Question: The UDRP's 4(c)(iii) limits a domain name holder's fair use or free speech defense in cases of tarnishment, a term of art from American law. What do you interpret the word tarnishment in 4(c)(iii) to mean and do you support its presence there?

Nominee Replies

Donald Langenberg - posted on 2000-09-24 10:59:29 Where's my lawyer when I need him? Seriously, this legal lay person would simply comment that, if indeed tarnishment is a term of art from American law, without exact (or near-exact) equivalent in other legal systems, then I think it requires further careful consideration. Why? Because the Internet and ICANN are intrinsically international, and that fact ought to be reflected in their operations to the extent possible. Emerson Tiller, J.D., Ph.D. - posted on 2000-09-23 21:40:27 I cannot support its presence in the UDRP. UDRP 4(c)(iii) is intended to be a defense against a claim of cybersquatting. That provision states: *4(C)(III). HOW TO DEMONSTRATE YOUR RIGHTS TO AND LEGITIMATE INTERESTS IN THE DOMAIN NAME IN RESPONDING TO A COMPLAINT. ... ANY OF THE FOLLOWING CIRCUMSTANCES, ..., SHALL DEMONSTRATE YOUR RIGHTS OR LEGITIMATE INTERESTS TO THE DOMAIN NAME...: (III) YOU ARE 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.* Unfortunately, this is a confusing provision, but it can be read to mean that protest sites (such as walmartcanadasucks.com) are not legitimate because they tarnish the trademark. Of course, by their very nature protest domain names are supposed to tarnish the trademark. That is the purpose of protest speech. One ICANN arbitrator discussing the tarnishment issue explained that :*It is beyond the scope of the present adjudication to consider any such issues as the boundaries of free speech ... The admitted nature of the use of the domain names ... includes alternative views and indeed critical views concerning ... [the trademark holder] and its activities. The Panel holds such activity amounts to tarnishing the activities associated with the trademark... . Therefore, ... [the domain name owner] does not establish any rights or legitimate interests ...[I]t is no rebuttal for ... [the domain name owner] to assert that any disruption is merely a consequence of him publishing his view of the truth.* UDRP 4(c)(iii) needs to be changed. Protest speech in domain names and on websites must not be encumbered by the UDRP. Lawrence Lessig - posted on 2000-09-22 16:48:26 I do not believe ICANN should be requiring policies (such as UDRP) which advance a single country's, or small set of countries', view of intellectual property law. ICANN is not a law maker; nor should it get in the business of enforcing the laws of others. So no, I don't support its presence, or the UDRP in general.