Domain Names Ruin
In a 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.’
The complaint that mere registration of this domain name would be actionable, and that it should be transferred, based on the perceived threat that potentially critical (and allegedly defamatory) content might damage or disrupt the complainant’s business did not appeal to the expert. He considered that, <pq2>in a liberal democracy where freedom of speech is a recognised right, public criticism is something that businesses are exposed to, and have to manage. 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, that could have an undesirable and significantly chilling effect on free speech</pq2>. Where a critic wishes to make criticisms of a specific business or product using a critical domain name construction, it will ordinarily be fair use 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).
ASA Ruling on Misleading URL
The Advertising Standards Authority has ruled that the use of a url in a sponsored link containing the ‘nhs’ when there was no direct National Health Service connection was a breach of the CAP Code. ASA Adjudication on Esta Visa Ltd concerned a sponsored search advert, which had been seen by a complainant in July 2012. The advert stated ‘EHIC Apply Now – EHIC Replaces the E111 Card. www.nhs-services.org.uk/EHIC Get Your Official EHIC Now!’. The complainant challenged whether the advert was misleading because he believed the URL ‘www.nhs-services.org.uk’ implied a link with the NHS.
In response, Esta Visa Ltd t/a www.nhs-services.org.uk/EHIC felt the web site was clear in terms of the service offered and said it was clearly marked that they charged for a service. They added that consumers were also quite clearly advised that the cards were free and could be obtained for free, and they also provided a link for consumers to do so. They did not consider that the web domain was misleading, as people could click on the link, but did not have to buy the advertiser’s services. They said they also offered free advice and provided free information to consumers should they choose to e-mail them. They claimed that the web site clearly set out that the site was not affiliated to the NHS and stated “Please read the EHIC Facts section below. This web site is not connected to or affiliated with the NHS or any government department”.
The complaint was upheld. The ASA noted that the web site included text at the end of a paragraph on the home page, which stated “This web site is not connected to or affiliated with the NHS or any government department”. However, it considered that the use of the term “www.nhs-services” in the URL implied the advertiser was the NHS, which consumers would know to be the official provider of health services in the UK. Because that was not the case, the ASA concluded that the advert was misleading. The ad breached CAP Code (Edition 12) rules 3.1, 3.3 (Misleading advertising), 3.7 (Substantiation) and 3.50 (Endorsements and testimonials).
The action required by the ASA was that ‘The ad must not appear again in its current form. We told Esta Visa to ensure they did not imply they were linked to the NHS’.
This case is hardly ground-breaking but it is a worthwhile reminder of the dangers of picking urls that give undue prominence to a misleading aspect of the subject matter covered on a web page.
That those dangers are generally far outweighed by the commercial advantages is widely acknowledged by the many hundreds of sites outwith the ASA’s jurisdiction which routinely design urls which are as misleading as possible. What might also be gleaned from this case, and arguably makes it most interesting, is that even those within the ASA’s jurisdiction might just as well carry on misleading. At least that might well be Esta Visa’s view since they were told in December 2011 by the ASA, in a case arising from a very similar complaint, that the use of ‘nhs’ in their url was misleading. The ASA action? It was ‘The ads must not appear again in their current form. We told Esta Visa to ensure they did not mislead consumers regarding the commercial nature of their website or the costs associated with applying for an EHIC card with them.’ Surely this second case cried out for sanctions, if only to encourage the others.
.eu Domain Names: Licensees and Sunrise Judgment
In Case C-376/11 Pie Optiek SPRL v Bureau Gevers SA and European Registry for Internet Domains ASBL, the CJEU found that a person authorised solely to register a .eu domain name for the proprietor of a trade mark is not a ‘licensee of prior rights’. Licensees who may apply for registration of a trade mark as a .eu domain name during the ‘sunrise period’ do not include persons not authorised to use that trade mark commercially in a manner consistent with its functions
Registration of .eu Top Level Domain names opened on 7 December 2005 and was carried out on a ‘first come first served’ basis. However, during the four-month ‘sunrise period’ only holders of prior rights and public bodies were eligible to apply. Moreover, a distinction was made between different holders of prior rights. Thus the first two months were reserved for holders of national and Community trade marks and geographical indications. However, the same preferential treatment was available to their licensees. EURid, the body responsible for registration, registers domain names requested by any undertaking established in a State of the EU.
