ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Gil Negrete v. Mustafa Derahovic Case No. D2025-2775 1. The Parties 1.1 The Complainant is Gil Negrete, United States of America (“United States”), internally represented. 1.2 The Respondent is Mustafa Derahovic, Bosnia and Herzegovina, self-represented. 2. The Domain Name and Registrar 2.1 The disputed domain name (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History 3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2025. At that time, publicly available WhoIs details did not identify the underlying registrant of the Domain Name. 3.2 On July 15, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 15, 2025, the Registrar transmitted by email to the Center its verification response disclosing underlying registrant and contact information for the Domain Name. The Center sent an email communication to the Complainant on July 18, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 18, 2025, and a further amendment on July 23, 2025. 3.3 The Center verified that the Complaint together with the amendment to the Complaint and amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). 3.4 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 7, 2025. In accordance with the Rules, paragraph 5, the due date for Response was August 27, 2025. The Response was filed with the Center on August 22, 2025.
page 2 3.5 The Center appointed Matthew S. Harris as the sole panelist in this matter on September 9, 2025. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background 4.1 The Complainant is an individual who founded Gil Negrete P.C. in January 2009 and began practicing law in Phoenix, Arizona, United States in February 2009, initially under the name of Law Offices of Gil Negrete, PC. The Complainant’s practice appears to have been primarily focused on personal injury law. In 2017 the Complainant registered the domain name , and this was used at least initially for a website to promote his practice. In or about late 2019 the website appearing from the Domain Name appeared to change, so as to promote a law firm under the name “AZ Hometown Law Firm”1, in which Mr. Negrete was described as a “Legal Consultant”.2 4.2 On April 15, 2024, and by means of an “Order Accepting Agreement For Discipline By Consent”, the Complainant was suspended as a member of the State Bar of Arizona, for a period of 15 months, retroactive to April 10, 2023. The Complainant does not appear to have practiced as an attorney since that date. 4.3 On or about May 30, 2024 Brandon B. Rafi, who is also an Arizona based personal injury lawyer, and the Rafi Law Group Pllc filed an Amended Complaint in proceedings commenced in the Maricopa County Superior Court in the State of Arizona against the Complainant and others, advancing claims of intentional infliction of emotional distress, defamation, false light, and tortious interference (the “Arizona Court Proceedings”). 4.4 The Domain Name was registered on April 11, 2024 and has been used since registration for a website that is highly critical of the Complainant. The home page of that website displays the text “Exposing the Truth: Who is Gil Negrete? Uncovering the facts about Arizona attorney Gil Negrete and his unethical and criminal conduct”. It does not promote or display any advertisement for the commercial products or services of any entity. It does not disclose who is operating or responsible for the content of that website. 4.5 Shortly after the Panel (comprised of a panelist who is located outside of the United States) received the case file, it conducted a search engine search against the term “Gil Negrete”. The resulting search results listed the website operating from the Domain Name first. Other search results included (i) a link to a series of podcasts under the name the “Call Gil Show”, in which the Complainant is highly critical of Mr. Rafi, (ii) a link to the decision of the Arizonan courts suspending the Complainant from the State Bar of Arizona, and (iii) a link to an article dated July 23, 2024 in the online publication “Above The Law” with the title “Ain’t No Feud Like A Lawyer Feud Because A Lawyer Feud Winds Up In Court”, which describes what it calls an ongoing feud and court proceedings between Mr. Negrete and Mr. Rafi. 4.6 The Respondent is an individual who has given an address in respect of the Domain Name in Bosnia and Herzegovina. In correspondence with the Center he identifies himself as part of “Well Business Promotion”, which operates a website from the domain name . 1 See https://web.archive.org/web/20190930134702/http://www.negretelawfirm.com/. 2As to a legitimacy of a panel’s ability to consult the Internet Archive under the UDRP Rules, see Section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition.
