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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Wal-Mart Stores, Inc. v. wallmartcanadasucks.com and Kenneth J. Harvey

Case No. D2000-1104

 

1. The Parties

The Complainant is Wal-Mart Stores, Inc., with place of business in Bentonville, Arkansas, USA.

The Respondents are Wallmartcanadasucks.com and Kenneth J. Harvey, both with address in Burnt Head, Cupids, Newfoundland, Canada.

 

2. The Domain Name and Registrar

The disputed domain name is "wallmartcanadasucks.com".

The registrar of the disputed domain name is Tucows.com, 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 August 21, 2000, and by courier mail received by WIPO on August 23, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing.

b) On August 25, 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 Complainant’s 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 September 5, Mr. Gurry advised Respondent that WIPO rejected his request.

c) On August 28, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, Tucows.com. On August 31, 2000, WIPO completed its formal filing compliance requirements checklist.

d) On August 31, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail and courier mail.

e) On September 15, 2000, Respondent transmitted his response to WIPO via e-mail. A hardcopy of the response was received by WIPO on September 25, 2000. Respondent also transmitted his response to Complainant.

f) On November 6, 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 November 9,2000, WIPO received the executed Statement and Declaration.

g) On November 10, 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 November 23, 2000.

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.

 

4. Introduction

This is the third case involving disputes between the Respondent and Wal-Mart. The two earlier cases, involving domain names confusingly similar to the Wal-Mart trademark, were resolved in Wal-Mart's favor. This case involves a much narrower question than the questions in the earlier cases: whether a domain name including the suffix "sucks" is confusingly similar to the text string to which "sucks" is appended, or, alternatively, whether a criticism or parody privilege extends to the use of the suffix "sucks." As sole panelist, I conclude that a domain name including the word "sucks" cannot be confusingly similar, and that a privilege for criticism and parody reinforces that conclusion.

 

5. Parties’ Contentions

A. Complainant

The complainant asserts that Respondent registered and is using the domain name "wallmartcanadasucks.com" in bad faith.

In the United States, Complainant owns, among other trademarks, United States Registration Number 1,783,039, registered July 20, 1993, for the mark Wal-Mart for use in retail department store services (U.S. 101).

Among the marks Complainant owns and uses in Canada is Canada Registration Number TMA502,605, registered October 21, 1998, for the mark Wal-Mart for use in retail department store services.

Complainant’s 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 world’s number one retailer with stores in the United States, Canada, Puerto Rico, Mexico, Brazil, Argentina, China, United Kingdom, Korea, Indonesia and Germany.

Complainant makes extensive use of the Wal-Mart mark. Complainant uses its 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 children’s 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 Complainant’s corporate online identity and brand.

Complainant argues that the domain name "wallmartcanadasucks.com" is identical or confusingly similar to Complainant’s Wal-Mart trademark.

Complainant argues that the domain name "wallmartcanadasucks.com" is identical to Complainant’s 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"), (3) the domain name includes an additional "l" to form "wallmart", and (4) the domain name adds the geographic reference "Canada" and the pejorative verb "sucks" to the mark. Complainant asserts that these differences are not legally significant.

Complainant asserts that Respondent registered and is using the domain name "wallmartcanadasucks.com" in bad faith. Respondent registered the disputed domain names after (a) suggesting that Complainant pay him $5,000,000 for the domain name "walmartcanada.com," (b) demanding consulting fees from Complainant as compensation for his actions as a domain name consultant, ). and (c) after losing three prior Uniform Dispute Resolution Proceedings (Footnote 1) Given these circumstances, Complainant believes the Panel should find that Respondent acted in a bad faith in registering the latest domain name.

Complainant reasonably believes that Respondent wants compensation before he will stop registering variations of the Wal-Mart mark as domain names. Complainant also believes that Respondent’s activities fall clearly within the meaning of paragraph 4(b)(ii) of the Policy. Respondent has registered seven "Wal-Mart" domain names. He has clearly engaged in a pattern of conduct designed to prevent Complainant, as the owner of the Wal-Mart trademark from reflecting its mark in a corresponding domain name.

