A recent UDRP case between Phantom Fireworks Showrooms, LLC / Phantom I.P., LLC v. Frank Elliott / Jurassic Fireworks, Seasonal Sales Inc. is a good reminder to brand owners that not all domain names featuring trade marked terms will result in a successful UDRP complaint..

Background

Phantom Fireworks Showrooms, LLC / Phantom I.P., LLC (“Phantom”) filed a UDRP complaint against Frank Elliott and his related company Seasonal Sales Inc. (“FE”) to recover the domain <phantomfireworksscams.com> (“Domain”). Unlike the majority of UDRP cases, both parties were aware of each other prior to Phantom filing the complaint. At its core, Phantom’s reason for filing the complaint was a result of allegations made by FE concerning Phantom’s alleged deceptive advertising practices – that is, inflated pricing via a 2-for-1 offer. FE registered the Domain to warn Phantom’s existing and prospective customers of Phantom’s advertising practices. Both Phantom and FE ran their own respective businesses specialising in fireworks.

Criticism

Under Policy, Paragraph 4(c)(iii), a respondent can claim a legitimate interest in a domain if it was registered for the purpose of: “…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.” In this case, the panelist held that the Domain amounted to a genuine criticism site, based on two factors i) the prefix of the Domain, featuring the complainant’s trade mark, PHANTOM FIREWORKS plus the term “scams” and ii) that the content displayed on the Domain showed no apparent intent to create commercial gain for FE.

The above decision was not unsurprising to this writer, as parties should be able to comment and criticise in line with their human right to exercise free speech. This is coupled with the extensive guidance posted by WIPO in their Overview 3.0: “2.6 Does a criticism site support respondent rights or legitimate interests?” (found here). Although a brand owner may not like what people are saying about them, it does not entitle them to the domain, even if the domain features a trade mark. Similar frustrations have been found with “sucks” domains (See: San Lorenzo S.P.A. V. Domain Admin, Privacy Protect, Llc / Hitler Neosilil. Case No. D2017-2426).

Tarnishment

Phantom alleged that FE’s Domain “tarnished” their brand because of the alleged false allegations made. The term “tarnish” is explicit within in the text of Policy, Paragraph 4(c)(iii) (see above), but following cases such as Titan Enterprises, tarnishment refers to: “…such unseemly conduct as linking unrelated pornographic, violent or drug-related images or information to an otherwise wholesome mark”. In the present case, whilst FE was persistent in his efforts to warn people about Phantom’s advertising practices, their activity fell into fair use criticism, rather than an act of tarnishment.

Reverse Domain Name Hijacking (“RDNH”)

FE further raised an allegation of RDNH, which is laid out under Policy, Paragraph 15(e): “…after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. The panelist in this case held that RDNH was not applicable, as he did not believe FE’s case was without merit from the start (although he did mention that more consideration should have been given to Policy, Paragraph 4(1)(ii)).

Take Home Points

Whilst not a ground-breaking decision, this case does highlight some crucial points which brand owners and their representatives should consider before filing a UDRP, namely:

1. More care should be taken when faced with commentary and criticism domain names. The situation here may have been different if the Domain resolved to content which tried to encourage Phantom customers to go to FE’s store (a bait-and-switch situation) or if it profited in some other way e.g., pay-per-click to third party websites;
   
   
2. Tarnishment is a term which would not cover instances of fair use criticism;
   
   
3. RDNH carries a high bar to be successful; merely losing a case will not be enough; and
   
   
4. The UDRP is not the correct forum for cases where a party disagrees with negative statements made about them. Such an action may be more suited to a claim in trade libel or some other form of unfair competition relief depending on the jurisdiction that the conducting is taking place in.

We have an expert online brand enforcement team who advise on domain disputes such as this on a regular basis. If you require advice on domains, please get in touch with Stobbs at www.iamstobbs.com or on +44 (0)1223435240.