page 3 5. Parties’ Contentions A. Complainant 5.1 The Complainant contends that he has satisfied each of the elements required under the Policy for a transfer of the Domain Name. 5.2 In particular, the Complainant contends that by reason of his activities he owns common law trade mark rights in “the Gil Negrete Name Image and Likeness and mark”. He claims to have used Gil Negrete “as an adword on Google and SEO marketing extensively and continuously since June 01, 2017 to identify the Complainant and his law firm, attorneys, and website” and also to have spent “millions of dollars” promoting his “name, image and likeness”. 5.3 The Complainant concedes that the Respondent has a right to establish a website for the purpose of legitimate criticism and commentary, but asserts that the Respondent may not do so via a domain name that is identical or confusingly similar to the Complainant’s claimed mark. Such activity is said to show a lack of relevant rights or legitimate interests and bad faith registration and use. In this respect he relies upon the decisions in a number of cases including CSA International (a.k.a. Canadian Standards Association) v. John O. Shannon and Care Tech Industries, Inc., WIPO Case No. D2000-0071, Government Employees Insurance Company v. Julia Taylor; WIPO Case No. D2001-0742, and The Leonard Cheshire Foundation v. Paul Anthony Darke, WIPO Case No. D2001-0131. 5.4 Finally, the Complainant contends that the website operating from the Domain Name is “a defamation effort by a party linked” to the Arizona Court Proceedings. B. Respondent 5.5 The Response, albeit filed directly by the Respondent, has the hallmarks of having been prepared by professional legal advisors. The Respondent contends that the Complainant has not satisfied any of the three elements required under the Policy for a transfer of the Domain Name. 5.6 So far as trade mark rights are concerned, the Respondent states that there is no supporting evidence for the Complainant’s contentions as to the extent and nature of his use of the “Gill Negrete” name. Further and in any event, he contends that the Complainant has not since his suspension from the bar, provided legal services under his name and that any common law trade mark rights have been extinguished through non-use. Further he contends that the fact that the Domain Name contains the words “who is” means it is not confusingly similar to the Complainant’s claimed trade mark. 5.7 So far as rights, legitimate interests and bad faith are concerned, the Respondent contends that the use being made of the Domain Name involves “legitimate noncommercial or fair use… without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark” and relies upon the commentary in this respect to be found in section 2.6.1 to 2.6.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). He also contends that the cases relied upon by the Complainant do not support the Complainant’s contentions in that they either demonstrate that a domain name that takes a form which is identical to a trade mark can still be used in respect of a genuine criticism site or (being cases where the domain name and trade mark are identical) are not applicable in a case such as this where the words “Who Is” has been added. The addition of these words is said to “unmistakably signal[ ] to the visitor that the website is about Negrete, and not operated or endorsed by him”. 5.8 So far as the Arizona Court Proceedings are concerned, the Respondent does not directly respond to the allegation that the website is operated by a “linked person” to those proceedings. Instead, he contends that the Arizona Court Proceedings have no bearing on this action since the substantive claims of defamation are not appropriate subjects for UDRP proceedings (citing Ridley, McGreevy, & Winocur, P.C. v. William Sears, WIPO Case No. D2025-0230).
page 4 6. Discussion and Findings A. Identical or Confusingly Similar 6.1 The Complainant must show rights in a trade mark that is identical or confusingly similar to the Domain Name. The Complainant relies upon alleged common law trade mark rights and it has long been established that common law trade mark rights can constitute relevant rights for the purposes of the Policy (see sections 1.1 and 1.3 of the WIPO Overview 3.0). 6.2 The difficulty in this case is that the Respondent contends that if the Complainant had such rights, they have been abandoned by reason of the fact that the Complainant was suspended from the State Bar of Arizona in April 2024. The Panel is also somewhat concerned that the wording used in the Complaint gives the impression that the Complainant has continued to operate as an attorney up to the date of the Complaint, when this appears not to be the case. However, what the effect is of the Complainant ceasing to practice as an attorney in April 2024 and whether and to what extent the Complainant had sufficient residual goodwill in his name as an attorney at the time of the Complaint that would entitle him to claim unregistered trade mark rights, is likely to involve questions of Arizonan and/or United States law which the Panel (not comprising a United States lawyer) is ill-equipped to address. Further, there are at least hints in the Complaint that the Complainant may have used his name in the course of trade in connection with activities other than legal practice that might have generated relevant rights. Given this, had the issue of the existence of trade mark rights been determinative in this case, the Panel is likely to have issued a Procedural Order inviting the Parties to file further submissions and evidence in this respect. However, as this is not determinative, the Panel is prepared to assume for the purposes of this Decision that the Complainant has the unregistered rights that he claims. 