Complainant likewise believes that Mr. Harvey, as administrative contact of the Respondent and the person taking action on its behalf, acted primarily to disrupt Complainant’s business and in retaliation for prior complaints involving other "Wal-Mart" domain names. Mr. Harvey registered five "Wal-Mart" domain names within days of receiving notice of the Administrative Panel’s decision in the case of Wal-Mart Stores, Inc. v. Walmarket Canada, Case No. D2000-0150. He registered the subject domain name within days of receiving notice of the Administrative Panel’s decision in Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477. The timing of these registrations alone is evidence of bad faith, Complainant asserts.

It is apparent to Complainant that Respondent is considering every available "Wal-Mart" domain name variant for registration without regard to Complainant’s trademark rights. He has become a serial cybersquatter. Mr. Harvey registered the domain name "wallmartcanadasucks.com" with knowledge that Complainant holds rights in and to its Wal-Mart mark. He had actual notice of Complainant’s trademark rights in the United States and Canada as well as in many other countries by reason of the two prior complaints and the Panel decisions resulting therefrom. He also had actual notice of Complainant’s substantial business activities worldwide by reason of the two prior complaints and resulting Panel decisions.

Finally, Respondent’s registration and use of this domain names is a bad faith effort to harass Complainant for prior complaints filed with the WIPO Arbitration and Mediation Center, and interfere with Complainant’s business as shown by the fact that Mr. Harvey deliberately selected a domain name that disparages Complainant.

The Complainant requests that the Administrative Panel appointed in this proceeding issue a decision that the contested domain name be transferred to the Complainant.

B. Respondent

The Respondent asserts that wallmartcanadasucks.com is run as a freedom of expression site.

As with wallmartcanadasucks.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 wallmartcanadasucks.com would, in no way, be confused as a site run by Wal-Mart. "Anyone with even the tiniest speck of intelligence would realize that Wal-Mart would never be running a site called: wallmartcanadasucks.com. In fact, the only reason Wal-Mart wishes to own the disputed domain name is to take it out of circulation. They do not wish to use it, but wish to keep it from individuals who wish to use it to post complaints against them."

The Respondent argues that his use of the domain name in question does not interfere with the Complainant’s 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, stating that the Respondent’s site is not, in any way, affiliated with Wal-Mart.

"Should the Arbitrator decide to transfer ownership of wallmartcanadasucks.com, he or she would not only be taking away the rights of the Respondent to speak out against Wal-Mart on this site but will 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."

 

6. Analysis

A. Introduction

The Respondent hardly appears with clean hands. He has been found in the past to be a Cybersquatter with respect to this complainant. His correspondence with the complainant could support an inference, as complainant suggests, of extortion—"pay me or I will continue to use the Web to disparage and embarrass you." In Panel Decision No.D2000-0477, the Respondent was found to have violated the UDRP on facts involving use of the suffix "sucks" in a domain name.

But distasteful conduct should not stampede UDRP decision makers into an unwarranted expansion of the domain name dispute process. The UDRP has a narrow scope. It is meant to protect against trademark infringement, not to provide a general remedy for all misconduct involving domain names. Posting defamatory material on a Web site would not justify revocation of a domain name under the UDRP. Posting indecent material on a Web site would not justify domain name revocation under the UDRP. While a domain name registrar may be privileged to revoke a domain name for "illegal use" under § 2 of the Registration Agreement, whether a use is illegal in general is beyond the subject matter jurisdiction of an administrative panel under the UDRP.

"Bad faith" under the UDRP is a term of art. It does not reach every use of a domain name that might constitute bad faith in the ordinary sense of term

Disciplined construction of the UDRP is appropriate for another reason. The Policy should not be used to shut down robust debate and criticism. Allowing trademark owners to shut down sites that obviously are aimed at criticism of the trademark holder does just that.

The Respondent may be acting unfairly. He may be engaged in unwarranted disparagement. He may be acting childishly. He may be retaliating for having lost earlier Cybersquatting cases. But this does not necessarily mean that he may be forced to transfer the accused domain name to the complainant under the UDRP, considering the purpose.

The remainder of this panel decision reviews the rules of decision to be applied to this dispute, and separately analyzes the likelihood of confusion, treatment of parody and criticism under the Lanham Act, considers the implications of Panel Decision No.D2000-0477 for this case, explores the relationship between the legitimacy of Respondent interests and the content of the accused Web site, evaluates the evidence of solicitation of payment for the accused domain name, and presents factual findings and conclusions.

