v.
Walsucks and Walmarket Puerto Rico
[Indexed as: Wal-Mart Stores v. Walsucks]
[Indexed as: WALMARTCANADASUCKS.COM et al.]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Commenced: 31 May 2000
Judgment: 20 July 2000
Case No. D2000-0477
Presiding Panelist: Frederick M. Abbott
Domain name - Domain name dispute resolution policy - U.S. Trademark - Canadian Trademark - Canadian Domain names - Identical - Confusingly similar - Rights or legitimate interest - Bad faith registration - Bad faith use - Abusive domain name registration - Freedom of Expression - Consulting Fees - Extract Payments - Intention for Registration of Sucks Site Important.
Complainant is owner of trademark registrations for WAL-MART in association with retail department stores in the United States, Canada and 46 other countries. Respondent is a journalist and internationally-renowned author. Respondent asserts that he registered the domain names in dispute as a method of protesting the business practices of Complainant.
Held: Domain Name(s) Transferred
Respondent has registered the domain name walmartpuertorico.com.
This domain name is identical to Complainants trademark, except that:
(1) the domain name adds the generic top-level domain name ".com", (2)
the domain name employs lower case letters and eliminates a hyphen, and
(3) the domain name adds "puertorico" to the mark. These differences
have no legal significance and do not distinguish the domain name in question
from Complainants trademark. The Panel finds that walmartpuertorico.com
is identical and confusingly similar to WAL-MART.
With respect to the four remaining domain names, Respondent has
appended the term -sucks to domain names that are, in the absence of
that term, confusingly similar to Complainants mark. Two factors
compel a determination that Respondents disputed domain names are confusingly
similar to Complainants mark. First, Complainants trademark is a very
strong mark, well known throughout the United States, Canada, and other
parts of the world. Second is Respondents intent in selecting the
disputed domain names. Respondent registered the names in order to
extract payment from Complainant by threatening to disrupt its business.
Courts have recognized that the intentional registration of a domain name
knowing that the second-level domain is another company's valuable trademark
weighs in favor of likelihood of confusion. By using Complainants
mark in its domain name, Respondent makes it likely that Internet users
entering "Wal-Mart" into a search engine will find its walmartcanadasucks.com
and other walmart-formative websites. The Panel is satisfied that
the disputed domain names are confusingly similar to Complainants trademark.
Respondent argues that addition of the word "sucks" to the disputed
domain names, causes such names to lose their confusing similarity with
Complainants trademark. In support of this argument, Respondent
refers to Lucent Technologies, Inc., v. Lucentsucks.com (hereinafter "Lucentsucks.com").
While this case lends some support to Respondents position, it is distinguishable
from the present case. In Lucentsucks.com, the court did not compare
the disputed domain name with the plaintiffs trademark. The court
also indicated that the defendants intent in registering and using the
disputed domain name would be an important element in determining whether
cybersquatting had occurred. Lucentsucks.com does not 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.
To establish his rights or legitimate interests in the disputed
domain names, Respondent has relied on his alleged use of the names for
legitimate non-commercial or fair use purposes. Respondent established
the walmartcanadasucks.com website for a commercial purpose: to demonstrate
to Complainant that it was not adequately protecting its trademark interests.
He registered the other names he holds in his self-defined role as domain
name consultant. He has sought compensation from Complainant for his activities.
Respondents claim to a "freedom of expression" interest in establishing
the walmartcanadasucks.com and walmartuksucks.com websites is contradicted
by his own words. A demand for payment from the potential and actual subject
of critical sites is fundamentally inconsistent with the right of free
expression. The Panel determines that Respondents intention for
registering the domain names in dispute is commercial, and not within the
scope of fair use or legitimate noncommercial use. He has failed
to establish rights or legitimate interests in the disputed domain names.
Respondent registered the disputed domain names and demanded consulting
fees from Complainant as compensation for his actions. Implicit in such
demand is that Respondent would forego using the disputed domain names,
or would transfer them to Complainant, if his consulting demands were met.
The Panel determines that Respondent registered the disputed domain names
for the purpose of selling or otherwise transferring rights in them to
the Complainant for consideration in excess of his out-of-pocket costs
directly related to the names. Respondent threatened to disrupt Complainants
business if his consulting demands were not met. Respondent is intentionally
using certain of the disputed domain names to attract Internet users to
his websites. All these activities constitute bad faith use and registration
within the meaning of the Policy.
The Panel stresses that this decision does not address legitimate
freedom of expression sites established by parties critical of trademark
holders. The Panel is aware that there are numerous websites identified
by -sucks formative domain names. This decision does not seek to
stifle freedom of expression on the Internet, nor does it seek to support
a cause of action for trademark holders against -sucks formative domain
names. This decision is solely directed at a blatant case of abuse
of the domain name registration process.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted October 24, 1999
Service Agreements referred to
Tucows.com (Domain Direct) Service Agreement, effective May 13, 2000;
May 15, 2000; May 17, 2000
Cases referred to
AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979).
Bally Total Fitness v. Faber, 29 F. Supp. 2d 1161 (C.D. Cal. 1998).
Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036,
1053-61 (9th Cir. 1999).
Lucent Technologies, Inc., v. Lucentsucks.com, 95 F. Supp. 2d 528 (E.D.Vir.
2000).
Pacific Telesis v. International Telesis Comms., 994 F.2d 1364, 1369
(9th Cir. 1993).
Sporty's Farm v. Sportsman's Market, 202 F.3d 489, 498, (2d Cir. 2000).
Panel Decisions referred to
DFO, Inc. v. Williams, ICANN Case No. D2000-0181 (WIPO).
Educational Testing Service v. TOEFL, ICANN Case No. D2000-0044 (WIPO).
Wal-Mart Stores, Inc. v. Walmarket Canada, ICANN Case No. D2000-0150
(WIPO).
1. The Parties
The Complainant is Wal-Mart Stores, Inc., with place of business in
Bentonville, Arkansas, USA.
The Respondents are Walsucks and Walmarket Puerto Rico, with addresses
in Burnt Head, Cupids, Newfoundland, Canada.
2. The Domain Name(s) and Registrar(s)
The disputed domain names "walmartcanadasucks.com", "wal-martcanadasucks.com",
"walmartuksucks.com", "walmartpuertorico.com" and "walmartpuertoricosucks.com".
The registrar of the disputed domain names is Tucows.com (Domain Direct),
with business address in Toronto, Ontario, Canada.
3. Procedural History
The essential procedural history of the administrative proceeding is
as follows:
a) The Complainant initiated the proceeding by the filing of a complaint
via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO")
on May 23, 2000, and by courier mail received by WIPO on May 24, 2000.
Payment by Complainant of the requisite filing fees accompanied the courier
mailing.
b) On May 26, 2000, Respondent transmitted an e-mail message to the
Director of the WIPO Arbitration and Mediation Center, Mr. Francis Gurry,
requesting that WIPO refuse to accept Complainants complaint on grounds
that Respondent had filed a complaint with the Internet Corporation for
Assigned Names and Numbers (ICANN) based on an earlier administrative panel
determination against Respondent, asserting that WIPO is in a conflict
of interest position. On May 28, Mr. Gurry advised Respondent that WIPO
rejected his request.
c) On May 29, 2000, WIPO transmitted a Request for Registrar Verification
to the registrar, Tucows.com (Domain Direct). On May 31, 2000, WIPO completed
its formal filing compliance requirements checklist.
d) On May 31, 2000, WIPO transmitted notification of the complaint
and commencement of the proceeding to Respondent via e-mail and courier
mail.
e) On June 10, 2000, Respondent via e-mail requested an extension of
the deadline for filing a response. On June 15, WIPO granted an extension
until June 26, 2000.
f) On June 26, 2000, Respondent transmitted his response to WIPO via
e-mail. A hardcopy of the response was received by WIPO on June 30, 2000.
Respondent also transmitted his response to Complainant.
g) On July 3, 2000, WIPO invited the undersigned to serve as panelist
in this administrative proceeding, subject to receipt of an executed Statement
of Acceptance and Declaration of Impartiality and Independence ("Statement
and Declaration"). On July 3, 2000, the undersigned transmitted by fax
the executed Statement and Declaration to WIPO.
h) On July 4, 2000, the Complainant and Respondent were notified by
WIPO of the appointment of the undersigned sole panelist as the Administrative
Panel (the "Panel") in this matter. WIPO notified the Panel that, absent
exceptional circumstances, it would be required to forward its decision
to WIPO by July 17, 2000. On July 4, 2000, the Panel received an electronic
file in this matter by e-mail from WIPO. The Panel subsequently received
a hard copy of the file in this matter by courier mail from WIPO.
i) Accompanying the hard copy of the file received by the Panel was
a request by Complainant, dated June 26, 2000, for the opportunity to file
a brief reply to Respondents response. On July 10, 2000, Respondent requested
(via e-mail) that the Panel grant it the opportunity to respond to Complainants
reply, should the Panel grant Complainants request to file a reply. On
July 11, 2000, the Panel advised the parties of its decision to grant leave
to Complainant to file a reply to Respondents response, and to grant leave
to Respondent to file a response to Complainants reply, and the Panel
established a proposed timetable for receipt of such submissions. The parties
via e-mail indicated their agreement to the proposed timetable. The Panel
further advised the parties and WIPO that in view of its granting of leave
to file supplemental submissions, it anticipated rendering its decision
by July 20, 2000.
j) On July 12, 2000, Complainant transmitted via e-mail its Supplemental
Reply to the Panel, Respondent and WIPO. On July 15, 2000, Respondent transmitted
his Response to Complainants Supplemental Reply to the Panel, Complainant
and WIPO. The Panel confirmed via e-mail its receipt of these submissions
to Complainant and Respondent, respectively.