6.3 If such rights are assumed, then the question of whether the Complainant has shown rights in a mark that is identical or confusingly similar to the Domain Name becomes straight forward. The reason is that it has for a significant period of time been generally accepted by panelists that the first element functions primarily as a standing requirement. If a relevant right in a trade mark exists, the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trade mark and the disputed domain name. Further, when conducting such a comparison, it will be sufficient for a finding of confusing similarity for the purposes of the first element of the Policy for the relevant mark to be recognisable in the Domain Name (see section 1.7 of the WIPO Overview 3.0). 6.4 The Domain Name can be most sensibly read as the words “Who is Gil Negrete”, together with the “.com” generic top level domain. Accordingly, if the Complainant has trade mark rights in the term “Gil Negrete”, the Panel is satisfied that this mark is recognisable in the Domain Name. 6.5 In this respect, the Panel rejects the suggestion of the Respondent that the Domain Name is not “confusingly similar” to the relevant trade mark because of the addition of the words “Who is”. There were early decisions under the Policy that suggested that something more was needed than mere recognisability of a mark to satisfy this element of the Policy, but this is no longer the case. That is not to say the addition of words of this sort may not be of importance, but their relevance if any is in the context of an assessment of the second and third elements of the Policy (see section 1.8 of the WIPO Overview 3.0). 6.6 Accordingly, on the assumption that the Complainant has trade mark rights in the term “Gil Negrete”, the Panel is prepared to proceed on the assumption that Complainant could satisfy the first element of the Policy.
page 5 B. Rights or Legitimate Interests and Registered and Used in Bad Faith 6.7 It is usual for panels under the Policy to consider the issues of rights or legitimate interests and registration and use in bad faith in turn. However, in this case it is more convenient to consider those issues together. WIPO Overview 3.0, section 2.15. 6.8 The reason for this is that there is little doubt that the Domain Name has been registered and is being used for a website that, although extremely critical of the Complainant, is noncommercial in nature, in the sense that it does not actively promote or advertise any product or service. There appears to be a suggestion on the part of the Complainant that the website may in some way be linked to a Mr. Rafi, who is also an Arizonan personal injury lawyer. Whether or not this is so, the Panel is not in a position to determine. But for present purposes it is sufficient to note that the Complainant has not alleged that the real purpose of the website is to gain some form of commercial advantage rather than to serve as a genuine criticism website. 6.9 In describing this as a “genuine” criticism website, the Panel is also not in any way expressing any view as to whether the criticisms of the Complainant to be found on that site are either true, reasonable or justified. The UDRP is not an appropriate forum to decide questions of that sort, and in this one respect the Panel is in agreement with the panelist in Ridley, McGreevy, & Winocur, P.C. v. William Sears, WIPO Case No. D2025-0230. This language is simply intended to indicate that the site is not “pretextual”; i.e., it has not been set up for some purpose other than to express views that, regardless of their actual truth or otherwise, are genuinely held views regarding the Complainant. 6.10 Given this, the question becomes whether the registration and use of a domain name that takes the form , for a non-pretextual criticism site is considered “legitimate” or “fair” under the Policy. If it is legitimate or fair, the Respondent is likely to have a right or legitimate interest in the Domain Name under paragraph 4(c)(iii) of the Policy and the Domain Name would not have been registered and used in bad faith. If it is not legitimate or fair, the converse is likely to be the case. To address this question, it is necessary to consider in some detail the development of UDRP jurisprudence in relation to criticism sites. What is the correct test? 6.11 The issue of whether and in what circumstances one person may register and use a domain name that incorporated a trade mark of another for a criticism site, has evolved over time under the Policy. That different views have been expressed by different panelists on this issue is perhaps unsurprising given that panelists deciding UDRP cases come from different legal traditions across the world that have different approaches to the interaction of intellectual property rights and free speech, the UDRP involves no internal appeal process and the UDRP has no formal doctrine of precedent. Nevertheless, there has been a concerted effort by panelists to reach consensus on this point, and what amounts to that consensus has developed over time. It is not necessary in this decision to record the history of these developments in the first 18 years of the UDRP in any detail,3 but it is important to recognise that this has happened, and that as a consequence great care needs to be taken when relying upon cases in this respect that were decided in the early years of the operation of the UDRP. 6.12 Given this, this Panel considers a better starting point to be the summary of decisions to be found in sections 2.5.1 and 2.6 of the WIPO Overview 3.0, published in 2017. 3 For those interested in these issues see paragraph 2.4 of the original WIPO Overview published in or about late 2004, which set out two competing views, the analysis of this Panel as to the then prevalent competing views in 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461, the analysis in Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647, and paragraph 2.4 of the WIPO Overview 2.0 published in 2011.