B. Rules of decision

"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." (Footnote 2)

Under the Policy, the complainant has the burden to prove each of the following three elements:

(i) the accused domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the accused domain name has been registered and is being used in bad faith. (Footnote 3)

Bad faith may be shown by establishing:

(i) circumstances indicating that the Respondent has registered or has acquired the domain name 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 the Respondent's documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent 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 complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on the Respondent's web site or location. (Footnote 4)

The U.S. Anti-Cybersquatting Consumer Protection Act ("ACPA") makes it illegal for a person who:

(i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and

(ii) registers, traffics in, or uses a domain name that-

(I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;

(II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or

(III) is a trademark, word, or name protected by reason of section 706 of Title 18 or section 220506 of Title 36.

(B)(i) In determining whether a person has a bad faith intent described under subparagraph (a), a court may consider factors such as, but not limited to

(I) the trademark or other intellectual property rights of the person, if any, in the domain name;

(II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person;

(III) the person's prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;

(IV) the person's bona fide noncommercial or fair use of the mark in a site accessible under the domain name;

(V) the person's intent to divert consumers from the mark owner's online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site;

(VI) the person's offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person's prior conduct indicating a pattern of such conduct;

(VII) the person's provision of material and misleading false contact information when applying for the registration of the domain name, the person's intentional failure to maintain accurate contact information, or the person's prior conduct indicating a pattern of such conduct;

(VIII) the person's registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and

(IX) the extent to which the mark incorporated in the person's domain name registration is or is not distinctive and famous within the meaning of subsection (c)(1) of this section.

(ii) Bad faith intent described under subparagraph (A) shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful. (Footnote 5)

The ICANN Policy and the ACPA have similar elements. First, a complainant must show that the accused domain name is identical or confusingly similar to the complainant's trademark. (Footnote 6) Second, the accused domain name must be registered or used in bad faith. (Footnote 7) Both the ICANN Policy and the ACPA offer nonexclusive factors for determining bad faith. (Footnote 8) The ICANN Policy includes some factors not included in the ACPA. (Footnote 9) The ACPA includes some factors not included in the ICANN Policy. (Footnote 10) Both the ICANN Policy and the ACPA consider the degree to which the Respondent has legitimate interests in the accused domain name. (Footnote 11)

Accordingly, cases applying the ACPA can be useful reference points for interpreting the ICANN Policy. In addition, trademark cases determining likelihood of confusion can be useful in interpreting the first element of the ICANN Policy.

In any event, the ICANN rules permit a panel to decide a complaint in accordance with "any rules and principles of law that it deems applicable." (Footnote 12) U.S. ACPA and trademark infringement cases are natural sources of rules and principles of law to apply in resolving this dispute.

C. Likelihood of confusion

The ICANN Policy and the ACPA have a similar requirement that a complainant must show that the accused domain name is identical or confusingly similar to the complainant's trademark. (Footnote 13)

Bad faith, no matter how egregious, cannot supply a likelihood of confusion where it does not otherwise exist. Suppose the owner of the trademark Acmebytes registers and uses the domain name Acmebytes.com. Suppose further that the proprietor is named Agnes. If someone registers the domain name "agnesisawitch.com" and offers to surrender it in exchange for the payment of money, the bad faith elements of the ICANN Policy no doubt would be satisfied. But Agnesisawitch.com is not confusingly similar to Acmebytes.com and the presence of bad faith cannot make it so.

Two lines of authority are pertinent to this dispute. The first involves application of factors for determining likelihood of confusion under the Lanham Act to a Web page using the word "sucks" to signify criticism. The second involves the treatment of parody and criticism under the ACPA and the Lanham Act more generally.

1. Ballysucks

Bally Total Fitness Holding Corp v. Faber, (Footnote 14) applied the Sleekcraft (Footnote 15) factors for determining likelihood of confusion to a controversy involving the use of the phrase "Bally sucks" on a Web page. It is worth quoting at some length.

b. Similarity of the marks

Bally argues that the marks are identical. Bally argues that the only difference between the marks is that Faber attached the word "sucks" to Bally's marks. Bally argues that this is a minor difference.