The Panel has not received any requests from Complainant or Respondent
regarding further submissions, waivers or extensions of deadlines, and
the Panel has not found it necessary to request any further information
from the parties. The proceedings have been conducted in English.
3. Factual Background
According to the registrars response to WIPOs request for verification,
the registrant of the disputed domain names "WALMARTCANADASUCKS.COM", "WAL-MARTCANADASUCKS.COM",
"WALMARTUKSUCKS.COM" and "WALMARTPUERTORICOSUCKS.COM" is "Walsucks", with
Administrative Contact at "Harvey, Kenneth". According to the registrars
response to WIPOs request for verification, the registrant of the disputed
domain name "WALMARTPUERTORICO.COM" is "Walmarket Puerto Rico", with Administrative
Contact at "Harvey, Kenneth". (E-mail from registrar to WIPO, dated May
29, 2000).
According to the registrars response, the domain name "WALMARTCANADASUCKS.COM"
was registered on May 13, 2000; the domain name "WAL-MARTCANADASUCKS.COM"
was registered on May 13, 2000; the domain name "WALMARTUKSUCKS.COM" was
registered on May 15, 2000; the domain name "WALMARTPUERTORICO.COM" was
registered on May 17, 2000; and the domain name "WALMARTPUERTORICOSUCKS.COM"
was registered on May 17, 2000. In each case, the record of registration
was last updated on the same date as the record was created.
A prior Administrative Panel Decision conducted under the Policy, Wal-Mart
Stores, Inc. v. Walmarket Canada, Case No. D2000-0150, dated May 2, 2000,
involved Mr. Kenneth Harvey as Administrative Contact for Walmarket Canada.
In that proceeding, initiated by Complainant in this proceeding, the panelist
determined that Walmarket Canada had engaged in abusive domain name registration
in connection with the domain name "walmartcanada.com", and directed the
registrar, Register.com, to transfer the disputed domain name to Complainant.
In that proceeding, the panelist found that Walmarket Canada had offered
to sell the disputed domain name (for five million dollars), and that this
action constituted bad faith. The panelist also found that Walmarket Canada
had indicated an intention to use the disputed domain name "to develop
a confusingly similarly-named business in Thailand, where the Complainant
has a registered mark". The panelist concluded that this "is also indicative
of bad faith". (D2000-0150, at sec. 6)
As part of the factual record in the Wal-Mart v. Walmarket Canada proceeding,
the panelist recited the following e-mail message from Walmarket to Wal-Mart:
"This is to let you know that www.WalMartCanada.com, http:\\www.WalMartCanada.com
is up for auction at GreatDomains.com. I am the owner. Perhaps certain
executives within your company might be interested in purchasing it. Thanks
for passing this along to the appropriate individuals. Kindest regards,
Kenneth J. Harvey." D2000-0150, at sec. 4.
In Wal-Mart v. Walmarket, the panelist noted as part of its factual
record:
"The Complainant operates stores throughout the United States, employing
some 600,000 workers. It also has 144 stores in Canada and lesser numbers
in Puerto Rico, Mexico, Brazil, Argentina, China, United Kingdom, Korea,
Indonesia and Germany. Its stores are discount retail stores, grocery stores,
pharmacies, membership warehouse clubs and deep discount warehouse outlets.
The Complainant holds registrations for the mark <WAL-MART> for
use in retail department stores in the United States and Canada. The registration
is on the basis that the mark was known in Canada as early as 1965. It
also holds registrations for the mark <WAL-MART> in 46 countries, including
Thailand, the United Kingdom and the Peoples Republic of China. The Thailand
registration is Number SM3711, registered November 24, 1995, and is for
retail department store services. The <WAL-MART> mark has been in continuous
use in the United States since 1962 and is used in the Complainants extensive
advertising of its services and merchandise on television, websites, etc.
For example, amongst its Internet addresses are <http:\\www.walmart.com>,
<http:\\www.wal-mart.com> and <http:\\walmartstores.com>.
The Respondent has no rights granted by the Complainant in any of the
marks involving the word Wal-Mart."
The panelist in Wal-Mart v. Walmarket decided that Complainant has
rights in the trademark "Wal-Mart" within the meaning of paragraph 4(a)
of the Policy, and that the domain name "walmartcanada.com" was confusingly
similar to Complainants mark. The panelist said:
"In the Panels view, the domain name <WALMARTCANADA.COM> is confusingly
similar to the Complainants trademarks registered in the USA, Canada and
Thailand and other countries <WAL-MART>. The Complainant has a reputation
for this name for a convenience store. This reputation is well-recognised
in the United States and Canada particularly, but in many other countries
also. Applying the usual tests under trademark law and passing-off law,
the Panel decides that the domain name is confusingly similar. Persons
dealing with, or even perusing the website of, <WALMARTCANADA.COM> could
easily conclude that the registrant of the domain name was associated with
the Wal-Mart operation in Canada. Nor is it any excuse to say that the
Complainant does not trade in Thailand. It owns a registered trademark
in that country which it is entitled to use. It is entitled to the benefit
of registration unless and until the Thailand authorities revoke the registration,
which is not likely to occur until after a judicial hearing. It would be
difficult to imagine that any Court would uphold the use of a name confusingly
similar to a registered mark where that name had first been used some 4
years after the registration of the mark." (D2000-0150, at sec. 6)
On March 10, 2000, prior to the panelists decision in Wal-Mart v.
Walmarket Canada, Respondent in this proceeding sent an e-mail message
with the following text to Complainant:
"As a gesture of good will, I would like to point out that Wal-MartCanada.net
and Wal-MartCanada.org remain unregistered. I suggest you inform Wal-Mart
so that they might register those specific domain names before they are
snatched up by roaming marauders." (E-mail from Kenneth Harvey to Mary
J. Saunders, March 10, 2000, Complaint, Annex C)
On June 3, 2000, subsequent to the panel determination in Wal-Mart
v. Walmarket Canada and subsequent to the transmittal of notice to Respondent
via e-mail and courier mail of the initiation of this proceeding, Respondent
transmitted the following message via e-mail to Complainant and its counsel:
"C O P Y
WITHOUT PREJUDICE
Mr. Pelletier:
Some time ago, before the original dispute over 'walmartcanada.com'
was filed with WIPO by Mary Jane Saunders, I informed Ms. Saunders that
other variations of Wal-Mart Canada domain names were available. I informed
her that 'Wal-MartCanada.net' and 'Wal-MartCanada.org' were available for
purchase and that she should inform executives at Wal-Mart so that they
might purchase them. I refrained from buying them. Some time later, these
names were-- indeed-- purchased by Wal-Mart. I passed on this information
to Ms. Saunders in my capacity as a domain name consultant.
Therefore, I would like to receive compensation for this consultation.
Also, through my purchase of 'walmartcanada.com' and 'walmartcanadasucks.com'
and other names that I presently hold, I have intentionally highlighted
the fact that Wal-Mart does not hold rights to basic Internet domain names
that other large corporations have purchased (in their names) years ago.
This was made blatantly obvious by my prompting Wal-Mart to purchase every
conceivable combination of name on their domain name buying spree from
May 12th to May 16th. Again, I wish to be compensated for this pivotal
role I played in protecting Wal-Mart from future difficulties.
For your information, as of this morning, there are several other essential
and blatantly-fundamental Wal-Mart dot-com, dot-net and dot-org names available
for purchase that Wal-Mart does not own. I am not interested in buying
them, as I am growing tired of this dispute and would like to bring it
to an end. For an additional domain name consulting fee, I would gladly
inform Wal-Mart of the important names left hanging for others to purchase
at their will.
If you wish to discuss this via telephone, my number is: 709-528-1996.
I look forward to hearing from you.
Sincerely,
Kenneth J. Harvey"
(Complainants Supplemental Reply)
Respondent has acknowledged the authenticity of the foregoing message,
stating:
"With regards to the e-mail message submitted by the Respondent to
Wal-Mart on June 3, 2000, this message was in reference to the dispute
over WALMARTCANADA.COM, and not in reference to the domain names presently
under dispute. The Respondent suggested that a consulting fee would be
appropriate to inform Wal-Mart of other available domain names as a means
of settling the legal action brought against Wal-Mart over WALMARTCANADA.COM.
The letter has no bearing on the issue presently at hand. These five domain
names currently in dispute were never offered for sale nor are they for
sale." (Respondents Response to Complainants Supplemental Reply)
Respondent has established websites at the addresses identified by
the domain names "walmartcanadasucks.com" and "walmartuksucks.com". Complainant
indicates that these websites were established subsequent to the initiation
of this proceeding (Complainants Supplemental Reply). Respondent has disputed
the validity of this assertion with respect to "walmartcanadasucks.com"
(Respondents Response to Complainants Supplemental Reply).
Respondent has not established websites at the addresses identified
by the domain names "wal-martcanadasucks.com", "walmartpuertorico.com"
and "walmartpuertoricosucks.com".
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
Respondents biography. Each "Spill Your Guts" page indicates "If we feel
your story is interesting, it might be included in award-winning author
Kenneth J. Harveys forthcoming book - Wal-MartCanadaSucks.com [or, on
UK page, about Walmart]".
