[Random-bits] UDRP - Walmart Sucks
James Love
love@cptech.org
Wed, 02 Aug 2000 12:29:44 -0400
Subject: UDRP - Walmart Sucks
Date: Wed, 02 Aug 2000 12:26:27 -0400
From: James Love <love@cptech.org>
Organization: http://www.cptech.org
To: NCDNHC <NCDNHC-Discuss@lyris.isoc.org>
http://arbiter.wipo.int/domains/decisions/html/d2000-0477.html
The decision said:
Based on its finding that the Respondents, Walsucks and Walmarket
Puerto Rico, have engaged in abusive registration of the domain
names "wal-martcanadasucks.com", "wal-martcanadasucks.com",
"walmartuksucks.com", "walmartpuertorico.com" and
"walmartpuertoricosucks.com" within the meaning of paragraph 4(a)
of the Policy, the Panel orders that the domain names
"wal-martcanadasucks.com", "wal-martcanadasucks.com",
"walmartuksucks.com", "walmartpuertorico.com" and
"walmartpuertoricosucks.com" be transferred to the Complainant,
Wal-Mart Stores, Inc.
Background:
These domains were owned by Kenneth J. Harvey, apparently a speculator
in domain names.
Acccording to the decision:
The "walmartcanadasucks.com" and "walmartuksucks.com" web pages
each state that "This is a freedom of information site set up for
dissatisfied Walmart Canada [or UK, respectively] customers." Each site
invites visitors to "Spill Your Guts" with a "horror story relating to
your dealings with Wal-Mart Canada [or UK, respectively]". On the
"walmartcanadasucks.com" website, Respondent has posted "Wal-Mart Horror
Story #1" which recounts his version of events in respect to the
"walmartcanada.com" domain name. Each website posts a photograph of
Respondent, labeled "President", and Respondent?s biography. Each "Spill
Your Guts" page indicates "If we feel your story is interesting, it
might be included in award-winning author Kenneth J. Harvey?s
forthcoming book - "Wal-MartCanadaSucks.com" [or, on UK page, "about
Walmart"]".
Walmark indicated these domains were registered in bad faith, and
indicated:
Respondents' free speech argument is a convenient and transparent
dodge. It does not even make sense with respect to three of the domain
names: WAL-MARTCANADASUCKS.COM, WALMARTPUERTORICOSUCKS.COM, and
WALMARTPUERTORICO.COM. There are no websites attached to these domain
names. Respondents offer no evidence to support a claim that they have
made legitimate use of any of these three domain names.
The arbitrator indicated:
Respondent has appended the term "-sucks" to domain names that
are, in the absence of that term, confusingly similar to Complainant?s
mark. The addition of the pejorative verb "sucks" is tantamount to
creating the phrase "Wal-Mart Canada sucks" (and comparable phrases with
Respondent?s other "-sucks" formative domain names). The elimination of
the spacing between the terms of the phrase is dictated by technical
factors, and by the common practice of domain name registrants. The
addition of a common or generic term following a trademark does not
create a new or different mark in which Respondent has rights.
The decision noted that:
Respondent argues that addition of the word "sucks" to the base
names "walmartcanada", "wal-martcanada", "walmartuk" and
"walmartpuertorico" causes such names to lose their confusing similarity
with Complainant?s "Wal-Mart" trademark. Respondent contends that
because an Internet user or consumer viewing a "-sucks" formative domain
name would assume that Complainant is not the sponsor of or associated
with a website identified by such address, Respondent?s "-sucks"
formative marks cannot be confusingly similar to Complainant?s mark.
In support of this argument, Respondent refers to Lucent
Technologies, Inc., v. Lucentsucks.com, 95 F. Supp. 2d 528 (E.D.Vir.
2000). It is first important to note that the observations made by Judge
Brinkema in the Lucentsucks.com opinion regarding the issue of confusing
similarity are in the nature of dicta, since the court dismissed the
action against defendant for lack of jurisdiction 10. Judge Brinkema?s
opinion in Lucentsucks.com, and one decision on which she relies, Bally
Total Fitness v. Faber, 29 F. Supp. 2d 1161 (C.D. Cal. 1998), each lend
some support to Respondent's position. However, both cases are
distinguishable.
