Victory for the Occupy Movement at WIPO

On July 18, the Administrative Panel of the World Intellectual Property Organization (WIPO) issued a decision denying the Uniform Domain Name Dispute Resolution Policy (UDRP) complaint proceeding filed by the Tribune Company regarding the domains occupiedchicagotribune.org and occupychicagotribune.org. If the UDRP complaint had been successful, the WIPO panel would have ordered the transfer of the Occupied Chicago Tribune’s domain names to the Tribune Company.

The Occupied Chicago Tribune is an independent media source that provides an outlet for reporting, commentary and analysis on the Occupy movement.

Respondent, Alan Maass of Chicago, asserted it is a community-based, volunteer, non-incorporated, not-for-profit organization that criticizes the biased, corporate news of Complainant. Respondent states that it is a noncommercial publication distributed for free that does not compete with the Chicago Tribune, and that its staff consists of volunteer, activist journalists who are not compensated for their work.

Respondent argued that the Domain Names are not confusingly similar to Complainant’s CHICAGO TRIBUNE mark. Respondent said that the words “occupy” and “occupied” have become synonymous with drawing attention to corruption or other oligarchical misdeeds within an institution, and therefore that no reasonable person would confuse the Chicago Tribune daily publication with Respondent’s free, periodic paper publication and website.

This is the argument what won the Complaint. Although the Panel find that Complainant had established its rights in the CHICAGO TRIBUNE mark under paragraph 4(a)(i) of the Policy through its United States Trademark Registration, it concluded that the Domain Names were not identical to Complainant’s mark. The Domain Names include Complainant’s entire CHICAGO TRIBUNE mark, while adding either the words “occupy” or “occupied”.

The Panel then went on to say:

The Occupy Movement is an international protest movement with a wide range of goals, one of which is to protest against the political and economic inequities that exist between the small fraction of highest-earning individuals in a society and its remaining members. The movement has spawned the popular political slogan “We are the 99%.” The Occupy Movement has been particularly strong in the United States, and protests have taken on the names of the several major cities and locations across the country at which they have occurred (e.g., Occupy Wall Street, Occupy San Francisco). A number of independent news sources have also developed that cater to the Occupy Movement, such as “Occupied Washington Post”, “Occupied Los Angeles Times”, and “Occupied Wall Street Journal”. The Occupy Movement has attracted significant media attention throughout the course of its short history, and the word “occupy” was voted as 2011’s word of the year by the American Dialect Society.

Given the circumstances of this case and in particular the heavy and nearly universal coverage of the Occupy Movement within the national and local media, the Panel holds that the Occupy Movement is so well known within the relevant area (both parties being from Chicago, Illinois, in the United States) that the Domain Names are not confusingly similar to Complainant’s mark. The Panel agrees with Respondent’s assertion that no reasonable person in the Chicago area would confuse the Domain Names with Complainant or Complainant’s publication.

So the Complaint failed at the first element. This is quite unusual as any Complainant with a valid trademark can easily get passed the “Identical or Confusingly Similar” element of the UDRP. Panel need not address whether Complainant has satisfied elements 2 (no rights or legitimate interests) and 3 (registered and are being used in bad faith) of the Policy and denied the Complaint.