The Service Agreement in effect between Respondent and Domain Direct
subjects Respondent to Domain Directs dispute settlement policy, the Uniform
Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26,
1999, and with implementing documents approved by ICANN on October 24,
1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy")
requires that domain name registrants submit to a mandatory administrative
proceeding conducted by an approved dispute resolution service provider,
of which WIPO is one, regarding allegations of abusive domain name registration
(Policy, para. 4(a)).
5. Parties Contentions
A. Complainant
Complainant states:
"The factual and legal grounds for this Complaint are:
A. On March 10, 2000, Complainant initiated a Complaint for Domain
Name Dispute Resolution captioned Wal-Mart Stores, Inc. v. Walmarket Canada,
Case No. D2000-0150, with the WIPO Arbitration and Mediation Center. That
Complaint alleged that Walmarket Canada registered and used the domain
name WALMARTCANADA.COM in bad faith. Walmarket Canada is an entity owned
and controlled by Respondents administrative contact, Kenneth J. Harvey.
B. On March 10, 2000, after receiving the aforementioned Complaint,
Mr. Harvey sent the following email message to Complainants representative:
As a gesture of good will, I would like to point out that "Wal-MartCanada.net"
and "Wal-MartCanada.org" remain unregistered. I suggest you inform Wal-Mart
so that they might register those specific domain names before they are
snatched up by roaming marauders.
A copy of this email message is attached to this Complaint...
C. On April 3, 2000, Mr. Harvey sent the following message to the WALMARTCANADA.COM
registrar, Register.com:
This is to inform you that we are in the process of filing a law suit
against Wal-Mart to retain ownership of our domain name walmartcanada.com.
The dispute is presently before WIPO for arbitration. There has yet to
be a ruling. Regardless of WIPOs decision, we will be filing suit against
Wal-Mart for harassment and other - yet undisclosed charges.
D. On May 9, 2000, an Administrative Panel Decision issued from the
WIPO Arbitration and Mediation Center in the case of Wal-Mart Stores, Inc.
v. Walmarket Canada, Case No. D2000-0150. The Administrative Panel found
(a) that the domain name WALMARTCANADA.COM is identical or confusingly
similar to Complainants Wal-Mart trademark; (b) that Walmarket Canada
has no rights or legitimate interests in respect of the domain name; and
(c) that Walmarket Canada registered and used the domain name WALMARTCANADA.COM
in bad faith. The Administrative Panel order directed the Registrar, Register.com,
to transfer the domain name to Complainant. [Footnote 1: Mr. Harvey claims
that he filed suit to prevent this transfer. Complainant has seen no evidence
of this lawsuit.]
E. On May 13, 2000, Mr. Harvey registered the domain names WALMARTCANADASUCKS.COM
and WAL-MARTCANADASUCKS.COM in the name of Respondent Walsucks.
F. On May 14, 2000, Mr. Harvey sent an email message to Complainants
representative, criticizing Complainant for failing to act promptly in
response to his earlier admonition about roaming marauders registering
Wal-Mart domain names. He then announced that he was the owner of WALMARTCANADASUCKS.COM,
WAL-MARTCANADASUCKS.COM and WALMARTUKSUCKS.COM.
Notably, Mr. Harveys
announcement predated his actual registration of the domain name WALMARTUKSUCKS.COM.
G. On May 15, 2000, Mr. Harvey registered the domain name WALMARTUKSUCKS.COM
in the name of Respondent Walsucks.
H. On May 16, 2000, Mr. Harvey sent another email message to Complainants
representative advising that he had obtained WALMARTPUERTORICO.COM and
WALMARTPUERTORICOSUCKS.COM
. Again, Mr. Harveys announcement predated
his actual registration of these domain names. On May 17, 2000, Mr. Harvey
registered the domain name WALMARTPUERTORICO.COM in the name of Respondent
Walmarket Puerto Rico and the domain name WALMARTPUERTORICOSUCKS.COM in
the name of Respondent Walsucks.
I. Complainant did not authorize Mr. Harvey to register the domain
names WALMARTCANADASUCKS.COM, WAL-MARTCANADASUCKS.COM, WALMARTUKSUCKS.COM,
WALMARTPUERTORICO.COM, and WALMARTPUERTORICOSUCKS.COM for himself or on
behalf of Respondents. Complainant objects to all five domain name registrations
because each domain name is likely to be confused with Complainants distinctive
WAL-MART trademark.
J. Complainants rights in its WAL-MART mark are expansive and predate
Mr. Harveys registration of the domain names WALMARTCANADASUCKS.COM, WAL-MARTCANADASUCKS.COM,
WALMARTUKSUCKS.COM, WALMARTPUERTORICO.COM, and WALMARTPUERTORICOSUCKS.COM.
K. In the United States, Complainant owns, among other trademarks,
L. Among the marks Complainant owns and uses in Canada is
M. Complainants WAL-MART mark is famous. The WAL-MART mark is famous
in part, because the mark has been in continuous use since at least 1962.
The mark is also famous because Complainant is the worlds number one retailer
with stores in the United States, Canada, Puerto Rico, Mexico, Brazil,
Argentina, China, United Kingdom, Korea, Indonesia and Germany
. The WAL-MART
mark is likewise famous, because Complainant makes extensive use of the
mark. Complainant uses its WAL-MART mark on its discount retail stores,
grocery stores, membership warehouse clubs, pharmacies, deep discount warehouse
outlets, in advertising throughout the world, on its websites, its scholarship
programs, telethons for childrens hospitals, industrial development grants,
environmental programs and a variety of community support programs.
Finally,
the WAL-MART mark is famous, because Complainant engages in extensive advertising
of its services and merchandise, and uses the WAL-MART mark in this regard.
The Internet is a significant advertising vehicle for Complainant. Complainant
has websites located at, among other Internet addresses, http://www.walmart.com,
http://www.wal-mart.com, and http://www.walmartstores.com. These websites
are an important part of Complainants corporate online identity and brand.
N. The domain names WALMARTCANADASUCKS.COM, WAL-MARTCANADASUCKS.COM,
WALMARTUKSUCKS.COM, WALMARTPUERTORICO.COM, and WALMARTPUERTORICOSUCKS.COM
are identical or confusingly similar to Complainants WAL-MART trademark.
First, there is clear similarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression. The first word
in each domain name is either WALMART or WAL-MART. WAL-MART is identical
to Complainants mark, while WALMART is identical to Complainants mark
but without the hyphen. Mr. Harvey took Complainants principal trademark
and tacked on other words to form the domain names WALMARTCANADASUCKS.COM,
WAL-MARTCANADASUCKS.COM, WALMARTUKSUCKS.COM, WALMARTPUERTORICO.COM, and
WALMARTPUERTORICOSUCKS.COM.
O. In light of the significant fame associate with the WAL-MART mark,
consumers are likely to believe that any domain name incorporating the
Wal-Mart name (or WalMart) is associated with Complainant. The domain names
at issue are likely to confuse customers and cause them to believe mistakenly
that these domain names are associated with Wal-Mart stores and specifically,
the Wal-Mart family of stores in Canada, Puerto Rico and the United Kingdom.
This is particularly troublesome, since Mr. Harvey clearly intend to use
these domain names to disparage Complainant and Complainants WAL-MART
mark
.
Neither Respondents nor Mr. Harvey have any rights or legitimate interests
in respect of the domain names WALMARTCANADASUCKS.COM, WAL-MARTCANADASUCKS.COM,
WALMARTUKSUCKS.COM, WALMARTPUERTORICO.COM, and WALMARTPUERTORICOSUCKS.COM.
First, neither Respondents nor Mr. Harvey are currently using any of
the domain names with any legitimate, ongoing business. Indeed, their only
visible activity has been to threaten Complainant with litigation and then
seek out and register as many Wal-Mart domain names as possible. Mr.
Harvey, acting in the name of the various Respondents, seems to enjoy forcing
Complainant to expend resources to protect its principal trademark. Complainant
suspects that Mr. Harvey is peeved because Complainant choose to initiate
a Complaint for Domain Name Dispute Resolution instead of paying him a
large sum of money for the WALMARTCANADA.COM domain name.
Second, to the best of Complainants knowledge, neither Respondents
nor Mr. Harvey hold rights to any trademark consisting in whole or in part
of the terms WAL-MART or WALMART. There is no evidence that Respondents
or Mr. Harvey have made actual use of, or demonstrable preparations to
use the domain names WALMARTCANADASUCKS.COM, WAL-MARTCANADASUCKS.COM, WALMARTUKSUCKS.COM,
WALMARTPUERTORICO.COM, and WALMARTPUERTORICOSUCKS.COM with a bona fide
offering of any goods and services.
Third, while Mr. Harvey claims that he has plans to use the domain
names, those plans are suspect. Again, Mr. Harvey registered these domain
names in the wake of the Administrative Panels decision ordering Register.com
to transfer of the WALMARTCANADA.COM domain name to Complainant. It appears
that his plan is to harass Complainant for enforcing its legitimate trademark
rights. He is trying to register various Wal-Mart domain names in a deliberate
effort to interfere with Complainants legitimate business activities.
Even Mr. Harveys stated plan to organize freedom of expression forums
for complaints against Wal-Mart is suspect. Mr. Harvey suggests that when
websites are developed around the domain names WALMARTCANADASUCKS.COM,
WAL-MARTCANADASUCKS.COM, WALMARTUKSUCKS.COM, WALMARTPUERTORICO.COM, and
WALMARTPUERTORICOSUCKS.COM, those sites will operate and enjoy the same
legal protection as walmartsucks.com, a U.S.-based website. Complainant
notes that Respondents are all Canadian entities, and Mr. Harvey, the administrative
contact, appears to be a Canadian citizen. Neither Respondents nor Mr.
