The UDRP and Criticism Sites

How to properly balance the commercial rights of a complainant with the free speech rights of a respondent has challenged a generation of Uniform Domain Name Dispute Resolution Policy (UDRP) panelists. Panelists have adopted a variety of approaches and consensus has been elusive.

Paragraph 4(c)(iii) of the Policy provides that a respondent may have a right or legitimate interest in a disputed domain name if the respondent is “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” The primary issue in the recent dispute regarding the StopSpectrum.com and SpectrumKills.com domain names, Charter Communications Holding Company, LLC v. Michael Presley, Forum Case FA2211002020166, December 12, 2022, “StopSpectrum.com”, is whether the commentary appearing at the StopSpectrum.com and SpectrumKills.com domain names qualifies as legitimate commentary or criticism of Complainant’s Spectrum business. In this dispute the Respondent did not appear and the decision was issue by a single-member Panel. Here, the Panel found that the commentary was not legitimate criticism but rather “derogatory” and “pejorative” and “indefensible and unproven abuse” and thus did not qualify for protection under 4(c)(iii).

The Panel’s determination raises several questions, including:

1. What differentiates legitimate criticism from abuse?
2. On what basis do UDRP panels disqualify purported criticism sites from the protection of 4(c)(iii)?
3. Is the UDRP the proper venue for distinguishing legitimate criticism from abuse and is it suitable for a UDRP panelist to be making such a determination?

In general, panelists have been cautious about assessing the legitimacy of commentary and hesitant to issue decisions that may conflict with fundamental free speech rights. Both parties to this dispute are located in the United States, where free speech is protected under the First Amendment of the United States Constitution that states in part that “Congress shall make no law ... abridging the freedom of speech”. Moreover, the United Nations, in its Universal Declaration of Human Rights, aspires to “a world in which human beings shall enjoy freedom of speech” and in Article 19, enshrines “the right to freedom of opinion and expression”. For the UDRP to be interpreted in a way that deprives U.S. respondents of a foundational constitutional right and parties across the globe of a fundamental human right, would inflect a grievous wrong on such a respondent and would turn the UDRP into a mechanism for oppression.

Legitimate Criticism or Abuse?

In StopSpectrum.com, it appears that the Panel errs in characterizing the commentary as abuse rather than as genuine criticism, even according to the Panel’s own definition (emphasis added):

The point is that if it is to be said that a criticism site is protected as free speech, it must first be shown that it actually is a criticism site, the emphasis being on the word “is”, as opposed to “is not”. If and when that conclusion is reached, the panel or a court can then decide if it also passes muster as an exercise in free speech and is protected for that reason. Here, the issue is what is the substance of the site or other content? Is it a criticism site?

In the present context, it is clear that “criticism” means the presentation of an opinion with enough substance in it to enable the recipient to understand what is being said against it so that it can reply to it. In the present case the substance of the content of the two webpages in question shows to the panel that its substance, intention and purpose is not to stimulate criticism or debate but to abuse and denigrate the Complainant and its employees and possibly others as well.

The Panel offers a highly restrictive view of what constitutes legitimate criticism. Under this definition, the statement, “Your company is awful” apparently lacks sufficient substance to qualify as criticism such that it would be considered abuse and therefore not eligible for protection as free speech.

The commentary appearing at stopspectrum.com/sample-page-2 (archived here) is the primary focus of the StopSpectrum.com dispute. The commentary is about a murder committed by a Spectrum employee and the trial that followed. The page is somewhat difficult to read as the content was apparently copied from a word processing program that embedded numerous HTML tags in the text. The content on the page (cleaned of the HTML tags) starts as follows:

Did you know that Charter Spectrum is sending violent criminals and thieves into your homes to install your Wi-Fi, cable and phones?

In Dec 2019, Betty Thomas, an 83-year old Charter Spectrum subscriber in Texas and lifelong Republican, was brutally robbed and murdered by a Charter Spectrum technician in her home. Betty’s family sued the company and a jury found Charter Spectrum guilty of gross negligence and felony forgery and awarded the family more than $7 BILLION in damages. And still, Charter Spectrum has not changed any of its policies or procedures to ensure this horrific crime does not happen again. Worse, they tried to cover it all up.

