In a recent ruling under the Nominet DRS, independent expert Keith Gymer has found against a claim from the owners of Optical Express, DCM (Optical Holdings) Limited, about the domain name ‘opticalexpressruinedmylife.co.uk’. The ruling supports the view that using a domain name conveying a critical message in association with a specific name or trade mark is not automatically to be considered as inherently unfair or amounting to an abusive registration.
The background to the case is that the person registering the opticalexpressruinedmylife.co.uk domain name, Sasha Rodoy, was something of a campaigner on the subject of botched laser eye surgery. She had previously registered the domain name ‘optimaxruinedmylife.co.uk’ and set up a web site inviting other patients with post-operative problems associated with laser eye surgery (by Optimax) to contact her. She believes that many more patients suffer adverse effects following laser eye surgery than are admitted by the industry and has contacted MPs and launched an e-petition to raise awareness of the apparent dangers of laser eye surgery and to call on the Government to legislate to impose more controls on the industry. She claimed that she was urged to set up a companion site under the domain name ‘opticalexpressruinedmylife.co.uk’ to match her original site at ‘optimaxruinedmylife.co.uk’.
The complainant had rights in the name Optical Express under its registered trade marks, and also under the common law relating to passing-off. It also claimed that the law against defamation gave it rights to prevent use of the name in connection with disparaging statements. Among other claims from the complainant was the suggestion that non-English speaking Internet users would be unlikely to differentiate the ruinedmylife domain name from one registered and operated by Optical Express and that there was a likelihood of Internet traffic being diverted by ‘initial interest confusion’.
In order for the complaint to succeed, the complainant had to prove, on the balance of probabilities, both that it has rights in respect of a name or mark which is identical or similar to the disputed domain name; and that, in the hands of the respondent, it amounted to an abusive registration.
The Expert said:
‘Both the domain names “optimaxruinedmylife.co.uk” and “opticalexpressruinedmylife.co.uk” clearly convey expressions of critical opinion. No competent English reader seeing those domains is ever going to believe that they are associated with, or endorsed by, the respective businesses whose trade marks are mentioned. In the Expert’s view, such is nominative fair use of the respective marks for critical purposes. The fact that the Respondent may have registered “optimaxruinedmylife.co.uk” based on her own experience and expressing her own opinion, and “opticalexpressruinedmylife.co.uk” to record the experiences and opinions of others does not make either an Abusive Registration. Nor is it relevant that the Respondent may not be medically qualified. Most people are not, but that does not deprive any patient of the right to criticise, if they feel (as the Respondent, and the other patients whose cases she has highlighted clearly do) that they have not been treated appropriately. There may be a pattern of critical domain name construction, but presenting a common critical opinion also does not automatically render a domain name as an Abusive Registration. Web users are inevitably going to expect the content of any websites using such domains to be critical in nature. They will expect that such websites will be operated by, or on behalf of, people who have had a bad experience with the specified businesses. They are not going to be remotely confused, initially or otherwise.
They are UK domains, with English content, under English jurisdiction. The Complainant’s attempts to argue for abusive registration of the Domain Name on the basis of some speculative ‘initial interest confusion’ on the part of some non-English speaking surfer’s theoretical inability to decipher the Domain Name are too fanciful.
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The Complainant appears to assert – on a quia timet argument – that mere registration of this Domain Name would be actionable, and that the Domain Name should be transferred, based on the perceived threat that potentially critical (and allegedly defamatory) content might damage or disrupt its business, which it has spent substantial sums promoting.
The Expert does not find this argument appealing. In a liberal democracy, where freedom of speech is a recognised right, which most would consider to be the case in the UK, public criticism is equally something that most of those involved in business and public activities – including DRS Experts – are exposed to, and have to manage. As was stated in the “ihateryanair.co.uk” decision (DRS 08527) “…using the Domain Name to point to critical content may in fact be detrimental to the Complainant’s Rights because, for example, it may cause potential customers to purchase services elsewhere. However the effects of criticism cannot be said to be unfair per se. Indeed dealing with criticism could be said to be the price paid in return for living in an open and democratic society.”
If using a domain name conveying a critical message in association with a specific name or trade mark were automatically to be considered as inherently unfair, as the Complainant appears to imply, that could have an undesirable and significantly chilling effect on free speech. Where a critic wishes to make criticisms of a specific business or product using a critical domain name construction, it is reasonable, and, in the Expert’s view, will ordinarily be fair use (but obviously not where the criticism is couched in terms which would contravene other legislation, against say racial hatred, for example), to identify that business or product by name to focus attention on the appropriate target.’
The Expert went on to address whether any income or attempt to derive income from a criticism site would affect its status and render it an abusive registration. In a ruling of further significance in light of the ihateryanair case, he observed that there should be some sense of proportion when assessing whether commercial concerns are really so significant as to always disbar a critic from ever using a domain name which incorporates the name of the object of the criticism. Where the commercial concerns are de minimis and clearly incidental, it would not necessarily always be unfair for a critic to take steps to obtain some income to maintain a web site (eg from some general advertising or by requesting donations).
You can access the full ruling by downloading the pdf in the panel opposite or by searching the Nominet site.