Harvey can claim protection under U.S. law for a Canadian website that
disparages Complainant. Freedom of expression under Canadian law certainly
does not translate into a license to libel Complainant by writing, for
example, that Wal-Mart [has] something against Puerto Rico.
Complainant
asserts that Mr. Harveys so-called plan to develop freedom of expression
forums is nothing more than a clever ploy to make Complainant dance to
his tune.
Complainant believes that Mr. Harvey registered and used the domain
names WALMARTCANADASUCKS.COM, WAL-MARTCANADASUCKS.COM, WALMARTUKSUCKS.COM,
WALMARTPUERTORICO.COM, and WALMARTPUERTORICOSUCKS.COM in bad faith. Again,
these domain names are not being used with any ongoing, legitimate business.
To the contrary, circumstances indicate that Respondents, through Mr. Harvey,
registered the domain names primarily to disrupt Complainants business.
Complainant relies on ICANN Domain Name Dispute Resolution Procedures
Paragraph 4(b)(iii), to wit:
the following circumstances . . . shall be evidence of the registration
and use of the domain name in bad faith:
(iii) You have registered the domain name primarily for disrupting
the business of a competitor.
Here, Mr. Harvey registered five Wal-Mart domain names within days
of receiving notice of the Administrative Panels decision in the case
of Wal-Mart Stores, Inc. v. Walmarket Canada, Case No. D2000-0150. The
timing of these registrations alone is evidence of bad faith.
Further evidence of bad faith is shown by the number of Wal-Mart
domain names Respondents registered. Respondents have registered five (5)
domain names that include the name Wal-Mart or some variation thereof.
This number does not include WALMARTCANADA.COM, which the Administrative
Panel ordered transferred to Complainant. It is apparent that Respondents
are considering every available Wal-Mart domain name variant for registration
without regard to Complainants trademark rights. Mr. Harvey registered
the domain names WALMARTCANADASUCKS.COM, WAL-MARTCANADASUCKS.COM, WALMARTUKSUCKS.COM,
WALMARTPUERTORICO.COM, and WALMARTPUERTORICOSUCKS.COM with knowledge that
Complainant held rights in and to its WALMART mark. He had actual notice
of Complainants trademark rights in the United States and Canada as well
as in many other countries. He also had actual notice of Complainants
substantial business activities worldwide.
Finally, Respondents registration and use of these domain names is
a bad faith effort to harass Complainant and interfere with Complainants
business as shown by the fact that Mr. Harvey deliberately selected domain
names that disparage Complainant." (Complaint, sec. V).
Complainant supplementally states:
"Complainant respectfully disputes Respondents suggestion that because
the attached websites are freedom of expression forums, the domain names
at issue are immune to challenge. First, a domain name may be registered
and used in bad faith even when the attached website is used to express
opinion. See DFO, Inc. v. Williams, Case No. D2000-0181. Second, under
both U.S. and Canadian law, speech is not entitled to absolute protection
under all circumstances. Speech is only protected against governmental
interference. Where the speech does not involve an activity or institution
controlled by the government, there may not be any special protection.
This Complaint is brought under the Internet Corporation for Assigned
Names and Numbers (ICANN) Uniform Domain-Name Dispute-Resolution Policy.
Respondents agreed to submit to and participate in this type of mandatory
administrative proceeding when they registered each domain name through
Tucows.com, a private corporation. ICANN is, likewise, a non-profit, private
corporation, not a governmental entity. This domain name dispute procedure
is not a governmental process or activity, and WIPO is not a governmental
institution; therefore, the Complaint does not represent governmental interference
with claimed protected speech.
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.
Likewise, while there are websites associated with the remaining two
domain names, WALMARTCANADASUCKS.COM and WALMARTUKSUCKS.COM, Respondents
did not create those sites until after Wal-Mart initiated this complaint.
This is a post hoc attempt to make the domain names untouchable.
Finally, Respondents do not actually express any opinions about Wal-Mart
on either the WALMARTCANADASUCKS.COM or WALMARTUKSUCKS.COM websites. As
of the date of this Reply, the WALMARTCANADASUCKS.COM website contains
only one substantive file: Mr. Harveys photograph and biography. The WALMARTUKSUCKS.COM
website has the same photograph and biography but no critical commentary
about Wal-Mart. Respondents seek stories about Wal-Mart using terms like
spill your guts, but notably, Mr. Harvey has not posted his own views
on either site.
Respondents registered these domain names to annoy and harass Complainant
for pursuing a complaint against Mr. Harveys prior registration of the
domain name WALMARTCANADA.COM. Mr. Harvey cannot accept that Wal-Mart does
not have to pay him substantial amounts for that particular domain name.
Mr. Harvey is intent on hounding Wal-Mart until the company opens its purse
and pays him off.
What follows is the verbatim text of an email message Mr. Harvey sent
to Wal-Mart, Wal-Mart Canada and its counsel on June 3, 2000:
[see Factual Record, supra]
By this message, Mr. Harvey demands compensation for his pivotal role
in protecting Wal-Mart from future difficulties. This phrasing is a clever
subterfuge. Mr. Harvey wants Wal-Mart to pay him for thinking up (and presumably
registering) domain names that include, in whole or in part, the famous
WAL-MART mark. Wal-Mart must hire him as a paid consultant, or he will
continue his cybersquatting activities. Ironically, while Mr. Harveys
Response argues that Wal-Mart should not be allowed to register or own
any more SUCKS.COM sites, his email promises to show the company, for a
fee, several other essential and blatantly-fundamental Wal-Mart dot-com,
dot-net and dot-org names available for purchase that Wal-Mart does not
own.
Mr. Harvey does hope to benefit financially from these domain name
registrations. He could not persuade Wal-Mart to pay $5,000,000.00 for
the WALMARTCANADA.COM domain name, so he set out to find a way to force
Wal-Mart to pay him for other domain names. In Mr. Harveys case, freedom
of expression forum is simply a convenient name for ordinary cybersquatting.
Complainant is not trying to shut down Respondents sites as a way
to censor all forums of dissent against Wal-Mart Stores. Complainant filed
this complaint because the timing and events surrounding Respondents registration
of five domain names based on the WAL-MART mark support a finding of cybersquatting.
Complainant actually regrets having to call any attention to Mr. Harvey,
because he is using this domain name dispute to stir up publicity for himself
and his books. Again, the only substantive content on the www.walmartcandasucks.com
and www.walmartuksucks.com websites is Mr. Harveys picture and biography.
The objective of this Complaint is wholly above board and consistent with
ICANN policies." (Complainants Supplemental Reply)
Complainant requests that the Panel ask the Registrar to transfer the
domain names "walmartcanadasucks.com", "wal-martcanadasucks.com", "walmartuksucks.com",
"walmartpuertorico.com" and "walmartpuertoricosucks.com" from Respondent
to it. (Complaint, para. 13)
B. Respondent
Respondent states:
"As with WALMARTCANADASUCKS.COM, WALMARTCANADASUCKS.COM, WALMARTUKSUCKS.COM
and WALMARTPUERTORICOSUCKS.COM, the use of the SUCKS.COM suffix attached
to a company name has become a standard formula for Internet sites protesting
the business practices of a company. For instance, the use of WALMARTCANADASUCKS.COM
would, in no way, be confused as a site run by Wal-Mart.
In a recent, precedent-setting case, Judge Leonie Brinkema of the
U.S. District Court of the Eastern District of Virginia ruled that Russell
Johnson of Westwood, Calif., did not violate trademark law or the provisions
of the U.S. Anti-Cybersquatting Consumer Protection Act in registering
lucentsucks.com
(see
, The National Post, May 12, 2000, page C9) Judge
Brinkema stated that the average consumer would not confuse lucentsucks.com
with a Web site sponsored by the plaintiff. (see
, The National Post,
May 12, 2000, page C9)
In fact, Judge Brinkema noted that Registering a domain name in the
form of [company name] sucks.com to provide a forum for critical commentary
is not uncommon, and is part of an Internet phenomenon known as "cybergriping".
(see
, The National Post, May 12, 2000, page C9)
The site WALMARTSUCKS.COM has been in operation since 1997 and is sanctioned
under U.S. law. Although the Complainant suggests that the Respondent is
not a U.S. citizen and thus is not afforded such protection, the Respondent
suggests that the same protection would be extended under Canadian law
should the matter be challenged in Canadian court.
Returning to the LUCENTSUCKS.COM case: Michael Geist, a University
of Ottawa (in Canada) law professor who specializes in Internet law, said
of Judge Brinkemas decision: The Case makes legal sense and should be
welcomed on free speech grounds
(see
, The National Post, May 12, 2000,
page C9). The same article in The National Post stated: Even though the
ruling was made in a U.S. court, experts here (in Canada) suggest Judge
Brinkemas decision could be a factor if the issue ever comes to court
in Canada.
As for WALMARTPUERTORICO.COM, The Respondent is working on a book relating
to labour laws and tension between Wal-Mart and Wal-Mart staff at their
stores in Puerto Rico. The WALMARTPUERTORICO.COM site will be used as a
site to promote the forthcoming book, titled WalMart Puerto Rico.
The Respondent is an internationally-renowned author of eleven books,
some of which have been short-listed for national and international literary
awards. The Respondent is also a journalist with features and editorials
published in numerous newspapers, including: Globe & Mail, National
Post, Ottawa Citizen, Vancouver Sun, Toronto Star, Halifax Daily News,
and others. The Respondent has also written book reviews at the invitation
of: Globe & Mail, Ottawa Citizen, Books in Canada, and Telegraph Journal.