"Sucks" has entered the vernacular as a word loaded with criticism. Faber has superimposed this word over Bally's mark. It is impossible to see Bally's mark without seeing the word "sucks." Therefore, the attachment cannot be considered a minor change. (Footnote 16)

Bally argues that the goods are in close proximity because both parties use the Internet. Bally uses the Internet to generate revenue and disseminate information to its customers in support of its health clubs. Faber uses his web site to criticize Bally and to provide others with a forum for expressing their opinions of Bally. Faber does not attempt to pass-off his site as Bally's site. Faber states that his site is "unauthorized." Bally asserts that its site offers similar services because it has a complaints section and it provides information about Bally's services and products.

The Court finds that Faber's site does not compete with Bally's site. It is true that both sites provide Internet users with the same service information about Bally. These sites, however, have fundamentally different purposes. Bally's site is a commercial advertisement. Faber's site is a consumer commentary. Having such different purposes demonstrates that these sites are not proximately competitive.

Therefore, this factor cuts against Bally.

* * *

d. Evidence of actual confusion

Bally does not offer evidence of actual confusion. Instead, Bally states, "consumer confusion is patently obvious in this case because of the strength of the Bally marks, combined with the obvious similarities in appearance and proximity of the marks, although there is no evidence of actual confusion."

Faber's states that his site is "unauthorized" and he has superimposed the word "sucks" over Bally's mark. The Court finds that the reasonably prudent user would not mistake Faber's site for Bally's official site.

Therefore, this factor cuts against Bally.

e. Marketing channels used

Bally argues that both parties use the Internet to reach current and potential Bally members. Bally states that it uses the Internet to disseminate information and generate revenue. Bally contends that it has spent over $500,000,000 in advertisements including the Internet, television, radio, billboards and signage since 1990. Therefore, Bally has a broad marketing strategy, which includes the Internet.

Bally has not shown that Faber uses all of these channels for marketing. Instead, Bally has shown that Faber has one site, which offers his services for web design, and this site included a reference to his "Bally sucks" site for some time. However, this site no longer includes this link.

Arguably, listing the "Bally sucks" site as one of many sites Faber has created in order to advertise his web design services is a form of marketing. This fact, however, does not change the primary purpose of the "Bally sucks" site, which is consumer commentary. Bally's goods and Faber's goods are not related. Therefore, the fact that marketing channels overlap is irrelevant.

This factor is, at best, neutral, and likely cuts against Bally.

f. Degree of care likely to be exercised

Bally argues that individual users may mistakenly access Faber's site rather than the official Bally site. Bally argues that this may happen when users employ an Internet search engine to locate Bally's site. Bally argues that the search result may list Faber's site and Bally's site. The result, it argues, will be that "[p]rospective users of plaintiff's services who mistakenly access defendant's web site may fail to continue to search for plaintiff's own home page, due to anger, frustration or the belief that plaintiff's home page does not exist."

Here, Faber uses the Bally mark in the context of consumer criticism. He does not use Bally in his domain name. He communicates that the site is unauthorized and that it is not Bally's official site. Moreover, Faber's use of the Bally mark does not significantly add to the large volume of information that the average user will have to sift through in performing an average Internet search. Whether the average user has to sift through 799 or 800 "hits" to find the official Bally site will not cause the frustration indicated in [the caselaw] because Faber is not using Bally's marks in the domain name. Moreover, 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. (Footnote 17)

Further, the average Internet user may want to receive all the information available on Bally. The user may want to access the official Internet site to see how Bally sells itself. Likewise, the user may also want to be apprised of the opinions of others about Bally. This individual will be unable to locate sites containing outside commentary unless those sites include Bally's marks in the machine-readable code upon which search engines rely. Prohibiting Faber from using Bally's name in the machine-readable code would effectively isolate him from all but the most savvy of Internet users.

Therefore, this factor cuts against Bally.

g. Defendant's intent in selecting the mark

Here, Faber purposely chose to use Bally's mark to build a "web site that is 'dedicated to complaint, issues, problems, beefs, grievances, grumblings, accusations, and gripes with Bally Total Fitness health clubs.' " Faber, however, is exercising his right to publish critical commentary about Bally. He cannot do this without making reference to Bally. In this regard, Professor McCarthy states:

"The main remedy of the trademark owner is not an injunction to suppress the message, but a rebuttal to the message. As Justice Brandeis long ago stated, "If there be time to expose through discussion the falsehood and fallacies, to avert the evil by the process of education, the remedy to be applied is more speech, not enforced silence." 5 McCarthy, § 31:148 at 31-216.

