opticalexpressruinedmylife.co.uk – Bad faith registration or criticism website?
This was the question considered by a Nominet expert in the recent case of DCM (Optical Holdings) Ltd v Sasha Rodoy, D0001127, 3 August 2012.
The complainant, DCM, provided medical ophthalmic treatment services, including laser eye surgery under the Optical Express name and mark. It also owned a number of trade mark registrations for the Optical Express mark and operated a website promoting its services at www.opticalexpress.co.uk.
The respondent, Mrs Sasha Rodoy, was a private individual who registered the domain opticalexpressruinedmylife.co.uk in April 2012.
DCM's main contention was that the registration of the domain name was abusive and that Mrs Rodody had no legitimate reason for holding the domain name as she had never been treated by it; as such her aim was to damage and disrupt DCM's business. It also argued that she was trying to 'leverage benefits' from DCM.
Mrs Rodoy denied DCM's claims and explained that she had personally suffered problems following laser eye surgery conducted by Optimax (a DCM competitor) and had previously registered optimaxruinedmylife.co.uk inviting other patients with similar problems to contact her.
She was subsequently contacted by patients who had been adversely affected by both Optimax and Optical Express surgery. She stated that DCM sought to 'buy' her silence and while she had never been a patient of DCM, she claimed to be legitimately speaking for others who had been so. She also maintained that the domain name was not for sale and had hosted patients' personal accounts of how their lives had been ruined by Optical Express surgery.
Findings of the expert
For DCM’s claim to succeed, it had to prove that: i) it had rights in respect of a name or mark identical or similar to the domain name; and ii) that the domain name, in the hands of Mrs Rodoy, would constitute an abusive registration.
The expert had no difficulty in finding that DCM had established rights in the name and trade mark Optical Express and that opticalexpresruinedmylife.co.uk would be recognised as relating to Optical Express.
In relation to the abusive registration issue, the expert explained that that the statement 'X ruined my life' is likely to be perceived by any ordinary reader as an expression of an affected person’s opinion and a possibly exaggerated, but nonetheless genuinely held, statement of belief. On this basis he was not persuaded that the domain name was intrinsically unfair.
Crucially, he went on to say that the domain name (and the Optimax domain) clearly conveyed expressions of critical opinion. The expert explained that no competent English reader seeing the domains would ever believe that they were associated with or endorsed by DCM or Optimax.
It did not matter, he said, that Mrs Rodoy registered the domains based on her own experience or those others and nor was it relevant that she was not medically qualified as this did not deprive her of her right to criticise. He therefore concluded that web users would not be confused, initially or otherwise, as they would expect websites like the domain name to be operated by those who have had bad experiences.
The expert also explained that if using a domain name conveying a critical message relating to a specific name or trade mark were automatically to be considered as inherently unfair, it could have an undesirable and significantly chilling effect on free speech.
On this basis he reasoned, it was fair to use a specific business or product in a domain name for the purposes of criticism.
He then went on to consider whether Mrs Rodoy had attempted to 'leverage benefits' from DCM, as it had claimed, which was based on a remark made by her in an email to DCM.
In assessing this claim, the expert made reference to the decision in 'ihateryanair.co.uk', a similar case that decided that the £322 gained by the registrant through click through advertising (less than the costs he had spent in setting up the website), was an abusive registration on what was otherwise a site devoted to criticism of Ryanair.
The expert in this case disagreed with his counterpart in relation to 'ihateryanair.co.uk', stressing that because critics are unfunded compared to the large corporations they seek to challenge, there ought to be some sense of proportionality when assessing whether 'commercial concerns' regarding the use of a domain name are really so significant as to always disbar a critic from ever using a domain name that incorporates the name of the object of the criticism.
The expert found that such commercial concerns were minimal and clearly incidental in this case and that “absolute purity” is not required.
In the end, the expert found that the domain name opticalexpressruinedmylife.co.uk in the hands of Mrs Rodoy did not constitute an abusive registration and no action should be taken to transfer it to DCM.
This case provides an interesting analysis into the factors the expert in Nominet DRS cases may take into account in assessing whether a domain name incorporating a name or trade mark is an abusive registration.
Whilst it is not clear whether the expert’s decision will be followed in future cases, it demonstrates that complainants who bring claims against so-called 'criticism' websites cannot simply rely on a commercial argument to show that the registration was abusive.
Provided registrants can prove that any revenue derived from the domain name was minimal and incidental to the main purpose of the site, ie to criticise a product or company, it seems less likely that an order to transfer the domain will be made against them.