The Respondents short stories have won numerous awards and have been
anthologized in Canada, Australia, England and the United States. His books
have been published in several countries and have been translated into
Japanese. He has held the position of Writer-in-Residence at the University
of New Brunswick, which offers one of North Americas most distinguished
creative writing M.A. programs. (see
, Respondents CV).
Respondent has rights and legitimate interests in respect to the domain
names WALMARTCANADASUCKS.COM, WAL-MARTCANADASUCKS.COM, WALMARTUKSUCKS.COM
and WALMARTPUERTORICOSUCKS.COM due to the fact that the sites are currently
up and running as freedom of expression forums of complaint against Wal-Mart.
The Respondent has a legitimate right to run these sites as he has
a history of battling for freedom of expression. Also, he has a legitimate
gripe against Wal-Mart, namely that they divested him of his WALMARTCANADA.COM
domain name, which he owned. Therefore, he has legitimate dissatisfaction
with Wal-Mart and thus should be afforded the right to express his dissatisfaction
with Wal-Mart by using the SUCKS.COM sites to do so. These sites are also
open to all individuals who wish to register a complaint against Wal-Mart
in Canada, the UK or Puerto Rico. These are not money-making sites. There
are no advertisements posted on the sites, so the Respondent does not benefit
from running the sites in any way. The SUCKS.COM sites in question are
freedom of expression forums.
Should the Arbitrator decide to transfer ownership of WALMARTCANADASUCKS.COM,
WAL-MARTCANADASUCKS.COM, WALMARTUKSUCKS.COM and WALMARTPUERTORICOSUCKS.COM,
he or she would not only be taking away the rights of the Respondent to
speak out against Wal-Mart on these sites but would also be erasing any
use of the SUCKS.COMs by other disgruntled Wal-Mart customers or employees.
Wal-Mart has already purchased every other version of the SUCKS.COMs relating
to their name in an attempt to silence all dissatisfaction with the company.
These include: WALMARTSUCKS.NET, WALMARTCANADASUCKS.NET, WALMARTCANADASUCKS.ORG.
WALMARTUKSUCKS.NET, WALMARTUKSUCKS.ORG, [etc.]
The list goes on and on
and includes all versions of the above listed sites and all other countries
where Wal-Mart operates stores or plans to operate stores. Wal-Mart also
owns all hyphenated versions of the above cited names (IE: Wal-Mart also
owns: WAL-MARTSUCKS.NET, WAL-MARTSUCKS.ORG, WAL-MARTCANADASUCKS.NET, WAL-MARTCANADASUCKS.ORG,
[etc.]
). In short, there are no other SUCKS.COM sites remaining (featuring
the name of Wal-Marts various companies, IE: Wal-Mart Canada is a different
company from Wal-Mart UK) that Wal-Mart has not bought, other than the
ones owned by the Respondent. This hoarding of SUCKS.COM domains by Wal-Mart
is obviously the behavior of a domineering corporation that wishes to silence
and oppress any expressions of dissatisfaction against it.
The transfer of the Respondents domain names to Wal-Mart would be
a major blow against freedom of expression in Canada, the UK and Puerto
Rico.
The Respondent did not, in any way, seek to sell the domain names WALMARTCANADASUCKS.COM,
WAL-MARTCANADASUCKS.COM, WALMARTUKSUCKS.COM, WALMARTPUERTORICOSUCKS.COM
and WALMARTPUERTORICO.COM to the Complainant or to any other party. The
Respondent has not attempted to benefit financially from the sites in question.
The Respondent is using the sites as freedom of expression forums or--in
the case of WALMARTPUERTORICO.COM-- to promote a forthcoming book of the
same name. Therefore there is no evidence of the sites being registered
in bad faith or of being used in bad faith.
The Respondents use of the domain names in question does not interfere
with the Complainants ability to conduct business. The SUCKS.COM variations
would, in no way, be misinterpreted as sites run by Wal-Mart. Regardless,
a disclaimer has been posted on the home page of each site, stating that
the Respondents sites are not, in any way, affiliated with Wal-Mart.
Wal-Mart runs an Internet site at WAL-MART.COM, which services all
of the U.S. and Puerto Rico. They also own WALMARTCANADA.COM, which is
under development to service Canada.
Wal-Mart is merely seeking to shut down the Respondents sites in order
to save face by censoring all forums of dissent against Wal-Mart Stores.
The SUCKS.COM sites have become the singular, official, lawful and authoritative
sites for freedom of expression forums against a company." (Response)
Respondent supplementally states:
"Respondent respectfully submits that, as stated in his original Response,
WALMARTCANADASUCKS.COM, WAL-MARTCANADASUCKS.COM, WALMARTUKSUCKS.COM and
WALMARTPUERTORICOSUCKS.COM are all freedom of expression forums. WALMARTCANADASUCKS.COM
and WALMARTUKSUCKS.COM are up and running with the sites being developed
daily. Contrary to what the Complainant claims, WALMARTCANADASUCKS.COM
was in operation prior to Wal-Mart filing their complaint. The Complainant
seems to believe that a Web site simply springs to life on its own, fully
developed with its entire contents in place and a million visitors lined
up to snatch a peek at the site. Not so. Developing a Web site is a time-consuming
venture. The Respondent has only so much time on his hands outside of his
regular work. The sites in question are not businesses. They are not money-making
ventures. They do not sell (trade in) any product or service. They do
not feature affiliate (money-making) links to other sites. They are freedom
of expression forums. Like any other Internet site, WALMARTCANADASUCKS.COM
will take time to develop. The Respondent plans an official launch of the
site in August that will draw attention to the site and solicit stories
from dissatisfied Wal-Mart customers. Listings for WALMARTCANADASUCKS.COM
and WALMARTUKSUCKS.COM have been submitted to various search engines, but
it takes up to 120 days for these listings to appear in the search engines.
The WAL-MARTCANADASUCKS.COM site (with the hyphen) is not developed
because it will merely act as a link to WALMARTCANADASUCKS.COM, in the
same way that WALMART.COM acts as a link to WAL-MART.COM. The two domain
names link to the same site.
WALMARTPUERTORICOSUCKS.COM is not developed because, once again, the
Respondent has only so much time on his hands. It will be developed in
the coming months.
As for WALMARTPUERTORICO.COM, the reasons for the Respondent owning
that domain name were stated in the Respondents original Response.
Respondent does actually express his opinion about Wal-Mart on WALMARTCANADASUCKS.COM
(and soon on the others). The Respondents Wal-Mart Horror Story has
been posted. Again, time must be expended to create and fully establish
the Web sites.
The Complainant acted quite briskly to submit the domain names in question
to arbitration. They did so to make certain that the Respondent did not
have sufficient time to develop them. The Respondent asserts that Wal-Mart
is attempting to divest him of his domain names to silence any form of
dissent against them. They have bought up all other varieties of SUCKS.COMs
featuring their names to silence those who wish to speak out in a recognized
freedom of expression forum. Such public forums, capable of being accessed
by everyone, are being heralded by free-speech activists, and were quick
to be sanctioned by American laws.
Upon further investigation, it has been discovered that Wal-Mart also
owns: WALMART-SUCKS.COM, WALMART-SUCKS.NET, WALMART-SUCKS.ORG, WAL-MART-SUCKS.COM,
WAL-MART-SUCKS.NET and WAL-MART-SUCKS.ORG. This attempt to gobble up all
SUCKS.COM domain names is obviously the behaviour of a corporation anxious
to gain control of all recognizable electronic venues that might feature
negative opinions of Wal-Mart.
The Respondent does not deny that he has a dispute with Wal-Mart about
the domain name WALMARTCANADA.COM. This matter is made blatantly obvious
by the legal action that has been brought against Wal-Mart Stores by the
Respondent, for which a court date of October 17, 2000 has been set. This
action is proceeding despite the fact that Ms. Saunders denies knowledge
of the action in her original Complaint.
With regards to the e-mail message submitted by the Respondent to Wal-Mart
on June 3, 2000, this message was in reference to the dispute over WALMARTCANADA.COM,
and not in reference to the domain names presently under dispute. The Respondent
suggested that a consulting fee would be appropriate to inform Wal-Mart
of other available domain names as a means of settling the legal action
brought against Wal-Mart over WALMARTCANADA.COM. The letter has no bearing
on the issue presently at hand. These five domain names currently in dispute
were never offered for sale nor are they for sale.
The Respondent does not own any other domain names including the Wal-Mart
name nor does he have any interest in purchasing further Wal-Mart domain
names. The Respondent merely wishes to operate his freedom of expression
sites for himself and the people of Canada, Puerto Rico and the United
Kingdom.
Furthermore, the Respondent contends that the tone of the Complainants
representative, Ms. Saunders, in both her Complaint and her Supplemental
Reply, is filled with vitriol and bitterness. The Respondent proposes that
this is due to the fact that Ms. Saunders is named as a defendant in the
legal action brought against Wal-Mart and Mary Jane Saunders by the Respondent,
in which the Respondent claims that Ms. Saunders (via e-mail message) attempted
to coerce the Respondent into naming his price for WALMARTCANADA.COM when
the Respondent was not interested in doing so. In her message to the Respondent,
dated March 13, 2000, Ms. Saunders suggested that the Respondent propose
his terms for sale of WALMARTCANADA.COM. She wrote: If you have a number,
put it forth. The Respondent did not put forth a number as he was not
interested in selling the site. The Respondent claims that Ms. Saunders
suggested he name his price in order to prejudice him in the eyes of the
WIPO arbitrator.