Applying Bally's argument would extend trademark protection to eclipse First Amendment rights. The courts, however, have rejected this approach by holding that trademark rights may be limited by First Amendment concerns.

Therefore, this factor is neutral.

h. Likelihood of expansion of the product line

Bally essentially concedes that there is no likelihood that Bally will expand its product lines into the same areas in which Faber operates. However, Bally claims that Faber's intentional acts reduce the significance of this factor. Bally, though, relies on conclusions rejected by the Court.

It is apparent that the parties will not expand into the other's line of business. Bally intends to use the Internet as a means of increased communication. However, Bally has not represented that it intends to enter the web design business or that it intends to operate an official anti-Bally site. Further, Faber has not indicated that he intends to operate a health club.

Therefore, this factor also cuts against Bally.

3. Conclusion

Bally owns valuable marks. However, Faber has established that there is no likelihood of confusion as a matter of law. Therefore, the Court grants Faber's motion for summary judgment on trademark infringement. (Footnote 18)

Applying the Bally analysis to the instant case, I conclude that wallmartcanadasucks.com is not identical or similar to Wal-Mart's marks. They serve fundamentally different purposes. Wal-Mart's domain names serve as commercial advertisements and indications of sources of products and services. wallmartcanadasucks.com is criticism. As in Bally, a reasonably prudent user would not mistake the wallmartcanadasucks.com site for any of Wal-Mart's official sites. As in Bally, the primary purpose of the accused site is criticism, not promotion of goods related to Wal-Mart goods. Thus the information disseminated through the sites of Respondent and complainant are not related. As in Bally, prohibiting the Respondent from using wallmartcanadasucks.com and variants on the name would effectively isolate him from Internet users he wishes to reach in connection with his criticism of Wal-Mart. As in Bally, the Respondent cannot exercise his right to publish critical commentary about Wal-Mart without making reference to Wal-Mart. As in Bally, there is little likelihood that Wal-Mart will extend its business to operate an official anti Wal-Mart site. The Bally analysis, therefore, is strong authority for finding no likelihood of confusion.

2. Parody and criticism under the Lanham Act

A number of cases decided under the ACPA and, more generally, under the Lanham Act, have considered special treatment for accused domain names and marks that are used for parody or criticism.

"In general, a reference to a copyrighted work or trademark may be permissible if the use is purely for parodic purposes. To the extent the original work must be referenced in order to accomplish the parody, that reference is acceptable." (Footnote 19)

(A) Lucentsucks

In Lucent Technologies, Inc. v. Lucentsucks.com, (Footnote 20) a district court, dismissing an ACPA claim for lack of jurisdiction, offered observations on use of an accused domain name for purposes of criticism:

"No civil action for trademark infringement or dilution lies under the ACPA unless the registrant's bad faith intent is demonstrated. 15 U.S.C. § 1125(d)(1)(A)(i). Courts may consider nine factors when determining whether a bad faith intent exists, including "the person's bona fide noncommercial or fair use of the mark in a site accessible under the domain name." 15 U.S.C. § 1125(B)(i)(IV). The House Judiciary Committee explained that this provision is intended to:

Balance the interests of trademark owners with the interests of those who would make the lawful noncommercial or fair uses of others' marks online, such as in comparative advertising, comment, criticism, parody, newsreporting, etc.... The fact that a person may use a mark in a site in such a lawful manner may be an appropriate indication that the person's registration or use of the domain name lacked the required element of bad-faith. H.R.Rep. No. 106-412, at 9 (1999) (emphasis added). As one federal court has explained, " 'sucks' has entered the vernacular as a word loaded with criticism." Bally Total Fitness Holding Corp. v. Faber, 29 F.Supp.2d 1161, 1164 (C.D.Cal.1998) (granting summary judgment to defendant website designer on claims brought pursuant to the Trademark Act, where defendant registered the domain name ballysucks.com).⁹ A successful showing that lucentsucks.com is effective parody and/ or a cite for critical commentary would seriously undermine the requisite elements for the causes of action at issue in this case. (Footnote 21)

Trademark law more generally recognizes a privilege for use of marks for parodic or critical purposes. Often, such a purpose influences the likelihood of confusion analysis.

