BioCryst Pharmaceuticals, Inc., of Birmingham, Alabama, challenged registration of domain name www.biocrystpharmaceuticals.com. Respondent used domain name to criticize the Complainant’s business.

BioCryst Pharmaceuticals, Inc. v. Kumar Patel, Case No. D2005-0674

Panelist Daniel Gervais denied relief, stating:

The use of the domain name to criticize a company is prima facie fair use. The Respondent is entitled to use the Internet to exercise his free speech rights and express his opinion in this way, subject to other laws of course (copyright, fraud, libel, etc.). However, by reflecting the exact trade name and trademark of the Complainant, the Complainant argues that Respondent’s intent is to tarnish the mark. The Panel acknowledges that the distinction between constructive criticism and tarnishment can be a difficult one to draw (See Shell International Petroleum Company Limited v. Alfred Donovan, WIPO Case No. D2005-0538). In this case, the Complainant did not show that the Respondent’s actions are for “commercial gain” or that they are intended to tarnish the Complainant’s mark as required by Paragraph 4(c)(iii) of the Policy.

This case is different from McLane Company, Inc. v. Fred Craig, WIPO Case No. D2000-1455, because the Respondent is not using the Complainant’s mark to criticize the industry in general. Its criticism (on the site to which the domain name resolves) is very clearly directed at the Complainant.

The Panel also noted the comments made by the learned panelist in The Royal Bank of Scotland Group and National Westminster Bank v. Pedro Lopez and A&A System Solutions and Alberto Rodriguez, WIPO Case No. D2002-0823, who stated the following: “...while one must concede that criticism per se is not a commercial use and that a criticism site may well be entirely legitimate, an argument can be made that a non controlled use can be anti-commercial when it has the effect of driving regular customers away from one’s business. Having said that, the Panel also noted that the Respondents have used domain names that are identical and substantially similar to Complainants’; trademarks to exercise their freedom of expression and this has the direct consequence of tarnishing Complainants’; trademarks.” See also The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez, WIPO case No. D2003-0166. The instant case is different because the use is apparently “controlled”. It is no doubt possible that uncontrolled use of domain name would indeed cross the above-mentioned border between tarnishment, on the one hand, and constructive criticism, on the other. Once use of domain name crosses that line, perhaps one can no longer claim a legitimate interest under the Policy. The facts in the instant case do not support such a finding, however.