This defense was rejected, however, and the WIPO panel found on behalf
of Walmart, that various "sucks" domains were "confusingly similiar" to
the Walmart trademarks.
In Bally, the court granted summary judgment in favor of a
defendant that used the "Bally" trademark on a web page, appending the
word "sucks", to create a "ballysucks" web page. In that case,
"ballysucks.com" was not registered and was not used as a second-level
domain name. The principal issue was whether the defendant could
lawfully
express itself on its web page using the trademark "Bally" in
combination
with the word "sucks". The court held that since the "ballysucks" web
page was devoted to critical commentary regarding Bally, and the
defendant did not have a commercial purpose in maintaining the site, the
defendant had a valid free speech interest in using Bally?s mark.
The court observed that even a "ballysucks.com" domain name might
not constitute trademark infringement ("? even if Faber did use the mark
as part of a larger domain name, such as ?ballysucks.com?, this would
not necessarily be a violation as a matter of law." 29 F. Supp., at
1165). It made this observation in the context of applying the
Sleekcraft factors. In Bally, the court found the defendant's intent in
establishing its "ballysucks" web page was to criticize the trademark
holder, and this factor weighed heavily in favor of the defendant. In
the present proceeding, Respondent?s intent is different.
In Lucentsucks.com, the court observed that "Defendant argues
persuasively that the average consumer would not confuse lucentsucks.com
with a web site sponsored by plaintiff" 11 . However, the court did not
undertake any particularized analysis of the disputed domain name as
compared with the plaintiff?s trademark. Moreover, the court observed
that: "A successful showing that lucentsucks.com is effective parody
and/ or a cite [sic] for critical commentary would seriously undermine
the requisite elements for the causes of action at issue in this case."
12 No such showing had been made by the defendant in Lucentsucks.com.
The court was speaking in the abstract - and in dicta -- about a future
case in which the trademark issues would be fully litigated. Even so,
the court indicated that the defendant?s intent in registering and using
the disputed domain name would be an important element in determining
whether cybersquatting had occurred. The Panel does not consider
Lucentsucks.com to stand for the proposition that "-sucks" formative
domain names are immune as a matter of law from scrutiny as being
confusingly similar to trademarks to which they are appended. Each case
must be considered on its merits.
The Panel is not making any determination regarding the
registrants and users of other "-sucks" formative domain names (such as
"walmartsucks.com"). The record of this proceeding evidences that
Respondent did not register "walmartcanadasucks.com" and his other
"-sucks" names in order to express opinions or to seek the expression of
opinion of others. The record indicates that his intention was to
extract money from Complainant. An application of the Sleekcraft factors
in another context involving Complainant?s mark and the word "sucks"
might produce a different result than that reached here. The Panel notes
that use of a domain name confusingly similar to a mark may be justified
by fair use or legitimate noncommercial use considerations, and that
this may in other cases permit the use of "-sucks" formative names in
free expression forums.
Complainant has met the burden of proving that Respondent is the
registrant of domain names that are identical or confusingly similar to
a trademark in which Complainant has rights, and it has thus established
the first of the three elements necessary to a finding that Respondent
has engaged in abusive domain name registration.
Possible NCC action:
1. Domain names with a trademark plus the term "sucks" are not
confusingly similar to a trademark. The term "sucks" is clearly a
pejorative term, used for criticism and free speech. ICANN should not
be in the business of preventing people from creating various "sucks"
web pages.
2. Persons have a right to create both non-commerical and commercial
web pages criticizing or engaging in parody of products, firms or
organizations.
(this too could be improved).
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James Love, Director | http://www.cptech.org
Consumer Project on Technology | mailto:love@cptech.org
P.O. Box 19367 | voice: 1.202.387.8030
Washington, DC 20036 | fax: 1.202.234.5176
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