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."
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