page 6 6.13 Section 2.5.1 states in relation to the issue of whether and in what circumstances the nature of the domain name may be relevant to the assessment of fair use, as follows: “Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. As described in more detail below and in sections 2.6 through section 2.8, UDRP panels have articulated a broad continuum of factors useful in assessing possible implied sponsorship or endorsement. At one end, certain geographic terms (e.g., , or ), or terms with an “inherent Internet connotation” (e.g., , , or ) are seen as tending to suggest sponsorship or endorsement by the trademark owner. At the other extreme, certain critical terms (e.g., ) tend to communicate, prima facie at least, that there is no such affiliation. In between, certain additional terms within the trademark owner’s field of commerce or indicating services related to the brand, or which are not obviously critical (e.g., , , , or ), may or may not by themselves trigger an inference of affiliation, and would normally require a further examination by the panel of the broader facts and circumstances of the case – particularly including the associated website content – to assess potential respondent rights or legitimate interests.” 6.14 Section 2.6, which deals specifically with criticism sites, states as follows: “2.6.2 Panels find that even a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trademark (i.e., (including typos)); even where such a domain name is used in relation to genuine noncommercial free speech, panels tend to find that this creates an impermissible risk of user confusion through impersonation. In certain cases involving parties exclusively from the United States, some panels applying US First Amendment principles have found that even a domain name identical to a trademark used for a bona fide noncommercial criticism site may support a legitimate interest. 2.6.3 Where the domain name is not identical to the complainant’s trademark, but it comprises the mark plus a derogatory term (e.g., ), panels tend to find that the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is prima facie noncommercial, genuinely fair, and not misleading or false. Some panels have found in such cases that a limited degree of incidental commercial activity may be permissible in certain circumstances (e.g., as “fundraising” to offset registration or hosting costs associated with the domain name and website).” 6.15 It will, therefore, be apparent that at the time of the WIPO Overview 3.0, the predominant view was that the use of a domain name that took the form or was not legitimate even for a website comprising genuine noncommercial free speech, but that, depending on the particular facts of a case, some panels in the United States may have taken a different view. If, however, a domain name took the form ), such use, absent any other unusual circumstances, was likely to be legitimate.
page 7 6.16 For the reasons set out in 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461 (see paragraphs 6.43 to 6.62) (“1066 Housing Association”) this Panel’s view has always been that when and in what circumstances activity satisfied or fell afoul of the second and third elements of the Policy should be determined uniformly, and there was no good reason why the laws of one particular jurisdiction should prevail instead of that consistent approach, even where the parties were located in the same jurisdiction. 1066 Housing Association also pointed out that there was an obvious incongruity in any suggestion that there be, under the UDRP, a common set of rules and principles that would apply everywhere in the world on this issue, except for the United States. Either local law was applicable (and the UDRP was then in danger of fragmentation into different systems depending upon the particular law that applied), or it was not. But there was no justification for a special rule that applied in the case of United States parties only. 6.17 Although application of a common approach in all cases avoids that fragmentation and aids in predictability of the UDRP, that is not to say that this approach does not raise its own issues . One objection was that if the UDRP applied a common set of rules on this issue, but the losing respondent was able to commence proceedings in a court of competent jurisdiction that took a different stance on this issue, by commencing those proceedings the UDRP decision would be stayed as provided under paragraph 4(k) of the UDRP, and then effectively overturned. An example of a case in which this point was made was Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647 (“Sermosucks”). This is also a point which finds echoes in section 4.15 of the WIPO Overview 3.0, which, after recording that reference to local law under the UDRP is generally unnecessary, goes on to state as follows: “In some limited cases such as where the parties share a common nationality and the import of a specific national law concept is particularly germane to an issue in dispute, panels have applied national law principles in assessing the UDRP elements. In such cases, panels have often noted in the applicable UDRP decision the fact that the laws of a particular jurisdiction (possibly that elected by the complainant under UDRP paragraph 4(k)) may well govern any subsequent court case.” 6.18 However, this Panel would suggest that the difficulty with this statement is that if it is suggesting that local law should be imported into how the second and third elements of the UDRP are interpreted it does not really identify a principled and compelling explanation for whether, when and how this should happen. Which national law concepts are to be imported and considered germane and in what circumstances? Also, to what extent is the “mutual jurisdiction” chosen by the complainant in accordance with paragraph 3(b)(xii) of the Rules relevant in this respect? It may be a court of competent jurisdiction for the purposes of paragraph 4(k) of the UDRP but at the same time may not be the location of either of the parties. Also, if the location of parties is relevant, who are the relevant party or parties for these purposes? So, for example, in the present case the Respondent has provided an address in Bosnia, but the suggestion is that he is somehow linked with an individual in the United States. 