A blogger [http://acro.net/blog/2008/08/03/aspis‑wipo/] has posted a denunciatory comment about a majority decision that shuts down a criticism site, <aspis.com> in a case entitled Aspis Liv Försäkrings AB v. Neon Network, LLC, D2008‑0387 (WIPO June 2, 2008) (Complainant, Swedish; Respondent, U.S. Resident of Greek origin). The comment was picked up and approved by The Legal Satyricon [http://randazza.wordpress.com/] who applauds the dissenting member for being "right on the money." The majority ruling deserves a more careful look at what called forth such condemnation by the first blogger and censure from the second. What principle of law did the majority apply that in the bloggers' views violated the respondent's rights? Domain name jurisprudence is not based on U.S. law but rather on principles drawn from an accepted lexicon of law recognized Internationally. It has its own vernacular.
The Respondent in Aspis argued that he was using the domain name legally as a criticism website, thereby bringing himself within the safe harbor of ¶4(c)(iii) of the Policy. The majority agreed that the web site contained non‑commercial criticism ‑ "[t]here is little doubt in this case that the Respondent is operating a genuine criticism site" ‑ but disagreed that it was legitimate because the domain name was identical to the Complainant's trademark. The fundamental disagreement between the Panel's members was that the majority is of the view that the position that has prevailed outside of the U.S. is the correct one on this issue.
What the majority is talking about is a split of views on the application of ¶4(c)(iii) of the Policy, whether it was intended as a defense for respondents who register as domains a name that is identical to a complainant's trademark. The split is registered in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Paragraph 2.4. There are two constructions of the provision. Construction (and View) One holds that the rules to be applied should be uniform regardless of the residences of the parties. Construction (and View) Two holds that the parties should be subject to local law. The difference is critical to the outcome of the proceeding. If the defense is meritorious, the complaint must be dismissed because the complainant will not have carried its burden on ¶4(a)(ii) of the Policy, that the respondent has no rights or legitimate interests.
The majority in Aspis concluded that there was "no compelling justification for the importation into the Policy of local law on the question of rights or legitimate interests. This is an autonomous concept that should be interpreted consistently under the Policy, regardless of the geographical location of the parties," citing 1066 Housing Association Ltd. v. Mr. D. Morgan, D2007‑1461 (WIPO January 18, 2008). Moreover, there "is even less justification ... for imposing national law in a case such as the one currently before the Panel where the parties are not both located in the same jurisdiction." Interestingly, the presiding panelist in Aspis was the sole panelist in 1066 Housing Association.
The emphasis in the Aspis dissent on local law is essentially a UScentric view of the Policy. Generally U.S. courts are more protective of non‑commercial free speech than other countries and U.S. based panelists have taken the position that it should make no difference whether the domain name is <trademark.com> or <trademarkstinks.com> if the respondent's speech is what it purports to be. Particularly strong on this construction is Howard Jarvis Taxpayers Association v. Paul McCauley, D2004‑0014 (WIPO April 22, 2004) (<hjta.com>). A number of panelists have attempted to reconcile the different views, but as one can see in Aspis the division is fundamental. One proposal that sounds eminently reasonable, but was unpersuasive to that majority, and would be sure to delight the bloggers who triggered this case review, is contained in the dissent in Richard Starkey v. Mr. Bradley, FA0612000874575 (Nat. Arb. Forum February 12, 2007) (<ringostarr.mobi>). The dissenting member repeated a position that he espoused as the sole panelist in Sermo, Inc. v. CatalystMD, LLC., D2008‑0647 (WIPO July 2, 2008) (<sermosucks.com>, complaint denied). He proposed the following:
If both parties are resident in the same jurisdiction, then it seems wholly appropriate to consider the national laws of that jurisdiction since, presumably, those laws govern the parties' conduct, legal rights, and potential liabilities. However, where there is some question about the laws that may apply [because the parties are resident in different countries], then a Panel should also consider the location of mutual jurisdiction, and the conflict of laws principles that would be applied by courts in that jurisdiction, since that is the jurisdiction in which the courts may be asked to consider the parties respective rights if a challenge is filed under Paragraph 4(k) of the rules.
Selecting a mutual jurisdiction is a procedural requirement imposed on the complainant as a quid pro quo for access to the benefits of the Policy (defined in the Policy at paragraph 1 of the Rules). In Richard Starkey, the parties are British subjects, but the complainant has a U.S. address and selected as the venue for mutual jurisdiction the location of the registrar in Scottsdale, Arizona. The dissent would have applied U.S. law and, as he did in Sermo, deny the complaint based on strong policy, free speech grounds enforced under U.S. law. The majority applied the "autonomous" principle to find in favor the complainant.
The majority in Aspis as in Richard Starkey was similarly unpersuaded. Its position is that the basic difficulty with using a domain name that is identical to a trademark is that in most cases the domain name because of its identical nature will be perceived by the public as being in some manner authorised by the trademark owner. Essentially, by adopting that domain name the registrant is making a false representation to the world as to who he is.
What we are witnessing in these cases is a fraternal debate about the balancing of rights to ownership of domain names. The majority in Aspis applied autonomous law, perhaps too doctrinally given the particular facts in the case, to make a statement that UDRP is forging its own jurisprudence. As far as the dissent in Aspis is concerned it is both higher in decibel and less persuasive than the dissent in Richard Starkey. As a footnote, the dissent in Richard Starkey also wrote the decision in Howard Jarvis.
The problem in there being a split on this issue is that the parties are at the mercy of chance, in getting a panelist who subscribes to one or the other position ‑ what if a complainant drew a Bernstein and a respondent a Harris! ‑ thereby undermining what is most urgent in law, "some degree of predictability,"Time Inc. v. Chip Cooper, D2000‑1342 (WIPO February 13, 2001). Verdicts the majority held "should consist of more than, 'It depends what panelist you draw'."