Out-Law News 3 min. read
23 Aug 2007, 12:54 pm
In arguments before the World Intellectual Property Organisation (WIPO)'s domain name arbitration panel, Australian body Consumer Protection described the man, Stephen Cleeve, as a con man. Its website contains links to and excerpts from a number of articles from the BBC, News of the World and others detailing Cleeve's business exploits.
Cleeve argued that the domain name was being used to tarnish the reputation of Cleeve and his businesses and to disrupt those businesses.
Consumer protection said that its "website does not tarnish the Complainant’s [Cleeve's] name as it is the activities of the Complainant that tarnish his name not the reporting of them".
Cleeve argued that "the Respondent [Consumer Protection] continues to use the domain name in dispute and continues to intentionally degrade and smear the name of the Complainant and intentionally harm his business activities".
Consumer Protection said, though, that Cleeve is free to take legal action over the content of the site, but that that should not alter its right to own the address. "If there are libellous contents on the Respondent website, the Complainant should take the issues up with the appropriate court but no action has been taken, only threatened, as the Respondent believes that there are no grounds for any action," it said in the case.
In order to gain control of an internet address through the WIPO dispute resolution process, a complainant must satisfy three tests. That person must show that the domain name in dispute is identical or confusingly similar to a trade mark or service mark held by the person; that the owner of the address has no rights or legitimate interests in the domain, and that it was registered and is being used in bad faith.
In order to gain control of the domain the person must show that all three conditions are satisfied. Failure on just one will mean that the original owner can keep the domain, though both parties are free to resort to court action after a decision from WIPO.
The WIPO panel said that the domain was identical to Stephen Cleeve's trade mark in his own name, which he registered in 2006. It found, though, that Cleeve failed to show that Consumer Protection did not have legitimate rights in the name.
"The Panel finds that the Respondent’s use of the disputed domain is to establish a website for criticism and commentary about the Complainant’s business activities. This constitutes legitimate commercial use and fair use within the meaning of the policy," said the ruling.
Cleeve also failed to prove that the domain was being used in bad faith, in part because his trade mark registrations took place more than a year after the domain name was registered by Consumer Protection.
"When a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right," said the ruling.
"The merits of the Complainant’s assertions that the Respondent’s claims are defamatory and libellous are beyond the scope of the present proceeding and to the extent that the Complainant wishes to pursue the issue should in the panel’s view be adjudicated in an appropriate judicial forums," it said.
Struan Robertson, editor of OUT-LAW.COM and a technology lawyer with Pinsent Masons, said the case could make others think about their own online identity and brand management.
"If you Google someone's name or brand and the first results are negative, as was the case here, you have a problem whether the comments are true or not," he said. "Consequently we're seeing a shifting focus in the Search Engine Optimisation business. It's becoming an increasingly important aspect of wider brand management and protection strategies and it's wrong to always see it as just a marketing exercise."
"SEO should not just be about getting your site ranked higher than all rivals," said Robertson. "There needs to be attention on the ranking of third party results that comment on your brand. Some firms have begun to specialise in helping their clients to promote the good third party results and, in doing so, burying the bad."