6.19 Even if satisfactory answers can be provided in relation to each of these questions, there are also practical problems with this approach. One is the fact that panelists come from many legal traditions and jurisdictions and may or may not be familiar with the local law relied upon. Another, that has become more acute since the WIPO Overview 3.0 was promulgated, is that if the location of the parties, and the respondent in particular, is a matter of importance, a complainant will frequently not know the identity and location of the respondent until after a complaint has been drafted and filed with the Center.4 This is something that is likely to be (but is not always) disclosed as part of the registration verification process and it is always open to a complainant to revise or amend its complaint with the benefit of this additional information. But this Panel would suggest that at the time a complaint is filed, a complainant should know whether it has a reasonable chance of success, even if it does not know of the respondent’s location. 4The reason for this being the introduction of the ICANN’s Temporary Specification for gTLD Registration Data in May 2018 and then ICANN’s Registration Data Policy.
page 8 6.20 Further, the use of the language “some panels” in section 2.6.2 of the WIPO Overview 3.0 in the case of the United States, appeared to have been quite deliberate. United States based panelists are likely to be appointed to decide cases between two United States based entities. However, the suggestion in section 2.6.2 that different principles might apply in the United States than would apply elsewhere, was at the time that WIPO Overview 3.0 was published far from a uniform view among United States panelists, and was arguably becoming an increasingly minority position. 6.21 A particularly important subsequent decision so far as the development of a consensus on this issue was concerned, was Dover Downs Gaming & Entertainment, Inc. v. Domains By Proxy, LLC / Harold Carter Jr, Purlin Pal LLC, WIPO Case No. D2019-0633 (“Dover Downs”). This was a decision of a United States based panelist of very considerable experience and reputation, and who had also been the panelist in Sermosucks. 6.22 Dover Downs was critical of the reasoning in 1066 Housing Association because it was said to “prioritize[] consistency among UDRP decisions over consistency between the UDRP and local law”, (which is correct – although it is perhaps more accurate to describe this as prioritising consistency among UDRP decisions over consistency between the UDRP and local laws). However, it did acknowledge the practical problems associated with applying different local law rules in different cases where panelists were drawn from different jurisdictions. The panel in Dover Downs then went on to assert as follows: “Notwithstanding this Panel’s belief that the second view of WIPO Overview 2.0 [i.e. the view that a domain name taking the form could be used for a genuine noncommercial criticism site] is arguably the correct approach as a matter of law, policy, and fealty to the UDRP, this Panel strongly believes that it is equally important for the UDRP to articulate a consistent view rather than to allow the schism between these views to fester. A consistent approach provides a more reliable system of law where the parties can anticipate a result under the UDRP that will not depend on the panel assigned. For that reason, this Panel supports the position expressed in the WIPO Overview 3.0, which reflects the consensus that has coalesced around a compromise position: “Panels find that even a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trademark (i.e., (including typos)); even where such a domain name is used in relation to genuine noncommercial free speech, panels tend to find that this creates an impermissible risk of user confusion through impersonation. “Section 2.6.2 of the WIPO Overview 3.0. The primary focus of the WIPO Overview 3.0 approach is to determine whether the domain name will be perceived by the public as being authorized by or affiliated with the trademark holder (the “impersonation test”). The Panel is aware that, as noted in section 2.6.2 of the WIPO Overview 3.0, there may still be some specific cases involving United States parties and panelists in which panels may see a noncommercial criticism site as supporting a respondent’s legitimate interests even if the domain name is in the form of . But panels who follow that approach would effectively be perpetuating the schism that dogged the UDRP for its first two decades by following the second view of WIPO Decision Overview 2.0. Despite efforts by a number of panels to find a common ground that would support that second view for cases with (only) United States parties and panelists, consensus has not formed around that approach; to the contrary, as noted above, many