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Emily Taylor, an internet specialist lawyer and consultant, examines the significance of a recent decision of the Nominet Dispute Resolution Service (DRS) involving Optical Express which has lost for the second time against the same domain name, opticalexpressruinedmylife.co.uk. Why did Optical Express lose, and what do the Optical Express cases mean for the ‘fair use’ defence in the future?
The domain name opticalexpressruinedmylife.co.uk was registered in 2012 by Sasha Rodoy (using the alias ‘serendipity’). Apparently, Ms Rodoy had experienced complications from laser eye surgery undertaken by one of Optical Express’ competitors, Optimax. She started legal proceedings against Optimax, which were subsequently settled. After discovering that she was not alone in complaining, Rodoy also set up a campaign site called optimaxruinedmylife.co.uk. Visitors to the site were invited to share their experiences. Rodoy has been campaigning for regulation of refractive eye surgery. In November 2013, MP John McDonnell introduced a private members’ bill with this purpose, and his speech referenced Rodoy’s campaign.
The DRS rules are tough on repeat complaints (para 10e of the Policy). Experts have a narrow discretion to re-hear, which are set out in para 10f. These boil down to whether there are new facts which have arisen subsequent to the first complaint. If there no new facts, then are there exceptional circumstances which would justify a rehearing?
In this case, the Expert had little pause in dismissing all but two of the repeat complaints on the basis that they were either not new, or were irrelevant. The first was an allegation that Rodoy was working with a competitor of Optical Express, Optimax, to disrupt its business. According to the Expert decision, even the complaint acknowledged that there was only ‘circumstantial’ evidence to support the allegation, and the Expert seemed to view it as a rather far-fetched conspiracy theory.
The second argument had more merit in the Expert’s view, and that was the question of whether a financial benefit arose for Rodoy from the site. However, this, too was unsuccessful as the only evidence was that there was a ticker on another site operated by Rodoy (mybeautifuleyes.co.uk).
Legitimate criticism, ‘solely’ in criticism?
Nominet’s Dispute Resolution Service (the DRS) makes specific provision for ‘legitimate non-commercial or fair use’ (para 4aiC), which includes ‘ sites operated solely in tribute to or in criticism of a person or business’ (para 4b).
Did the fair use defence fall away if Ms Rodoy received money from the site? The wording of the Policy seems clear that it would, and so does previous case law such as ihateryanair.co.uk DRS 08527.
Optical Express’ complaint alleged that Rodoy was in cahoots with Optimax (dismissed by the Expert), and that she was engaging in ‘manipulative linking practices’. The only financial benefit Rodoy admitted to was £500 a month commission from a firm of lawyers for the advertisement on mybeautifuleyes.co.uk (a different site), and the occasional voluntary donation by her supporters.
A ‘sense of proportion’
The interesting aspect of the two Optical Express cases is that they seem to erode the strict prohibition on making money out of tribute or criticism sites. In this case, Bob Elliott the DRS Expert agreed with the view of Keith Gymer, who heard the first opticalexpressruinedmylife.co.uk DRS case, that there needs to be a ‘sense of proportion in assessing the commercial activity in the context of a criticism website as a whole, and a degree of flexibility’.
In the event, Elliott was able to dismiss the evidence of money making as it was based on a different site. But it seems that even if the £500 per month had come through the opticalexpressruinedmylife.co.uk route instead, both Experts would be inclined to forgive it.
Tough on repeat complaints
The case demonstrates how difficult it is to re-file a complaint essentially on issues which should have been available to a complainant at the time of the first complaint, and emphasise how important it is to get all the evidence in place before filing.
A strengthening of free speech defence
It would be interesting to see whether there is an appeal on this point, because on the face of it, it softens the position taken in ihateryanair.co.uk, where affiliate marketing links were enough to blow the fair use defence.
In all, the Optical Express decisions both seem to strengthen the free speech defence under the DRS, and provide a warning shot for brand owners who want to shut down criticism sites. The Scooby Doo appeal (DRS 389) is still good authority that if the domain name is identical to the complainant’s mark, then it is likely to take unfair advantage and the complaint will prevail. Where, as in this case, the domain name clearly signals that the website will be a criticism site, then a complainant should not be too confident of success, even where financial advantage is accruing.
Emily Taylor (www.emilytaylor.eu) is an Internet specialist lawyer and well known in the internet governance circles. Emily is lead author of the EURid UNESCO World Report on IDN Deployment, and was part of the new gTLD string similarity and geographic names evaluation panels for InterConnect Communications. Her company, Synetergy, has been appointed sunrise dispute resolution provider for a number of new gTLDs. Emily is a director of Oxford Information Labs Ltd, which provides domain name watching services.
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