Wal-Mart denied transfer of 'boycottwalmart.com'

In Wal-Mart Stores Inc v Traffic Yoon, World Intellectual Property Organization (WIPO) panellist Philip N Argy has refused to transfer the domain name 'boycottwalmart.com' to Wal-Mart.

Wal-Mart, the world's largest retailer, has been around since 1962 building up a substantial reputation in the name Wal-Mart. It also holds numerous US trademarks incorporating the terms 'Wal-Mart' or 'Walmart', which it uses in the United States and internationally in connection with its retail stores. It also operates a website at 'www.walmart.com' where consumers can shop online and obtain information about Wal-Mart stores.

Not surprisingly, Wal-Mart wanted to stop Traffic Yoon from using the domain name 'boycottwalmart.com' upon discovering its existence. Wal-Mart duly filed a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP). Clearly aware that UDRP panels have been less than consistent in the findings relating to domain names featuring a disparaging prefix or suffix, Wal-Mart contended that the disputed domain name was virtually identical or at least confusingly similar to its WAL-MART mark, as Traffic Yoon (i) had merely added the term 'boycott', and (ii) was not using the domain name for a site for genuine non-commercial criticism of the Wal-Mart business. Wal-Mart contended that Traffic Yoon was redirecting internet traffic to its competitors. Further, it contended that Traffic Yoon intended to sell the domain name, evidenced by a banner prominently displayed on the 'www.boycottwalmart.com' website, which led to the inference that Traffic Yoon meant to sell the domain name to Wal-Mart or a competitor for a profit.

WIPO panellist Argy conceded that it was hard to say that there was no similarity and that embedding a trademark in a domain name was usually sufficient to establish similarity. The question, however, was whether the similarity was confusing.

He noted that a number of UDRP panels have held that a domain name that consists of a disparaging word such as 'sucks' and a complainant's mark must in all circumstances be confusingly similar because not all web users speak English fluently. He also noted that other panels have concluded that appending a critical or disparaging term, such as 'sucks', to a mark to formulate a domain name automatically signals that the corresponding website is intended for parody or criticism and eliminates any significant risk that the public will be confused into believing that there is an identical trade origin (see, for example, Qwest Communications v DefaultData.com). However, Argy favoured neither approach.

In his view, confusing similarity would be established where those persons who were mostly likely to want to access a complainant's website would be confused as to whether the complainant was the owner and operator of the website to which the disputed domain name resolved. In this respect, the content of the website was irrelevant. It simply came down to comparing the domain name (without the generic '.com' element) with the trademark.

Rejecting the complaint, Argy noted that Wal-Mart had not asserted that it had clientele which would be unfamiliar with the English language (notwithstanding the use of the mark internationally). This ruled out any finding that the requisite confusion would arise because Wal-Mart's customers or potential customers would not understand the meaning of 'boycott'.

He also distinguished those cases in which the term 'sucks' had been appended to a trademark on the basis that the word 'boycott' was used as a prefix. The ordinary meaning of 'boycott' was disparaging and critical, unlike 'sucks' which relied on an understanding of idiomatic US slang. Furthermore, in Argy's view, where the concatenated word was a prefix rather than a suffix, the emphasis normally placed on the initial portion of a domain name tended to bury the trademark. Conversely, if the appended word were a suffix, the trademark is at the beginning of the domain name and therefore much more likely to retain its trademark effect on the reader. Argy did not consider this at odds with his earlier decision that 'walmartblows.com' was confusingly similar with the WAL-MART mark.

Argy concluded that members of the public wishing to find a website associated with Wal-Mart would not be confused as to whether Wal-Mart owned or operated the website at 'www.boycottwalmart.com'. It would be perfectly clear to anyone who recognized Wal-Mart's trademarks that the disputed domain name would not resolve to a site used by Wal-Mart to promote its own goods or services. Accordingly, 'boycottwalmart.com' was neither identical nor confusingly similar to the trademark WAL-MART, nor any proven variants of that mark.

This decision is not authority for the proposition that all domain names that combine the term 'boycott' with a trademark are unable to be confusingly similar to the trademark. In making this clear, Argy provides a very useful account of the principles that he believes a UDRP panel should apply to each set of facts on a case-by-case basis when dealing with complaints involving domain names consisting of disparaging terms appended to trademarks. In that sense he provides a useful guide to help complainants in such cases ensure that they have all the bases covered.

Shannon Yavorsky, Hammonds, London