sites (eg, "walmartsucks.com") has long divided UDRP panellists. Nominet experts have more consistently allowed such domain names where not inherently confusing. Now, though, the predictability of Nominet's procedures may become equally bedevilled following the decision in ihateryanair.co.uk, on the question of when fair use for criticism becomes unfair where a protest site hosts commercial links (Ryanair Ltd. v Robert Tyler, Nominet, D8527).
Protest Site Takes Off
In Ryanair, the respondent registered the domain name ihateryanair.co.uk in February 2007, linking it to a website highly critical of the much-maligned complainant airline. In addition to content slating Ryanair for slipshod safety standards and "appalling" customer service, the website contained links to websites for competing airlines, including British Airways and Virgin Atlantic.
Between January to May 2010, the respondent added commercial links to other, unrelated websites offering travel insurance and foreign currency exchange services, from which it derived click-through income amounting to £322.
Ryanair brought a complaint before Nominet, alleging that ihateryanair.co.uk was similar to its RYANAIR trademark, which it had registered in the UK and as a CTM, and that the domain name was, in the respondent's hands, an abusive registration. Inter alia, Ryanair claimed that the content of the website was unfairly denigratory and defamatory, and that the provision of commercial links on the site meant that the domain name was being used in a manner that took unfair advantage of the complainant's trademark rights.
In reply, the respondent argued that before it had learned of the complainant's objections it had made a "legitimate non-commercial or fair use" of the domain name in connection with its protest site. It noted that Nominet's Policy defined "fair use" as including "sites operated solely in tribute to or in criticism of a person or business." In the respondent's submission, criticism was the sole purpose of its website, and the provision of a small number of commercial links was entirely ancillary. The links had been removed once the complaint was brought, and in any event the small amount of click-through revenue had been more than offset by the respondent's costs in running the website and defending against the complaint.
A Bumpy Landing
The Nominet expert ruled at the outset, albeit "with some hesitation," that ihateryanair.co.uk was similar to the RYANAIR trademark. She acknowledged that no one would be confused into assuming a link, but the threshold test under Nominet's Policy was a simple one, leaving issues like confusion to be assessed in the context of abusive registration.
From that point on, the issues grew more complex. The expert acknowledged that some of the content on the respondent's website had been highly critical of Ryanair, to say the least, but observed that the respondent was free to use a non-confusing domain name to post content urging Internet users to fly other airlines. This was part and parcel of having a free Internet; unless the content was libellous or defamatory, the complainant could not stop it, and those questions were well outside the scope of these proceedings.
What gave the expert pause, though, was that the respondent's website had contained some commercial links. It was clear that the links providing click-through revenue (the ones relating to travel insurance and foreign exchange) had only been added three years after the site had been launched, and had been removed when the complaint was filed. However, the fact that they had been added at all took the site out of the realm of a pure protest site, in her view.
Even though the click-through links had earned the respondent only a paltry sum, which had been more than offset by website running costs, the expert considered that the efficacy of the links as revenue-generators had been based on the presence of the RYANAIR trademark in the disputed domain name, because that is what ultimately drew traffic to the respondent's website. The expert ruled that the click-through links took unfair advantage of the complainant's rights, and consequently found that the domain name was an abusive registration.
It is curious that this decision turned on the respondent's links to websites offering services outside the scope of the complainant's business, while the expert seemed comparatively unmoved by the links to competitor airlines. On this the expert was sanguine, remarking only that "it is perhaps to be expected that information on alternative options will be made available" on a criticism website.
Surely, though, the offering of links to third-party providers of competing services (as opposed merely to identifying and discussing them), is as concerning as, or even more concerning than, the respondent's links to third-party sites in different commercial fields. While the respondent may not have stood to gain commercially from the provision of the links to competitor airlines, nonetheless its website had arguably acquired a commercial purpose in actively assisting Internet users to obtain competing services from another provider. It seems ironic that only the links from which the complainant did not stand to lose any business were the ones which brought the domain name down.
Had this case been a UDRP matter, however, it may not have cleared even the first hurdle. Under the UDRP, a disputed domain name must be identical or confusingly similar to the complainant's mark. Many would agree that that there is no reasonable likelihood that anyone would be confused into thinking that a domain name such as "ihateryanair" was actually linked to the airline. Even in this case, the panel felt some self-avowed hesitation in finding basic similarity; how less likely, then, that it would have been found to be confusingly similar under the UDRP.
Nonetheless, UDRP panellists are divided on whether there is confusing similarity where domain names incorporate a complainant's trademark and a pejorative term, and the edges of the three-part test have sometimes been blurred where panellists have been influenced by the nature of a domain name's actual use rather than assessing whether a domain name and trademark are inherently confusingly similar (see for example Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477).
In some ways the Nominet Policy has the advantage of flexibility over the UDRP, since whether a domain name is confusingly similar to a trademark is placed, some might argue, more properly within the context of whether the domain name is an abusive registration. This avoids the temptation to elide tests, such as inherent confusingly similarity and the respondent's rights or legitimate interests in a domain name. Nonetheless, it is clear from the outcome of this case that even the Nominet Policy is not without problems, since it is hard to see what the difference is between commercial links to competitors and commercial links to others on a protest site. The expert made the rather Delphic observation that "in certain circumstances, fair commercial use is possible," but it is not entirely clear whether or how that should explain the acceptance of the links to competitor airlines in this case.
This issue is likely to be of significant interest to those operating protest sites, who may be interested in using the popularity of their sites to recoup running costs by the provision of commercial links. It is likely to be equally interesting to brand owners challenging domain names linked to such sites, which can do much damage to brands and their image. The fact that every case is considered on its own merits means that there is still everything to play for, and unfortunately no clear answer as to where to draw the line.