stakeholders criticized that approach and declined to follow it. For that reason, the time has come to support the developing consensus around the impersonation test, even for cases, like the one here, between United States parties and with a United States panelist and where the location of mutual jurisdiction is in the United States. Significantly, the WIPO Overview 3.0’s impersonation test does not bar registrants from using a domain name that contains a trademark plus an additional, distinguishing term. Registrants remain free to select such a domain name so long as the domain name makes clear that the registrant is not affiliated with or authorized by the trademark holder. In the context of legitimate, noncommercial criticism websites, the most common examples of such domain names are those that append a derogatory term to the trademark name, e.g., . See,
page 9 e.g., Joseph Dello Russo M.D. v. Michelle Guillaumin, WIPO Case No. D2006-1627 (denying transfer for the domain name ).” 6.23 The Dover Downs decision from such a distinguished panelist and which advocated a position which prioritised coherence in UDRP jurisprudence over that panelist’s previously expressed position, was remarkable and highly influential. It was, for example, described as “seminal” by another United States panelist in Florida Power & Light Company v. Registration Private, Domains By Proxy, LLC / Alex Patton, Ozean Media, and Conservatives for Responsible Stewardship, WIPO Case No. D2021-2526. 6.24 The WIPO Overview 3.0 is now eight years old, Dover Downs is now over six years old. Although it appears that the vast majority of subsequent cases have followed the Dover Downs approach,5 it is still not universally accepted. For example, the Panel notes in this respect that in a subsequent typosquatting case, the author of the Dover Downs decision cited and relied upon United States case law; see Scrum Alliance, LLC v. Contact Privacy Inc. Customer 1247644697 / Matthew Barcomb, WIPO Case No. D2021-2932. 6.25 Further, in a number of recent cases a small number of panelists have suggested that what is sometimes described as the “holistic approach” should be followed. Were this merely a reference to the “in between” cases referred to in the WIPO Overview 3.0 that “may or may not by themselves trigger an inference of affiliation” the reference to a holistic approach would perhaps have been unremarkable.6 But these panels did not restrict themselves to those sorts of cases, and sought to extend this approach into cases where the domain name took the form . 6.26 The “holistic approach” doctrine and the authorities for this in the context of criticism websites are perhaps best summarised in Family Policy Foundation v. John Skinner, WIPO Case No. D2024-0098, (“Family Policy”) which involved a domain name that was effectively identical to the claimed trade mark. Significantly, the three-member panel in that case (which comprised lawyers from more than one jurisdiction) did not adopt the holistic approach (deciding the case on the basis that the complainant had not demonstrated relevant trade mark rights). However, it did set out what this “holistic approach” was in some detail, by reference to the respondent’s submissions and the case law referred to in those submissions that was said to support it. That summary was as follows: “Respondent cites a previous UDRP case to support its view that there is no per se rule that the use of the exact trademark of another as a domain name for a legitimate website is not legitimate use. Further, Respondent acknowledges that while the impersonation test has support among some UDRP panels, it is not a blanket test and requires a nuanced application. A nuanced assessment of all the factors is required to assess whether the domain name and website at issue are likely to be seen as impersonating Complainant. Respondent contends this is also confirmed by WIPO Overview 3.0, section 2.5.2, which requires assessment of overall facts and circumstances, in addition to looking at the domain name. Respondent submits that his use of the Domain Name establishes legitimate interests even under the impersonation test. In the present dispute it is clear that Respondent’s site cannot be seen as impersonating Complainant. Respondent, citing another prior UDRP case, also suggests that a more holistic approach should be applied to free speech cases. See Everytown for Gun Safety Action Fund, Inc. v. Contact Privacy Inc. Customer 1249561463 / Steve Coffman, WIPO Case No. D2022-0473 (“Momsdemand”) (“The Panel believes the approach should be more holistic and 5 A search of the Center’s case database suggests there are just under 40 cases where the case was cited with approval and there was transfer of the domain name. There are also a few other cases where a panel has mentioned the case and not ordered transfer, but usually that was not because the panelist disagreed with the approach but because the domain name included some other term other than the trade mark. 6The earliest case of which the Panel is aware in which this phrase is used is the well known decision of Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206. In that case, the panel asserted that there was “merit in the view that a domain name which is identical to the Complainant’s trade mark should necessarily not qualify as a ‘legitimate noncommercial or fair use’ under paragraph 4(c)(iii) regardless of website content”, but then applied a “holistic” approach when dealing with a criticism site and where the domain name took the form of a trade mark combined with the word “campaign”.