The Respondent asserts that Ms. Saunders is in a conflict of interest
situation and should remove herself from proceedings involving these disputed
domain names. Her position of conflict is made obvious by the taunting
and vindictive tone of her Supplemental Reply.
And, finally, the Respondent would like to draw the panelists attention
to a recent article published in The National Post (in Canada). The article
was published on July 1, 2000 (page D8) and was written by Lesia Stangret,
a lawyer specializing in Internet and electronic commerce law with Smith
Lyons in Toronto.
The article concerned the SUCKS.COM suffix and how it relates to the
Trade Marks Act. In the article, Ms. Stangret considers how trademark laws
are being used to shut down critical web sites, namely SUCKS.COMs. Ms.
Stangret states that to prove infringement, the company must show that
your use of its mark likely confuses the public as to the origin of your
site. Ms. Stangret goes on to state: It (the company) must also prove
that you are using its mark as a trademark within their meaning of
the Trade Marks Act. Without any use within the meaning of the Act, infringement
or depreciation of goodwill claims fail. A mark is used under the Act
when it is used in association with your own goods and services. But
your site is not a commercial site, nor do you use the mark to advertise
goods or services. If you only use the mark in comment or debate, you are
likely not using it within the meaning of the Act." (Respondents Response
to Complainants Supplemental Reply)
Respondent requests that the Panel decide that it should be permitted
to retain the disputed domain names.
6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted
by the Internet Corporation for Assigned Names and Numbers (ICANN) on August
26, 1999 (with implementing documents approved on October 24, 1999), is
addressed to resolving disputes concerning allegations of abusive domain
name registration. This sole panelist has in an earlier decision discussed
the background of the administrative panel procedure, and the legal characteristics
of domain names, and refers to this earlier decision for such discussion
<http://arbiter.wipo.int/domains/decisions/html/>. The Panel will confine
itself to making determinations necessary to resolve this administrative
proceeding.
It is essential to dispute resolution proceedings that fundamental
due process requirements be met. Such requirements include that a respondent
have notice of proceedings that may substantially affect its rights. The
Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy
(the "Rules"), establish procedures intended to assure that respondents
are given adequate notice of proceedings commenced against them, and a
reasonable opportunity to respond (see, e.g., para. 2(a), Rules).
In this proceeding, Respondent has furnished a detailed Response to
the Complaint in a timely manner. Respondent has also furnished a detailed
Response to Complainants Supplemental Reply. There is no issue as to whether
Respondent received adequate notice of these proceedings.
Mr. Kenneth Harvey, with address is Newfoundland, Canada, is listed
as the Administrative Contact for the registrants of record ("Walsucks"
and "Walmarket Puerto Rico") of the disputed domain names. There is substantial
evidence on the record of this proceeding that Mr. Kenneth Harvey is the
beneficial holder of the disputed domain names. Respondent has submitted
no evidence that either "Walsucks" or "Walmarket Puerto Rico" is an established
legal entity. The Panel considers Mr. Kenneth Harvey to be the registrant-in-fact
of the disputed domain names, and references to Respondent in this decision
refer to Mr. Kenneth Harvey as the beneficial holder of the disputed domain
names.
Paragraph 4(a) of the Policy sets forth three elements that must be
established by a Complainant to merit a finding that a Respondent has engaged
in abusive domain name registration, and to obtain relief. These elements
are that:
(i) Respondents domain name is identical or confusingly similar to
a trademark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of
the domain name; and
(iii) Respondents domain name has been registered and is being used
in bad faith.
In an earlier administrative proceeding initiated by Complainant against
Respondent, Wal-Mart Stores, Inc. v. Walmarket Canada, Case No. D2000-0150,
dated May 2, 2000, the panelist determined that Complainant has rights
in the trademark "Wal-Mart" (see Factual Background, supra). This Panel
adopts that determination, and finds that Complainant has rights in the
trademark "Wal-Mart" within the meaning of paragraph 4(a) of the Policy.
In Wal-Mart Stores, Inc. v. Walmarket, the panelist determined that
the "Wal-Mart" trademark is well-recognized in the United States, Canada
and other countries (id.). This Panel adopts that determination, and finds
that the "Wal-Mart" mark is well-known in the sense of Article 6bis of
the Paris Convention for the Protection of Industrial Property.
Respondent has registered the domain name "walmartpuertorico.com".
This domain name is identical to Complainants trademark, except that:
(1) the domain name adds the generic top-level domain name ".com", (2)
the domain name employs lower case letters and eliminates a hyphen, while
the mark is generally used with an initial capital letter, a hyphen between
"Wal" and "Mart", and with a capital "M" (i.e., "Wal-Mart"), and (3) the
domain name adds "puertorico" to the mark.
The addition of the generic top-level domain (gTLD) name ".com" is
without legal significance since use of a gTLD is required of domain name
registrants, ".com" is one of only several such gTLDs, and ".com" does
not serve to identify a specific enterprise as a source of goods or services
<http://arbiter.wipo.int/domains/decisions/html/>. Insofar as domain
names are not case sensitive, differences in the upper and lower case format
that are used in the domain name and the mark are differences without legal
significance from the standpoint of comparing "walmartpuertorico.com" to
"Wal-Mart" <http://arbiter.wipo.int/domains/decisions/html/>. The elimination
of the hyphen between "Wal" and "Mart" does not significantly affect the
visual impression made by the domain name as compared with the mark, and
does not affect the pronunciation of the domain name as compared with the
mark.
The addition of the name of a place to a trademark, such as the addition
of "Puerto Rico" to "Wal-Mart", is a common method for indicating the location
of a business enterprise identified by the trademark or service mark. The
addition of a place name generally does not alter the underlying mark to
which it is added. A consumer or user of the Internet viewing the address
"www.walmartpuertorico.com" is likely to assume that Complainant is the
sponsor of or associated with the website incorporating the disputed domain
name, particularly in light of the fact that Complainant operates a number
of retail stores in Puerto Rico (see Complaint, Annex I). The elimination
of spaces between "walmart", "puerto" and "rico", and the use of lower
case letters in "puertorico" is dictated by technical factors and customary
practice among domain name registrants, and is without legal significance
from the standpoint of comparing "walmartpuertorico.com" to "Wal-Mart".
The Panel finds that "walmartpuertorico.com" is confusingly similar to
"Walmart" <http://arbiter.wipo.int/domains/decisions/html/>.
Respondent has registered the domain names "walmartcanadasucks.com",
"wal-martcanadasucks.com", "walmartuksucks.com" and "walmartpuertoricosucks.com".
These domain names share common characteristics. In each case, Complainants
"Wal-Mart" trademark is followed with an indication of place (Canada, Canada,
UK and Puerto Rico, respectively). In Wal-Mart v. Walmarket Canada, it
was determined that "walmartcanada.com" and "Wal-Mart" are confusingly
similar. The Panel accepts this determination. The addition of a hyphen
to form "wal-martcanada.com" does not affect this finding. This Panel has
determined (above) that "walmartpuertorico.com" and "Wal-Mart" are confusingly
similar. The Panel on the basis of the reasoning used with respect to "walmartpuertorico.com"
finds that "walmartuk" and "Wal-Mart" are confusingly similar, although
"walmartuk" standing alone (with or without ".com") is not specifically
at issue as a disputed domain name in this proceeding.
Respondent has appended the term "-sucks" to domain names that are,
in the absence of that term, confusingly similar to Complainants mark.
The addition of the pejorative verb "sucks" is tantamount to creating the
phrase "Wal-Mart Canada sucks" (and comparable phrases with Respondents
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 Policy establishes the rules of decision governing this proceeding.
The Policy was adopted largely on the basis of the recommendations contained
in the Final Report of the WIPO Internet Domain Name Process <http://arbiter.wipo.int/domains/decisions/html/>.
The rules of decision recommended in the Final Report reflected, inter
alia,
the experience of various national courts in addressing abusive domain
name registration practices <http://arbiter.wipo.int/domains/decisions/html/>.
Administrative panels appointed to resolve disputes under the Policy continue
to refer to decisions of national courts as they aid in the interpretation
of its rules. In this proceeding, Respondent, a resident of Canada, has
relied, inter alia, on a U.S. federal court decision in his pleadings.
Complainant is a U.S. entity and is the party directly affected by Respondents
actions. One of Respondents disputed domain names specifically incorporates
the name of a U.S. Commonwealth (Puerto Rico), a place where Complainant
actively conducts business. Respondents actions have included direct correspondence
with Complainant in the United States. Neither party has referred in its
pleadings to a specific decision of a Canadian court. Under these circumstances,
the Panel considers it appropriate to consult U.S. federal court decisions
to aid in the interpretation of the Policy <http://arbiter.wipo.int/domains/decisions/html/>.
The question whether a domain name and a trademark are confusingly
similar involves the application of a multifactored test exemplified in
the decision of the U.S. Court of Appeals for the Ninth Circuit in AMF
Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979). The Sleekcraft
factors are directed to whether there is a "likelihood of confusion" between
two marks. While developed in the context of comparing two trademarks,
the Sleekcraft factors have more recently been employed by the federal
courts to compare domain names to trademarks, and domain names to domain
names. The Sleekcraft factors were, for example, employed by the federal
district court in Bally Total Fitness discussed infra. The Sleekcraft factors
were relied upon by the Court of Appeals for the Ninth Circuit in Brookfield
Communications v. West Coast Entertainment, 174 F.3d 1036, 1053-61 (9th
Cir. 1999).