Charter Spectrum should be ashamed and all Spectrum customers should be terrified!!!!

Unfortunately, Betty’s case is not unusual. There are an overwhelming number of thefts, assaults, rapes and other criminal behavior that Charter Spectrum employees commit but you never hear about them because Charter Spectrum forces people to settle in secret. It is wrong and immoral and they need to be held accountable.

The Panel summarized the content on the site and characterized it as derogatory and pejorative (emphasis added):

However, what is clear from the extensive evidence submitted by Complainant is that Respondent as a matter of fact is using the domain names to support webpages in which Respondent has made a series of derogatory and other pejorative statements about Complainant and its employees. A page that is exhibited comes from the website to which <stopspectrum.com> resolves and it contains the assertion that Charter Spectrum is sending violent criminals into homes to install Wi Fi, cable and phones; that is has engaged in a cover-up; that there is an “overwhelming number of thefts, assaults, rapes and other criminal behavior that Charter Spectrum’s employees commit”; that some or all of this information is alleged to have come from a particular court case that is said to have taken place; that Complainant had committed “felony forgery”; that the information in question raised the question whether this was an inside job; asks the question why Spectrum consumers are not told that ” the techs are possible criminals” and makes other assertions of the same genre.

This case was covered by local and national news outlets. According to several news reports the jury found that a Charter Spectrum technician murdered a customer and a “Texas jury also found that Charter ‘knowingly and intentionally committed forgery with the intent to defraud or harm’ the plaintiffs by faking Thomas’ signature on a forced arbitration agreement after she had already died.”¹

The commentary appearing at the StopSpectrum.com domain name is substantial and based on findings of fact by a jury and news coverage of the case. It would appear to meet the Panel’s own criteria that the commentary contains “enough substance in it to enable the recipient to understand what is being said against it so that it can reply to it”. Further, the Panel was aware that the Respondent was commenting on a court case as the Panel notes in its decision that “some or all of this information is alleged to have come from a particular court case”.

The Panel erred is characterizing the commentary as “indefensible and unproven abuse” when it was, indeed, rooted in fact. This raises the question as to whether the Panel misapplied the UDRP to deprive the Respondent of the opportunity to post lawful genuine criticism at the StopSpectrum.com and SpectrumKills.com domain names.

Circumstances Where Protection is Not Granted

Despite the Panel’s apparent error in characterizing fact-based commentary as unproven abuse, such that, according to the Panel, the Respondent’s actions do not fall under the protection of 4(c)(iii), is there another basis the Panel could have used for denying such protection?

While Panelists acknowledge that under the Policy, genuine noncommercial criticism sites are protected, they have identified three circumstances that can support finding that a purported criticism site fails to qualify as either a “legitimate noncommercial” site or as a site making a “fair use of the domain name” entitled to protection under section 4(c)(iii).

One circumstance is impersonation. Some panels, but not all, will decline to grant a legitimate interest to a criticism site if the disputed domain name is an exact match of, or is so similar to, the complainant’s trademark that the domain name “impersonates” the complainant’s trademark in a manner that could create initial interest confusion on the part of the visitor. WIPO Overview 3.0 addresses this point in section 2.5:

Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry.

and again in section 2.6.2:

panels tend to find that this [using a domain name identical to a trademark] creates an impermissible risk of user confusion through impersonation.

For example, in the recent CollegeoftheDesert.com decision, discussed in ICA UDRP Digest 2.48, Panelist Kendall Reed found the use of a domain name that exactly matched the trademark to be impermissible impersonation.