page 10 focus on the totality of factors and should not necessarily be determined, at least for parties legitimately based in the United States, on one factor alone”). Respondent also submits that he created a website that would display an obvious criticism to both search engine and social media users by using HTML meta tags. This creates a search result/image that clearly represents a protest and makes it obvious to Internet users even before visiting the website that it is not Complainant’s own site. Respondent urges that a holistic approach, which assesses the totality of factors in this case, supports Respondent’s claim to a right or legitimate interest for the purposes of the second element of the Policy. In support, Respondent cites Watch Tower Bible and Tract Society of Pennsylvania v. Vincent Moore, WIPO Case No. D2023-2034, which found in favor of Respondent in a free speech case stating that “the Panel finds that it would be readily apparent to Internet users (including Jehovah’s Witnesses) upon visiting the Website that it is not the Complainant’s website, but is rather a website critical of the Complainant. In all the circumstances, the Panel finds that a holistic approach assessing the totality of factors in this case supports the Respondent’s claim to a right or legitimate interest for the purposes of the second element under paragraph 4(a) of the Policy”. 6.27 However, the Panel finds this reasoning unconvincing. First, it in large part misrepresents the nature of the “impersonation” that is considered objectionable in cases where a domain name takes the form . As the wording of section 2.6.2 of the WIPO Overview 3.0 makes clear, it is not whether an Internet user reaching the website as a result of the domain name would think the respondent is impersonating the trade mark holder. It is whether the domain name alone misleadingly impersonates the trade mark holder. To repeat the analogy that this Panel adopted at paragraph 6.65 of its decision in 1066 Housing Association: “It is one thing for a person to stand on a street corner and to voice his concerns about and criticism of a trademark owner. It is quite another to pretend to passers by that you represent the trademark owner and once you have caught their attention to reveal your true identity and real intentions. The same is so on the Internet. It is for this reason that it is no answer for a respondent to claim that once the Internet user arrives at the relevant website it then becomes apparent (whether that be as a result of the use disclaimers or otherwise), who is running that site.” 6.28 Some may think that this sort of “impersonation” is legitimate and not unfair and should be permitted in the case of criticism sites. But historically the vast majority of panelists have disagreed with this. Further, the claim that this is not unfair needs to be explained and justified. A mere appeal to a more “nuanced” or “holistic” approach does not do so. 6.29 To be fair to the arguments of the respondent in Family Policy, there does appear to have been an attempt to address the point of misdirection to a website head on, in that it was claimed that meta tags were used which ensured that visitors to the website were aware that it contained critical content before reaching it. However, there are many ways of reaching a website (including just typing the domain name directly into a browser), and of using a domain name. Accordingly, this does not really address the point that such a domain is inherently deceptive (and the fact that steps need to be taken to prevent such deception, whether by meta tags or otherwise, if anything merely reinforces that point). 6.30 Second, it is clear from consideration of the full decision in Everytown for Gun Safety Action Fund, Inc. v. Contact Privacy Inc. Customer 1249561463 / Steve Coffman, WIPO Case No. D2022-0473 (“Momsdemand”) that the reason why the panelist had reservations in applying what he called a “blanket impersonation” approach was because he held the view that this would: “create an undue burden on respondents in cases involving parties based only in the United States where a domain name identical to a trademark is being used for a bona fide noncommercial criticism site that would be protected under the First Amendment as applied by some United States federal court decisions.” [emphasis added] 6.31 The panelist also listed a large number of the federal court decisions said to be relevant here.