In Sleekcraft, the Court of Appeals for the Ninth Circuit enumerated
eight factors to be weighed on the question of likelihood of confusion.
These are: (1) strength of the mark; (2) proximity of the goods; (3) similarity
of the marks; (4) evidence of actual confusion; (5) marketing channels
used; (6) type of goods and the degree of care likely to be exercised by
the purchaser; (7) defendant's intent in selecting the mark; and (8) likelihood
of expansion of the product lines <http://arbiter.wipo.int/domains/decisions/html/>.
In the present case, two factors (weighed along with other Sleekcraft
factors) compel a determination that Respondents disputed domain names
are confusingly similar to Complainants mark - that is, that there is
a likelihood of confusion on the part of Internet users. First, beyond
doubt, Complainants "Wal-Mart" trademark is a very strong mark, well known
throughout the United States, Canada, and other parts of the world.
Second, and most compelling, is Respondents intent in selecting the
disputed domain names. As discussed below (in connection with whether Respondent
establishes legitimate interests), Respondent registered the names in order
to extract payment from Complainant by threatening to disrupt its business.
The evidence of Respondents pattern of conduct and bad faith is clear.
In Brookfield Communications, the Court of Appeals for the Ninth Circuit
elaborated on the question of intent, stating:
We thus turn to intent. "The law has long been established that if
an infringer adopts his designation with the intent of deriving benefit
from the reputation of the trade-mark or trade name, its intent may be
sufficient to justify the inference that there are confusing similarities."
Pacific Telesis v. International Telesis Comms., 994 F.2d 1364, 1369 (9th
Cir. 1993) (quoting Restatement of Torts, § 729, Comment on Clause
(b)f (1938)). An inference of confusion has similarly been deemed appropriate
where a mark is adopted with the intent to deceive the public. See Gallo,
967 F.2d at 1293 (citing Sleekcraft, 599 F.2d at 354).
This factor favors the plaintiff where the alleged infringer adopted
his mark with knowledge, actual or constructive, that it was another's
trademark. See Official Airline Guides, 6 F.3d at 1394 ("When an alleged
infringer knowingly adopts a mark similar to another's, courts will presume
an intent to deceive the public."); Fleischmann Distilling, 314 F.2d 149
at 157. In the Internet context, in particular, courts have appropriately
recognized that the intentional registration of a domain name knowing that
the second-level domain is another company's valuable trademark weighs
in favor of likelihood of confusion. See, e.g., Washington Speakers, 1999
WL 51869, at *10.
[footnote 20: Nor did West Coast register its domain
name for the specific purpose of subsequently selling the domain name to
the trademark owner. See, e.g., Minnesota Mining, 21 F. Supp. 2d at 1005;
Intermatic, 947 F. Supp. at 1229 (involving the infamous cyber squatter
Dennis Toeppen who registered domain names including "aircanada.com," "deltaairlines.com,"
"eddiebauer.com," and "neiman-marcus.com" and has been the subject of many
lawsuits).] <http://arbiter.wipo.int/domains/decisions/html/>
The Internet is made useful to a worldwide public through the operation
of search engines. When an Internet user enters a word or combination of
words into a search engine, the engine identifies websites of potential
relevance by canvassing domain names, metatags and (potentially) other
web page codes. By using Complainants "Wal-Mart" mark in its domain name,
Respondent makes it likely that Internet users entering "Wal-Mart" into
a search engine will find its "walmartcanadasucks.com" and other "walmart"-formative
websites. Respondents domain names are sufficiently similar to Complainants
mark (reflecting the third Sleekcraft factor) that Internet search engine
results will list Respondents domain names and websites when searching
Complainants mark.
Internet users with search engine results listing Respondents domains
are likely to be puzzled or surprised by the coupling of Complainants
mark with the pejorative verb "sucks". Such users, including potential
customers of Complainant, are not likely to conclude that Complainant is
the sponsor of the identified websites. However, it is likely (given the
relative ease by which websites can be entered) that such users will choose
to visit the sites, if only to satisfy their curiosity. Respondent will
have accomplished his objective of diverting potential customers of Complainant
to his websites by the use of domain names that are similar to Complainants
trademark.
The Panel is satisfied that in the application of the multifactored
Sleekcraft test, the disputed domain names are confusingly similar to Complainants
trademark in the sense of paragraph 4(a)(i) of the Policy. The Panel emphasizes
that Respondents bad faith in registering and using the names is a critical
factor in this analysis. The evidence on the record of this proceeding
makes clear that Respondent registered the names for bad faith commercial
purposes - that is, to threaten Complainants business and demand payment
as a "domain name consultant" while publicly purporting to engage in "free
speech" critique of Complainant.
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 Complainants
"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, Respondents "-sucks" formative marks cannot be confusingly
similar to Complainants 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 <http://arbiter.wipo.int/domains/decisions/html/>.
Judge Brinkemas 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 Respondents position. However, both cases
are distinguishable.
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 Ballys 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 defendants 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, Respondents
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 <http://arbiter.wipo.int/domains/decisions/html/>
. However, the court did not undertake any particularized analysis of the
disputed domain name as compared with the plaintiffs 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 <http://arbiter.wipo.int/domains/decisions/html/> 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 defendants 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 Complainants 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.
The second element of a claim of abusive domain registration is that
the Respondent has no rights or legitimate interests in respect of the
domain name (Policy, para. 4(a)(ii)). The Policy enumerates several ways
in which a respondent may demonstrate rights or legitimate interests:
"Any of the following circumstances, in particular but without limitation,
if found by the Panel to be proved based on its evaluation of all evidence
presented, shall demonstrate your rights or legitimate interests to the
domain name for purposes of Paragraph 4(a)(ii)
(i) before any notice to you of the dispute, your use of, or demonstrable
preparations to use, the domain name or a name corresponding to the domain
name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been
commonly known by the domain name, even if you have acquired no trademark
or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the
domain name, without intent for commercial gain to misleadingly divert
consumers or to tarnish the trademark or service mark at issue." (Policy,
para. 4(c))
Respondent has disclaimed that his use of the disputed domain names
has been undertaken in connection with a bona fide offer of goods or services
before notice of the dispute (Response and Response to Complainants Supplemental
Reply). Respondent has not suggested that he or his enterprise has been
commonly known by the disputed domain names. To establish his rights or
legitimate interests in the disputed domain names, Respondent has relied
on his alleged use of the names for legitimate non-commercial or fair use
purposes.
Complainant and Respondent are in disagreement as to whether the "www.walmartcanadasucks.com"
website posted content before the initiation of this proceeding. Paragraph
4(c)(iii) of the Policy requires that a Respondent be "making" legitimate
use of a disputed name to come within its express terms. Respondent registered
the disputed domain names almost immediately following a decision against
him in Wal-Mart v. Walmarket Canada, and Complainant initiated this proceeding
shortly following his registration of the names. The Panel accepts that
domain name registrants cannot always be expected to make immediate legitimate
use of names since preparation is needed to launch websites. Some period
reasonable under the particular circumstances must therefore be allowed
between the time of registration of a domain name and the commencement
of its legitimate use. Evidence of preparation to make legitimate use,
appropriate to the context, should be accepted as giving rise to legitimate
interests (for a reasonable period). The Panel agrees with Respondent that
if trademark holders could force the transfer of confusingly similar "freedom
of expression" names immediately upon their registration, this might chill
legitimate protest or criticism activities on the Internet. The Panel does
not therefore regard as determinative whether Respondent had posted expressive
content prior to Complainants initiation of this proceeding, and need
not attempt to resolve the factual dispute as to precisely when Respondent
posted content.
Neither does the Panel regard as determinative whether Respondent had
posted some sufficient quantum of "free expression" prior to Complainants
initiation of this action. For purposes of deciding this proceeding, the
Panel need not explore the content of Respondents website, nor the relevance
of the quantum of expression on his website. The Panel does not question
the right of Internet users to post expressive content, while recognizing
that there are certain accepted constraints on expression established by
laws against libel and related causes of action.
Respondent initiated his dealings with Complainant by offering to sell
it a domain name in which it had rights. His e-mail of February 3, 2000,
prior to Complainants initiation of the proceeding in Wal-Mart v. Walmarket
Canada stated:
"This is to let you know that www.WalMartCanada.com, http:\\www.WalMartCanada.com
is up for auction at GreatDomains.com. I am the owner. Perhaps certain
executives within your company might be interested in purchasing it. Thanks
for passing this along to the appropriate individuals. Kindest regards,
Kenneth J. Harvey." D2000-0150, at sec. 4.
Coincident with initiation of the proceeding in Wal-Mart v. Walmarket
Canada, Respondent sent the following message to Complainant:
"As a gesture of good will, I would like to point out that Wal-MartCanada.net
and Wal-MartCanada.org remain unregistered. I suggest you inform Wal-Mart
so that they might register those specific domain names before they are
snatched up by roaming marauders." (E-mail from Kenneth Harvey to Mary
J. Saunders, March 10, 2000, Complaint, Annex C)
On May 2, 2000, the panelist decided Wal-Mart v. Walmarket Canada against
Respondent.
Between May 13 and 17, 2000, Respondent registered the disputed domain
names.