Panels have adopted different approaches to the impersonation issue. In DoverDownsNews.com a straightforward comparison of the disputed domain name is proposed. In MomsDemand.org (discussed at length in ICA UDRP Digest 2.15), a more holistic approach is proposed that takes into account numerous other factors. Other Panels decline to adopt impersonation as a reason for denying protection under 4(c)(iii), with the view that free speech rights take precedence over initial interest confusion concerns.²

Another circumstance is that a panel may find that the criticism is not genuine, but is merely a pretext for an underlying commercial purpose, such that the respondent’s use of the disputed domain name is not, in fact, a legitimate noncommercial use entitled to protection under section 4(c)(iii). Indeed both DoverDownsNews.com and MomsDemand.org ultimately came to the conclusion that the purported criticism was a pretext to disguise the respondent’s commercial intent. A long line of .sucks cases also held that the criticism was not genuine but a pretext for a commercial intent. Finding that in these disputes the use was not for genuine criticism, the Panels ordered the transfers of the disputed domain names.

A third circumstance is tarnishment. Provision 4(c)(iii) states in part “without intent… to tarnish the trademark or service mark at issue”. A Complainant may frequently allege that criticism is an unfair attempt to tarnish its mark. But panelists do not often agree. Panelist David Bernstein addresses the characteristics of tarnishment in his often-cited decision regarding britanniabuildingsociety.org (D2001-0505), in which he states:

As for Complainant’s assertion of “tarnishment,” that phrase, too, has a specific meaning that does not apply here. Tarnishment in this context refers to such unseemly conduct as linking unrelated pornographic, violent or drug-related images or information to an otherwise wholesome mark.

Panelist Frederick Abbott in his decision regarding conciergeauctionscam.net (D2020-1020) notes that unflattering criticism is not tarnishment:

Merely referring to a trademark product or service using information that is unflattering to the trademark owner is not actionable tarnishment. Were that the case, the doctrine of fair use would be significantly undermined.

W. Scott Blackmer, in the phantomfireworksscams.com decision (D2021-4104), noted that under U.S. law tarnishment requires commercial use such that noncommercial use would not support a claim for tarnishment:

The Complainant alleges that the Respondent’s website “tarnishes” the Complainant’s mark. UDRP and trademark decisions treat tarnishment as a kind of trademark dilution, diminishing the value of a mark by false and negative association… There, as in the present case, all parties were located in the United States, where the concept of tarnishment does not apply to legitimate critical fair and noncommercial use of a trademark: “under Section 43(c) of the Lanham Act, there is no cause of action for trademark dilution (which encompasses both blurring and tarnishment) if a party is making a ‘[n]oncommercial use of a mark’ which is the case if the site is a legitimate gripe site.”

The U.S. Court decision in Smith v. Wal-Mart Stores, Inc., (537 F. Supp. 2d 1302, N.D. Ga. 2008), is consistent with Blackmer’s approach that noncommercial speech does not support a tarnishment claim, as, according to the LexisNexis case brief, the court held that “Smith’s slogans and graphics were scathing parodies, a form of noncommercial speech not subject to Wal-Mart’s trademark infringement or tarnishment by dilution claims.”³

The circumstances of the StopSpectrum.com dispute therefore do not appear to meet any of three circumstances noted above that would deprive it of protection as a genuine criticism site. There is no impersonation, as the StopSpectrum.com and SpectrumKills.com domain names immediately eliminate any possible initial interest confusion as to whether Spectrum itself is associated with the domain names. There is no allegation made, nor does the Panelist find, that the criticism is a pretext for an underlying commercial motive. Nor is the mark being tarnished by the noncommercial criticism found there.

Did the Panel in StopSpectrum.com nevertheless consider abuse to be a form of tarnishment? The answer appears to be “no”. The Panel makes no finding as to tarnishment. The noncommercial nature of the commentary makes a finding of tarnishment inapplicable. The Panel states that it “particularly relies on” the decision in TM Web Properties, Ltd. v. dlp / Donald seoane, Forum FA1909001861963 (October 15, 2019) “TM Web”, which it says has “facts not dissimilar” to the StopSpectrum.com dispute. Yet in TM Web, the Complainant was accused of being a “child rapist scammer”⁴ on no evidence, whereas the Respondent in StopSpectrum.com grounded its criticism in the findings of fact from a jury trial. Further, the Panel cites to TM Web for the proposition that “Criticism, even if defamatory, does not constitute tarnishing and is not prohibited by the Policy.” Rather, the Panel in StopSpectrum.com appears to be proposing that “abusive commentary” is another circumstance that deprives a respondent from qualifying for the protection offered by 4(c)(iii).