US-based Walsh Optical (Walsh) offers contact lenses and spectacle-related items for sale via its web site. A few weeks before the start of the sunrise period, it had the Benelux trade mark ‘Lensworld’ registered. In addition it entered into a ‘License Agreement’ with Bureau Gevers (BG), a Belgian intellectual property consultancy, whereby BG was to obtain a .eu domain name registration in its own name but on behalf of Walsh. On the first day of the sunrise period, BG filed an application with EURid for registration of the domain name ‘lensworld.eu’ and that name was allocated to BG.
The Belgian company Pie Optiek (PO), another company active in the sale of contact lenses, spectacles and other optical products on the Internet, also filed an application with EURid for the domain name ‘lensworld.eu’. Shortly beforehand, it had also applied for registration of the Benelux figurative mark containing the word sign ‘Lensworld’. However, EURid refused PO’s application on the ground that BG’s application took precedence. PO claimed that the BG registration was speculative and abusive.
The cour d’appel de Bruxelles (Belgium) asked the Court of Justice to clarify the concept of an eligible ‘licensee’ during the first phase of the sunrise period.
It observed that it would be contrary to the objectives of the legislation for a holder of a prior right who does not satisfy the test of presence in the EU to be allowed to obtain a .eu domain name through a person who satisfies that presence test but to whom that right is not – even partly or temporarily – available. Furthermore, the Court considered that a contract by which the contractual partner, described as ‘licensee’, undertakes, in return for remuneration, to use reasonable efforts to file an application and obtain the registration of a .eu domain name for the proprietor of a trade mark is more akin to a contract for services than to a licence agreement. That is all the more so if such a contract does not confer on that licensee any right to use that trade mark commercially.
It follows that such a contract cannot be regarded as a licence agreement in trade mark law. Consequently, a contractual partner tasked with registering a .eu domain name for the proprietor of the trade mark in question cannot be considered a ‘licensee of prior rights’ within the meaning of the applicable legislation.
Copyright Enforcement and Procedure
In Media Protection Services v Crawford [2012] EWHC 2373 (Admin), a private prosecution was brought by Media Protection Services (MPS) on behalf of the Football Association Premier League Ltd (FAPL), claiming that Crawford, a pub landlord, had dishonestly received a programme included in a broadcasting service. MPS was a private limited company trading for profit and was retained by the FAPL to investigate and prosecute infringements of its rights in relation to broadcasts of Premiership matches. MPS was remunerated by FAPL for those services. The District Judge had ruled that Mr Hoskin, the Prosecutions Director of MPS, acted unlawfully in laying an information, in that in so doing he carried out a reserved legal activity within the meaning of the Legal Services Act 2007 when he (and the appellant) were not authorised nor exempt in relation to that activity. As a result the criminal proceedings had to be dismissed.
The Divisional Court supported that ruling. The laying of the information had amounted to the commencement of proceedings and had, therefore, been the ‘conduct of litigation’ in accordance with sch 2 to the 2007 Act and a ‘reserved legal activity’ within the meaning of s 12 of that Act. The regulatory objectives set out in s 1 of the 2007 Act and the duties owed to the court and to the defendant by prosecutors, including the duty of disclosure, did not favour recognition of the right of unqualified and unregulated persons acting for reward to institute and to conduct private prosecutions. Further, Mr Hoskin had not commenced proceedings in the magistrates’ court as a litigant acting on his own behalf, but as director of a company acting for reward for a client, namely the Football Association. He had acted as a solicitor within the meaning, and in breach, of s 20 of the 1974 Act. He had not been an authorised litigator. The appellant could not bring itself within para 4(2) of sch 2 to the 2007 Act. The reference in the Magistrates’ Courts Act 1980, s 127(1) to the laying of an information meant the lawful laying of an information and, on the facts, no information had been lawfully laid against the respondents.
