By Steve Levy
A defense to a UDRP complaint, under par. 4(a)(ii), is for a domain name owner to prove that it has rights or legitimate interests in the disputed domain name. One of the specified ways to do this is mentioned in par. 4(c)(iii) which says that rights or legitimate interests can be shown where a Respondent is “making a legitimate noncommercial or fair use of the domain name, without in-tent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” Classic examples of this include fan or criticism sites and informational blogs. Keeping in mind the limited scope of the UDRP and the fact that it provides very limited tools for investigating evidence presented by the parties, panels are particularly reluctant to try and parse out complex fact questions.
This was highlighted in a recent case brought by a USA-based attorney named Marc John Randazza who often represents clients in cases involving free speech or intellectual property issues. He is also a commentator on, and has been interviewed by major international news outlets. On several occasions, Mr. Randazza has represented parties adverse to the Respondent, Mr. Don Karl Juravin, and has also testified against him thus setting up a contentious position between them. In late 2020, Mr. Juravin registered the domain name corruptrandazza.com and resolved it to a website that displays the title, in large bold type, “CORRUPT MARC RANDAZZA . . . Bar Complaints Facts-Opinions”. Following this is the text “[i]nformation curated from across the web, courts, State Bars, articles, comments, etc. [ . . .] You will decide what’s real or true. We are not affiliated with attorney Randazza . . .” The next several pages of the site publish summaries of purported bar complaints, court or agency rulings, and publications, all of which are critical of Mr. Randazza and many of the summaries identify Mr. Juravin as the complaining party. Mr. Juravin contends that his criticisms are protected as free speech but Mr. Randazza claims that they amount to tarnishment and a pretext for the commercial purpose of pressuring him to stop representing clients adverse to Mr. Juravin.
In its decision, the panel first notes that there is no overt commercial use of the disputed domain name and that any “hypothesized commercial benefit to Respondent is too indirect and remote.” Referring to the limited scope of the UDRP, it states that “[f]air-use criticism, even if libelous, does not constitute tarnishment and is not prohibited by the Policy; rather, claims sounding in commercial libel must be brought in other legal venues” such as the courts.
Citing a prior UDRP decision, the panel found that, despite Mr. Randazza’s claims, “[a] UDRP proceeding, however, is not an appropriate or practical forum for ascertaining the truthfulness of the allegations published on the Respondent’s website, as would be necessary in a legal action for defamation. It suffices for UDRP purposes to determine whether the website is genuinely devoted to a free speech purpose such as commentary and criticism, rather than serving as “primarily a pretext for commercial advantage. [. . .] In the Panel’s view, the truth or falsehood of the disparaging statements made on the Respondent’s website is a determination better left to a court, following evidentiary discovery and the examination of witnesses; it is not one suited to the limited scope and procedures of a UDRP proceeding.”
In the end, the panel denied the complaint and advised that this dispute is beyond the scope of the UDRP. Careful note of this decision should be taken by brand owners who encounter domain names that either include derogatory terms or that resolve to a criticism website, even those which may contain false statements, that have no obvious commercial content. These situations should be very carefully evaluated and, if enforcement action is warranted, a strategic decision must be made as to whether the UDRP or the courts is the best vehicle for handling the dispute.