Is the UDRP the Proper Venue for Assessing the Legitimacy of Criticism?

Panelists are generally cautious about passing value judgments on critical content and generally decline to find that critical content, in itself, is a violation of the UDRP. Even criticism that is “libelous is not prohibited by the Policy”, according to David Bernstein in his decision regarding HJTA.com (D2004-0014) (emphasis added):

Finally, Complainant argues that Respondent lacks a legitimate interest because Respondent’s website makes untrue and misleading statements regarding HJTA, and Respondent makes “vitriolic, libelous” statements about HJTA in email correspondence. To be clear, the Panel has not considered the truthfulness of Respondent’s website content - it may be true that Respondent’s statements are libelous under United States law. Indeed, given the long history of litigation between the parties, the important free speech U.S. law interests implicated by this dispute, and the complexity of the underlying facts, this may well be a case more appropriate for resolution in a U.S. court than in this administrative proceeding, which provides no discovery, a limited evidentiary record, no live testimony at which credibility determinations can be made, and very tight deadlines for submissions and decision. Cf. Thread.Com, LLC v. Poploff, Case No. D2000-1470 (WIPO January 5, 2001). Nevertheless, this Panel is required to rule as best it can on this record, Bootie Brewing Co. v. Ward, Case No. D2003-0185 (WIPO May 28, 2003), and has concluded that fair use criticism like Respondent’s, even if libelous, is not prohibited by the Policy, as interpreted in the United States. Cf. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, Case No. D2000-0662 (WIPO September 19, 2000) (protection for genuine criticism sites is provided by Policy’s legitimate interest and bad faith prongs).

The Policy is designed to prevent abusive cybersquatting, but under United States law, it cannot extend to insulating trademark holders from contrary and critical views when such views are legitimately expressed without an intention for commercial gain. That is true even if the critical views are unfair, overstated, or flat-out lies, and even if they are posted at trademark.TLD websites. Use of the Policy to provide such insulation may undermine freedom of discourse on the Internet and undercut the free and orderly exchange of ideas that the First Amendment seeks to promote.

Panelist Brian Winterfeldt cites to Bernstein’s HJTA.com decision in the ivy-lane-living.com dispute (D2018-1256), noting that –

even if the gripes and commentary may be untrue—the proper cause of action in that circumstance would be one for defamation, not dilution or cybersquatting.

Similarly, Panelist Frederick Abbott, in his above cited conciergeauctionscam.net decision, held:

In this Panel’s view, UDRP administrative panels simply do not have the authority nor, given the summary nature of UDRP proceedings and the rather limited procedural tools available to them, are they equipped to ascertain whether any specific content posed to a website is truthful or not, and, if untruthful, is actionably defamatory and injurious to a complainant. Such conclusions are properly determined through a sufficiently exhaustive factual-based investigation accomplished through litigation in a court of competent jurisdiction.

Panelist Andrew Lothian in the recent akeliusslumlord.com dispute (D2022-3275) conducts a “straightforward” analysis of facts that appear similar to those in the StopSpectrum.com dispute in making a determination that the complaint must be denied (emphasis added):

In the present case, the analysis is relatively straightforward. The disputed domain name does not impersonate the Complainant by repeating the Complainant’s trademark either on its own or in a way that might suggest sponsorship or endorsement by the Complainant…The Complainant makes no suggestion that this website, or the Respondent’s forwarding of the disputed domain name to such website, is a pretext for commercial gain or has been carried out for other purposes inhering to the Respondent’s benefit… While the Complainant asserts that the use of the disputed domain name constitutes an attempt to smear the Complainant’s business and reputation, the Panel is not in any position to assess whether the terms of the press release on the website to which the disputed domain name points are accurate and reasonable on the one hand or false and merely part of a smear campaign on the other. In any event, the Panel does not require to make such an assessment in terms of its analysis under the Policy (see, for example, the comments of the panel in MUFG Union Bank, N.A. v. William Bookout, WIPO Case No. DME2014-0008). Furthermore, as the panel noted in Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505, “Claims sounding in commercial libel must be brought in other legal venues.”...The Complaint therefore fails.

