A Complainant's burden of proof on this issue is made clear in the case of Marbil Co. Incorporated ďDBAĒ Insol v.Sangjun Choi, Case No. D2000-1275. In this case the Respondent attempted to prove that Respondent did not have any legitimate interest in the domain name. The complainant did not provide adequate proof. The panel decided that the domain name should not be transferred to the Complainant and states that:
Although Respondent does not have the burden of proving that he has rights or legitimate interests in respect of the domain name, we present evidence to further strengthen Respondentís position. We present herein evidence that Respondent did, in fact, have rights and a legitimate interest in respect of the domain name.
In order to provide proof and substantiation to demonstrate that Respondent has a legitimate interest in the domain names in question, we note that the Uniform Domain Name Dispute Resolution Policy provides a listing of several circumstances which, if proved, demonstrate that a respondent has rights or legitimate interests to the domain name. Section 4c of the Uniform Domain Name Dispute Resolution Policy provides as follows [emphasis added]:
The facts of this case, supported by the attached evidence, prove 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. The domain name is currently being used as a vehicle for directing criticism at one policing authority of the geographical area known as Dorset. Exhibit B (http://www.dorset-police.com/internet-tribunal/1st-EXHIBIT-B.pdf) contains current printouts of the page that is accessed by visiting the domain names in question. It will be noted that bona fide criticism is being expressed.
Respondent has abundant evidence to show that the policing authority for the Dorset area has a long history of being dishonest, deceitful and evasive. Respondent has attempted to express his concerns and engage in valid, protected free expression of his opinions. His freedom of speech is protected by the above-cited section 4(c)(iii) of the UDRP.
In support of Respondentís position in this matter, we also quote from the case of Britannia Building Society v. Britannia Fraud Prevention Case No. D2001-0505. This case is virtually directly on point.
In this case, the respondent is making legitimate noncommercial use of a domain name by using the domain name to engage in criticism of a quasi-governmental entity.
The Panel held as follows:
The Respondentís actions cannot be characterized as consistent with an "intent for commercial gain to misleadingly divert consumers." That phrase refers to the kind of confusion that arises in a trademark infringement context, when a competitor diverts consumers to its site and, potentially, diverts sales. See Universal City Studios, Inc. v. G.A.B. Enterprises, Case No. D2000-0416 (WIPO June 29, 2000); Houghton Mifflin Company v. The Weathermen, Inc., Case No. D2001-0211 (WIPO Apr. 17, 2001). Here, there is no diversion "for commercial gain" and thus no loss of legitimacy. That some Internet users might initially be confused into thinking that, because of the use of the mark in the Domain Name, britanniabuildingsociety.org is Complainantís official web site is of no moment. First, any such confusion would immediately be dispelled by Respondentís prominent disclaimer and the link that is displayed to Complainantís official site. Second, and in any event, such a low level of confusion is a price worth paying to preserve the free exchange of ideas via the internet. A user who misleadingly stumbles upon Respondentís site while looking for Complainantís official site need only click the "back" button to return to her search, or the link helpfully provided by Respondent.
As for Complainantís assertion of "tarnishment," that phrase, too, has a specific meaning that does not apply here. Tarnishment in this context refers to such unseemly conduct as linking unrelated pornographic, violent or drug-related images or information to an otherwise wholesome mark. See, e.g., Nicole Kidman v. John Zuccarini d/b/a Cupcake Party, Case No. D2000-1415 (WIPO Jan. 23, 2001); cf. Etam, plc v. Alberta Hot Rods, Case No. D2000-1654 (WIPO Jan. 31, 2001). In contrast, fair-use criticism, even if libelous, does not constitute tarnishment and is not prohibited by the Policy, the primary concern of which is cybersquatting. Cf. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, Case No. D2000-0662 (WIPO Sept. 19, 2000) (protection for genuine criticism sites is provided by Policyís legitimate interest and bad faith prongs). Claims sounding in commercial libel must be brought in other legal venues. Policy 5.
The web site Respondent operates at the Domain Name is, and so far as the Panel can tell from the record always has been, maintained as a genuine criticism site. The goals of the Policy are limited and do not extend to insulating trademark holders from contrary and critical views when such views are legitimately expressed without an intention for commercial gain. Use of the Policy to provide such insulation would radically undermine freedom of discourse on the internet and would undercut the free and orderly exchange of ideas that the Policy seeks to promote."
We also note that Counsel for Respondent in the instant case recently attended a conference at Harvard Law School which was attended by influential lawyers from around the world to discuss important legal principles that apply to the governance of the Internet. It was noted that a very important service that the Internet can provide mankind is the free transmission of ideas and communication in furtherance of international legal principles of freedom of speech such as those principles that are articulated in laws such as Article 10 of the Human Rights Act 1998 and under International Law by Article 10(1) of the European Convention for the Protection of Human Rights and Fundamental Freedoms, and the United Nations Universal Declaration of Human Rights.
An adverse decision in the instant case would open the door to governmental abuses. For example, if there were an adverse decision in the instant case, the Chinese government would have a precedent to justify its use of the UDRP process to take away domain names that might provide valid, justifiable criticism of Chinese police practices. This would truly be an unfortunate occurrence which is certainly not an intended use of the UDRP.