On June 3, 2000, subsequent to the May 31, 2000, initiation of this
proceeding, Respondent sent the following message to Complainant:
"Some time ago, before the original dispute over walmartcanada.com
was filed with WIPO by Mary Jane Saunders, I informed Ms. Saunders that
other variations of Wal-Mart Canada domain names were available. I informed
her that Wal-MartCanada.net and Wal-MartCanada.org were available for
purchase and that she should inform executives at Wal-Mart so that they
might purchase them. I refrained from buying them. Some time later, these
names were-- indeed-- purchased by Wal-Mart. I passed on this information
to Ms. Saunders in my capacity as a domain name consultant.
Therefore, I would like to receive compensation for this consultation.
Also, through my purchase of walmartcanada.com and walmartcanadasucks.com
and other names that I presently hold, I have intentionally highlighted
the fact that Wal-Mart does not hold rights to basic Internet domain names
that other large corporations have purchased (in their names) years ago.
This was made blatantly obvious by my prompting Wal-Mart to purchase every
conceivable combination of name on their domain name buying spree from
May 12th to May 16th. Again, I wish to be compensated for this pivotal
role I played in protecting Wal-Mart from future difficulties.
For your information, as of this morning, there are several other essential
and blatantly-fundamental Wal-Mart dot-com, dot-net and dot-org names available
for purchase that Wal-Mart does not own. I am not interested in buying
them, as I am growing tired of this dispute and would like to bring it
to an end. For an additional domain name consulting fee, I would gladly
inform Wal-Mart of the important names left hanging for others to purchase
at their will.
If you wish to discuss this via telephone, my number is: 709-528-1996.
I look forward to hearing from you.
Sincerely,
Kenneth J. Harvey"
(Complainants Supplemental Reply)
Respondent has in his own words characterized himself as a "domain
name consultant" who is acting in Complainants interests, and who is seeking
compensation for "the pivotal role [he has] played in protecting Wal-Mart
from future difficulties". In his own words, he registered "walmartcanadasucks.com"
and "other names that [he] presently holds" to "intentionally highlight[ed]
the fact that Wal-Mart does not hold rights to basic Internet domain names
that other large corporations have purchased (in their names) years ago".
Subsequent to the initiation of this proceeding - and subsequent to his
claimed development of the "walmartcanadasucks.com" website - he has demanded
payment for "consulting services" from Complainant.
By his own words, Respondent established the "walmartcanadasucks.com"
website for a commercial purpose: to demonstrate to Complainant that it
was not adequately protecting its trademark interests. He registered the
other names he holds - note that all of the disputed domain names were
registered prior to transmittal of his June 3 message - in his self-defined
role as domain name consultant. He has sought compensation from Complainant
for his activities.
Respondents claim to a "freedom of expression" interest in establishing
the "walmartcanadasucks.com" and "walmartuksucks.com" websites is contradicted
by his own words. A demand for payment from the potential and actual subject
of critical sites is fundamentally inconsistent with the right of free
expression. It is as if a newspaper were to approach the potential subject
of an adverse investigative report to propose that for an appropriate fee
the report could be avoided. This would not be characterized as "free speech"
activity. It would rather be characterized as "extortion".
Respondent has evidenced that his intention in establishing multiple
versions of similar websites is commercial - as a element of his domain
name consultancy services. The Panel determines that Respondents intention
for registering "wal-martcanadasucks.com", "wal-martcanadasucks.com", "walmartuksucks.com",
"walmartpuertorico.com" and "walmartpuertoricosucks.com" is commercial,
and not within the scope of fair use or legitimate noncommercial use permitted
by paragraph 4(c)(iii) of the Policy.
Respondent has registered and used the disputed domain names for a
commercial purpose that is not within the boundaries of fair use. He has
failed to establish rights or legitimate interests in the disputed domain
names. Complainant has thus established the second element necessary to
prevail on a claim of abusive domain name registration.
The Policy indicates that certain circumstances may, "in particular
but without limitation", be evidence of bad faith (Policy, para. 4(b)).
Among these circumstances are (1) that the domain name has been registered
or acquired by a respondent "primarily for the purpose of selling, renting,
or otherwise transferring the domain name registration to the complainant
who is the owner of the trademark or service mark or to a competitor of
that complainant, for valuable consideration in excess of [respondents]
documented out-of-pocket costs directly related to the domain name" (Id.,
para. 4(b)(i)); (2) that a respondent has "registered the domain name primarily
for the purpose of disrupting the business of a competitor" (id., para.
4(b)(iii)) and (3) that a respondent "by using the domain name,
[has]
intentionally attempted to attract, for commercial gain, Internet users
to [its] web site or other on-line location, by creating a likelihood of
confusion with the complainants mark as to the source, sponsorship, affiliation,
or endorsement of [respondents] web site or location of a product or service
on [its] web site or location" (id., para. 4(b)(iv)).
Respondent registered the disputed domain names, and demanded consulting
fees from Complainant as compensation for his actions. Implicit in such
demand is that Respondent would forego using the disputed domain names,
or would transfer them to Complainant, if his consulting demands were met.
Complainant would not reasonably be expected to pay a consultant to disparage
its mark. The Panel determines that Respondent registered the disputed
domain names for the purpose of selling or otherwise transferring rights
in them to the Complainant for consideration in excess of his out-of-pocket
costs directly related to the names. This constitutes bad faith within
the meaning of paragraph 4(b)(i) of the Policy.
Respondent has threatened to disrupt Complainants business if his
consulting demands are not met. Respondent is not a competitor of Complainant.
However, the list of bad faith factors in paragraph 4(b) of the Policy
is illustrative, not exclusive. The Panel determines that Respondents
threats to disrupt Complainants business constitute bad faith within the
meaning of paragraph 4(a)(iii) of the Policy.
Respondent is intentionally using certain of the disputed domain names
to attract Internet users to his websites. These domain names have been
determined to be confusingly similar to Complainants mark. Respondent
acted for commercial gain, i.e., to extract consulting fees from Complainant
by threatening to disrupt its business. The Panel determines that this
activity constitutes bad faith within the meaning of paragraph 4(b)(iv)
of the Policy.
Complainant has established the third and final element necessary for
a finding that the Respondent has engaged in abusive domain name registration.
The Panel will therefore request the registrar to transfer the domain
names "wal-martcanadasucks.com", "wal-martcanadasucks.com", "walmartuksucks.com",
"walmartpuertorico.com" and "walmartpuertoricosucks.com" to the Complainant.
The Panel stresses that this decision does not address legitimate freedom
of expression sites established by parties critical of trademark holders.
The Panel is aware that there are numerous websites identified by "-sucks"
formative domain names, including "walmartsucks.com". The Panel anticipates
that Respondent (and others) may choose to characterize this decision as
seeking to stifle freedom of expression on the Internet by ordering the
transfer of "-sucks" formative names. Certain trademark holders might choose
to characterize this decision as supporting action against "-sucks" formative
domain names in other contexts. The Panel intends this decision to serve
neither of these aims. This decision is directed to a blatant case of abuse
of the domain name registration process -- no more, no less.
7. Decision
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.
Frederick M. Abbott
Sole Panelist
Dated: July 20, 2000
Footnotes:
1. See Educational Testing Service v. TOEFL, Case No.
D2000-0044, decided March 16, 2000.
2. See Sporty's Farm v. Sportsman's Market, 202 F.3d
489, 498, (2d Cir. 2000), citing Brookfield Communications v. West Coast
Entertainment, 174 F.3d 1036 (9th Cir. 1999). For purposes of its decision,
the Panel need not address whether ".com" may be capable of acquiring secondary
meaning in another context.
3. See Brookfield Communications, id.,174 F.3d 1036,
1055 (9th Cir. 1999).
4. This is consistent with the panelists determination
in Wal-Mart v. Walmarket Canada, D2000-0150, dated May 2, 2000, at sec.
6, that "walmartcanada.com" is confusingly similar to "Wal-Mart".
5. WIPO, The Management of Internet Names and Addresses:
Intellectual Property Issues, Report of the WIPO Internet Domain Name Process,
http://wipo2.wipo.int, Apr. 30, 1999, WIPO Pub. No. 439 (E).
6. Id., para. 135.
7. Paragraph 15(a) of the Rules provides: "A Panel shall
decide a complaint on the basis of the statements and documents submitted
and in accordance with the Policy, these Rules and any rules and principles
of law that it deems applicable." [emphasis added]
8. See AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49
(9th Cir. 1979), cited by the court in Bally, at 29 F. Supp. 2d, at 1163.
9. Brookfield Communications v. West Coast Entertainment,
174 F.3d 1036, 1059 (9th Cir. 1999).
10. Plaintiff Lucent Technologies had attempted to maintain
in rem jurisdiction over the subject domain name "lucentsucks.com". The
judge found that plaintiff had failed to adequately establish that it could
not obtain in personam jurisdiction over the holder of the subject domain
name, and dismissed the complaint on this ground. 95 F. Supp. 532-34. Having
dismissed the complaint, the courts subsequent observations on its substantive
merits did not decide the case or controversy, and as such these observations
have limited value as precedent. The court itself said: "We need not rule
on this argument [confusing similarity], because we have found other grounds
for dismissal. Nevertheless, we note that defendant's position has some
merit." (Id., at 535)
11. 95 F.Supp. 2d, at 535
12. Id., at 535-36. Note also that the court in Lucentsucks.com
overstates the holding of the district court in Bally Total Fitness, mistakenly
indicating that the defendant in Bally Total Fitness had used Ballys mark
in its domain name. This is not accurate. The defendant in Bally Total
Fitness used Ballys mark on its web page, appending the word "sucks".
See text above.
Domain Names Transferred