As the above survey demonstrates, which is indicative of the general consensus, most panelists do not view the UDRP as an appropriate venue for assessing the validity of criticism. These panelists hold the view that they are not in a position to make such an assessment, and further, that strong criticism, even if libelous, is not prohibited by the Policy. If there is a cause of action to be brought it is not for cybersquatting which is the proper focus of the Policy but it must be brought in another legal venue.

Does the UDRP Adequately Protect Free Speech?

Current UDRP jurisprudence empowers panelists to both assess the genuineness of criticism and to balance free speech rights against the commercial rights of complainants. This is perilous territory that could lead to the UDRP being misused to suppress genuine criticism.

While many panelists are hesitant to wade into these waters, others plunge right in. The UDRP does not prevent a UDRP panelist from terminating rights to a domain name on which the Respondent claims to be publishing genuine criticism.

What are the pitfalls that could result in the UDRP undermining protected free speech? The following four circumstances can lead to the UDRP being misused to suppress genuine criticism.

First, some panelists, perhaps in particular those who are not that familiar with the U.S. legal system, may have a misconception as to the scope of free speech protections under the U.S. Constitution.

The Panel is StopSpectrum.com recognized the Constitutional considerations:

The question therefore arises, although it has not been submitted by Respondent, as it has not defended the proceeding, whether the contents of each of the two exhibits is a form of free speech presented in a criticism site which is protected by virtue of the First Amendment to the United States Constitution.

The Panel argued that the content at StopSpectrum.com was not constitutionally protected free speech because the Panel held that protection is limited to criticism that meets the following definition:

“criticism” means the presentation of an opinion with enough substance in it to enable the recipient to understand what is being said against it so that it can reply to it.”

This is an overly restricted view of what is protected free speech under the U.S. Constitution. According to many sources, including the following article on the First Amendment, https://bipartisanpolicy.org/blog/back-to-basics-on-the-first-amendment/, U.S. Courts are reluctant to constrain free speech rights and have treated actions as extreme as burning the U.S. flag and hurling abuse at police officers to be protected free speech. Commenting on a news article would seem to fall well within the bounds of protected free speech.

Second, some panelists entrusted with implementing the Policy are not much troubled that their decisions could violate a respondent’s free speech rights, and show little concern for the burden placed on a respondent who would be required to go to court in order to attempt to overturn an unjust decision.

The Panelist in StopSpectrum.com declares that its transfer decision does not affect the Respondent’s “free speech rights in any way at all”, for:

the Panel’s decision does not affect the Respondent’s free speech rights in any way at all, as it retains all of its rights to sue in the courts under whatever cause of action it may wish to pursue.

In the DoverDownsNews.com decision, Bernstein discusses that Respondents who believe they have been deprived of their First Amendment rights under the U.S. Constitution may seek judicial review by a U.S. Court without acknowledging the huge burden this would impose (emphasis added):

For example, if Respondent takes issue with the Panel’s decision (which, to be clear, is applying the UDRP, not United States trademark law), Respondent remains free to seek judicial review by filing an action in a state or federal court in the location of mutual jurisdiction (here, Fort Davis, Texas, which is within the jurisdiction of the United States District Court for the Western District of Texas) within ten business days of the Panel’s decision in order to prevent transfer. In any such action, Respondent would be free to argue that his conduct, while possibly violative of the UDRP’s impersonation test, is nevertheless permitted under the Lanham Act because the initial interest confusion here does not violate the Lanham Act, or that his conduct is protected speech under the First Amendment of the United States Constitution. The court would thereafter have the opportunity to weigh all the likelihood of confusion factors in considering how to treat the initial interest confusion in this case, and could balance Respondent’s potential First Amendment interests against Complainant’s concerns that Respondent’s conduct is causing confusion of consumers. Both parties would be afforded the opportunity to engage in discovery and to confront witnesses—procedural mechanisms unavailable in UDRP proceedings.

As a practical matter, judicial review may be out of reach for most Respondents. Imposing tens of thousands of dollars of legal expenses on a Respondent seeking to overturn an unjust transfer decision serves only to compound the harm. To suggest that it would be a trivial undertaking to seek judicial review is to adopt a cavalier attitude towards the hardships one’s overreaching decisions may inflict on the innocent.

