The Lost Dogs Home Ltd of Melbourne, Australia, just lost a UDRP on the domain name lostdogshome.com to a domain holder that represented himself in the proceeding.

“The Complainant is one of Australia’s largest animal welfare organisations and has operated since 1910 under the trade mark THE LOST DOGS HOME. It operates six animal shelters in Australia, caring for over 31,000 dogs and cats each year, and manages a significant National Pet Register. The Respondent is an animal rights activist who is critical of the work of the Complainant. He operates a website under the disputed domain name that criticizes the work of the Complainant and encourages the Complainant to adopt management practices that he regards as more humane.:

Here are the relevant findings from the one member panel:

“In this case there can be no doubt that the disputed domain name has been adopted to attract potential customers and supporters of the Complainant’s business. The core question, therefore, is whether the use of a disputed domain name that is identical or confusingly similar to a trade mark, by a party who is not a competitor of the owner of the mark, for the operation of a criticism site, where the nature of the site is not apparent from the disputed domain name itself, can give rise to rights or legitimate interests in the disputed domain name.”

 

“The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0″) makes it clear that there are two main views on this issue to be found in Panel decisions. ”

“The first view is that: “[t]he right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant’s trademark. That is especially the case if the respondent is using the trademark alone as the domain name (i.e., <trademark.tld>) as that may be understood by Internet users as impersonating the trademark owner.”

“The second view, which has been favoured by US Panels, is that “Irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is fair and noncommercial.”

 

“This is a case that rests on the precise point of divergence between these two views. On the one hand, it is a case in which the Respondent is using almost the exact trade mark as the disputed domain name. On the other hand, it could not be clearer from the website itself that it is not operated by the Complainant and is intended to criticize the work of the Complainant.”

“The criticism contained on at least the home page of the website as at April 25, 2013 is expressed in language that is measured and thoughtful and there is no attempt on that page to discourage potential donors from dealing with the Complainant. Much of the material on the website is behind a user registration requirement and is not available to the casual visitor”.

 

“Given the Panel’s finding below on the third element of the Policy in relation to the disputed domain name, it is strictly unnecessary to make a finding in relation to this second element. Nevertheless, on balance, it is the Panel’s finding that in this case the first of the views outlined in the WIPO Overview 2.0 should be adopted.

 

The Panel therefore finds that the Complainant has established the second element of paragraph 4(a) of the Policy in relation to the disputed domain name.”

 

“In the view of the Panel, the approach to the bad faith element that ought to be adopted in this case is that of the Panel in Sutherland Institute v. Continuative LLC, WIPO Case No. D2009-0693. In that case, the panel said: “Here Respondent is in this Panel’s view using the disputed domain name for purposes of constitutionally protected political speech. In this context, the Panel is reluctant to use a basis for a finding of bad faith other than those expressly enumerated in the Policy. Those expressly enumerated criteria of bad faith reflect the Policy’s principal concern with conduct that takes unfair advantage of trademark owners for purposes of commercial advantage.”.

“Notwithstanding the Respondent’s allusion on the website operated under the disputed domain name to his former association with an alternative animal welfare shelter, it is clear in this case that the Respondent is not in any sense a competitor of the Complainant.”

“Rather, he is an animal rights advocate advancing a particular view of how not-for-profit animal shelters ought to be operated, whose right to free speech ought to be given considerable weight by the Panel. ”

“Moreover, “tarnishment” of a trademark must be distinguished from the use of the trade mark for the identification of a trade mark owner in the process of legitimate criticism of the trade mark owner. Absent any evidence of an intent to gain commercial advantage, the Panel does not believe that mere knowledge of the likely diversion of internet users from the Complainant’s website is sufficient, of itself, to constitute bad faith. The Panel cannot find evidence of any such intent in this case.”

 

“The Panel therefore finds that the Complainant has failed to establish the third element of paragraph 4(a) of the Policy in relation to the disputed domain name.”