page 11 6.32 In other words, although framed as a “holistic” approach, the reasoning in Momsdemand appears to be a restatement of the so-called United States minority view referred to in the WIPO Overview 3.0, which if accepted would reinstate what Dover Downs characterised as an unwelcome “schism”. 6.33 Further, another point to note is that although in Momsdemand there is extensive consideration of Dover Downs and the issue of the appropriate approach in criticism cases, Momsdemand was not actually a criticism case. In the words of the panel the website operating from the domain name was “devoid of any criticism or commentary concerning Complainant”. Instead, the respondent was using a domain name that comprised part of the complainant’s trade mark to sell 3D printable firearms for a fee. 6.34 In the circumstances, this Panel is of the view that the approach set out in the first sentence of section 2.6.2 and in section 2.6.3 of the WIPO Overview 3.0 and in Dover Downs is still to be preferred. Application to this case 6.35 With this in mind, the Panel turns to the specific facts of this case. Contrary to what at times the Complainant appears to claim, this is not a case where the Domain Name is identical to the Complainant’s alleged mark. However, this is also not a case where the additional words are obviously derogatory and signal to the Internet user that this is likely to be being used for a site that is critical of and not authorised by the Complainant. 6.36 Given this, the issues that the Panel needs to address are how the additional words “Who Is” in the Domain Name will be perceived, and if this is an intermediate case of the sort identified in section 2.5.1 of the WIPO Overview 3.0, what if any are the other facts and circumstances beyond the fact that this is being used for a genuine noncommercial website that the Panel should take into account. 6.37 As section 2.5.1 the WIPO Overview 3.0 records, there are certain additions to a trade mark such as geographic terms or terms with an Internet connotation, which do not displace the perception that a domain name that contains that trade mark is likely to be owned, sponsored or endorsed by the trade mark owner. Further, although domain names can obviously contain descriptive content and be used in a descriptive manner, and inherently indicate an online location, Internet users are also accustomed to domain names comprising or incorporating the name of the businesses or organisations that operate the websites associated with those domain names. 6.38 The Respondent contends that the words “Who Is” “unmistakably signal[ ] to the visitor that the website is about Negrete, and not operated or endorsed by him”. The Panel agrees with the first part of the sentence. This is a case where the Domain Name is likely to be read descriptively and as comprising a question. So far as the second part of the sentence is concerned, the Panel disagrees. As has already been stated this is not derogatory language which inherently signals that the Domain Name is likely to be not operated or endorsed by the trade mark owner. This is, therefore, an intermediate case of the sort identified in section 2.5.1, where the Domain Name does not inherently indicate the position one way or the other. 6.39 Given this, are there any other additional factors here which should inform the assessment of the second and third elements? In the Panel’s view the starting point must be that the Domain Name is being used for a noncommercial website prima facie engaged in the exercise of free speech and although it does not identify its operator, it is nevertheless clear that this is not the website of the Complainant. As was recognised long ago in Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206, paragraph 4(c)(iii) of the Policy seeks to strike a balance between a trade mark owner’s rights and the right to express a critical view. Where a domain name is not inherently misleading, is being used for a genuine noncommercial website, and there are no other indicators that the domain name is being used in a misleading or unfair fashion, then that balance should be struck in favour of the respondent. In this case, no such other indicator has been alleged to exist by the Complainant.
page 12 6.40 As a result the Panel concludes on the material before it that the Respondent has a right or legitimate interest in the Domain Name and that the Complainant has failed to demonstrate that the Domain Name was registered and is being used in bad faith. Accordingly, the Complainant has failed to satisfy the second or third elements of the Policy. 7. Decision 7.1 For the foregoing reasons, the Complaint is denied. /Matthew S. Harris/ Matthew S. Harris Sole Panelist Date: September 22, 2025
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