Third, certain panelists in their zealousness to root out online wrongdoing, lose sight of British jurist William Blackstone’s well-known dictum, “it is better that ten guilty persons escape [punishment] than that one innocent suffer.”⁵ Unfortunately, some of those charged with implementing the UDRP are doing the reverse, in accepting the likelihood that some innocents will be harmed in order to pursue the guilty.

Recent scholarship proposes a further refinement, “The more concerned we are with wrongful convictions, the higher the bar should be.”⁶ The community that has a stake in the UDRP ought to be quite concerned that the UDRP could be used to undermine Constitutionally protected and globally valued free speech rights and we should do all that we can to limit the scope of the UDRP so that it does not come into conflict with the U.S. Constitution and with free speech protections across the world.

Fourth, certain panelists pursue consistency for consistency’s sake, despite the possibility that a consistent approach may come at the cost of violating Respondent’s legal rights.

The UDRP’s treatment of criticism sites is particularly challenging because it attempts to apply a uniform global standard to an issue where national laws take very different approaches. As expressed by David Bernstein in his DoverDownsNews.com decision, “it is impossible for UDRP decisions to be internally consistent within the body of all UDRP decisions while also being consistent with local law.”

As Bernstein noted, this issue requires a judgment call for which there is no clearly correct answer. Which is preferable - for the UDRP to be internally consistent, or to be consistent with local law? Bernstein highlights the benefits of an approach that is consistent with U.S. law, for it aims:

to make the outcome of UDRP proceedings consistent with national law, to prevent forum shopping, and to avoid situations in which national courts would repeatedly overrule UDRP panel decisions, which could undermine the perceived reliability of the UDRP as a fair, reliable forum for resolution of domain name disputes.

Bernstein says that this is his personal preference, yet although-

arguably the correct approach as a matter of law, policy, and fealty to the UDRP, this Panel strongly believes that it is equally important for the UDRP to articulate a consistent view rather than to allow the schism between these views to fester.

My view is that Bernstein is correct up to this point. Yet, especially as approximately half of UDRP disputes involve a U.S.-based party, I believe he errs in not more forcefully advocating for a consistent view of the UDRP that is in harmony with U.S. law, rather than for a consistent view of the UDRP that is in possible conflict with U.S. law.⁷

A Solid Foundation Rather than a Perilous Over-Reaching

The UDRP is a simplified procedure to deal with clear-cut instances of cybersquatting. To the extent that the UDRP works, it works because it distills legal principles that are consistently adopted across much of the globe. That some of those charged with implementing the UDRP are intentionally pushing the UDRP into conflict with free speech protections embedded in the U.S. Constitution and the United Nations’ Universal Declaration of Human Rights is a regrettably misguided overreach. It is a better course of action to leave some wrongdoing to be handled by other venues, rather than to increase the risk of convicting the innocent under the UDRP, and in so doing positioning the UDRP as superior to the U.S. Constitution and other national laws.

It may help to take a step back and to recognize that the UDRP is a system of justice that is flimsy in the extreme. The community has no say over who is appointed as administrators at the various providers, has no say over who are accredited as panelists, has no say as to which panelists are assigned to which single member panel disputes, has no say over how panelists are trained, and has no say over the development of the Jurisprudential Overviews that are now being championed as a substitute for case law. There is no binding case precedent, each panelist is a law unto themselves, and the key determinations are often the result of highly subjective inferences. The entire system has been evolving with almost no outside accountability or oversight for over 23 years.

The UDRP is, at most, suited to one task—to deal with instances of clear-cut cybersquatting. The UDRP should be interpreted conservatively, rather than expansively, to avoid inadvertently encroaching on protected free speech rights, especially given the variability, subjectivity, and limited procedural mechanism with which the UDRP is interpreted and applied. To rely on the UDRP to adjudicate nuanced issues of what constitutes protected free speech is to misapprehend the nature, purpose and capabilities of the UDRP.

The UDRP has a free speech problem.