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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico

Case No. D2000-0477

 

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 1. 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 2. 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" 3. 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" 4.

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 5. 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 6. 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 7.

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 8.

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).] 9

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. 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 . 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 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.

 

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