The Restatement recognizes the special position that criticism occupies in trademark law:

"One who uses a designation that resembles the trademark, trade name collective mark or certification mark of another, not in a manner that is likely to associate the other's mark with the goods, services, or business of the actor, but rather to comment on, criticize, ridicule, parody, or disparage the other or the other's goods, services business, or mark, is subject to liability without proof of the likelihood of confusion only if the actor's conduct meets the requirements of a cause of action for defamation, invasion of privacy, or injurious falsehood." (Footnote 22)

In Charles Atlas, Ltd. v. DC Comics, Inc., (Footnote 23) the district court granted summary judgment for the defendant, finding that a comic book parody of the plaintiff's advertisements for body-building courses was protected by the First Amendment and thus not infringing or diluting. It found that "The likelihood of confusion is . . . slim, and is clearly outweighed by the public interest in parodic expression." (Footnote 24) A threshold question was "whether defendant used the mark for an expressive purpose, or to create an incorrect association in order to confuse the public." (Footnote 25) "[E]ven if plaintiff suffered some trademark [infringement], defendants' rights under the First Amendment to use plaintiff's mark to communicate the message might prevail over plaintiff's rights under the trademark law." (Footnote 26)

In domain name disputes it is critical whether the accused domain name itself signifies parodic or critical purposes, as opposed to imitation of trademark.

People for the Ethical Treatment of Animals v. Doughney, (Footnote 27) involved an unsuccessful parody defense to a claim of trademark infringement, dilution and violation of the Anti-Cybersquatting Act. The defendant registered the domain name peta.org, and used it to encourage consumption of meat and animal products. "Only after arriving at the "peta.org" web site could the web site browser determine that this was not a web site owned, controlled or sponsored by PETA ("People for the Ethical Treatment of Animals"). Therefore, the two images: (1) the famous PETA name and (2) the "People Eating Tasty Animals" web site was not a parody because not simultaneous." (Footnote 28) Thus there was considerable likelihood of confusion as to the sponsorship of the Web site, and only a weak link to freedom of expression.

Unlike peta.org, walmartcanadasucks.com clearly signifies the critical purpose of the accused domain, and leaves no doubt in the mind of reasonable consumers that the site is not sponsored by the complainant.

OBH, Inc. v. Spotlight Magazine, Inc., (Footnote 29) involved a successful suit for injunction against use of the domain name www.thebuffalonews.com. The defendant used the domain name for an apartment finder service that competed with the plaintiff's Buffalo News's apartment finding service. Among other things, the defendant criticized the Buffalo News service as inferior to his own. The district court determined that:

"The Court infers, based on facts and circumstances present here, along with basic common sense, that Tortora intentionally copied and used "The Buffalo News" trademark as his domain name in the expectation that Internet users looking for The Buffalo News' web site would mistakenly come to his web site where they would encounter negative and disparaging comments about The Buffalo News. In other words, Tortora hoped to trick users into coming to his web site and receiving his message." (Footnote 30)

"The Court is not persuaded that the message of defendants' web site constitutes a parody. A parody "depends on a lack of confusion to make its point," and "must convey two simultaneous-and contradictory-messages: that it is the original, but also that it is not the original and is instead a parody." Defendants' web site does not clearly convey two simultaneous-and contradictory-messages: that it is The Buffalo News web site, but also that it is not The Buffalo News site. The Court finds defendants' web site confusing, at best. For example, the greeting "Welcome to www.thebuffalonews.com" at the top of web site does not immediately contradict an Internet user's assumption that he or she has accessed the plaintiffs' web site. Only when a user reads through the web site does he or she discover defendants' actual message. Because defendants' web site relies, at least to some extent, on confusion to make its point, defendants' argument that their use of the mark is a parody must fail.

"Further, even if defendants' web site, itself, is assumed to be a parody, defendants' use of plaintiffs' mark as the domain name for the site still creates a likelihood of confusion. An Internet user looking for plaintiffs' web site may initially encounter defendants' web site by mistake either by running "The Buffalo News" mark through a search engine or by entering "thebuffalonews.com" as the domain name. The user will not realize that he or she is at the wrong site until he or she reads through defendants' site and discovers that the site is a parody of plaintiffs' site and not the real thing. Thus, even if users will easily recognize, upon reaching defendants' web site, that it is only a parody, the use of plaintiffs' mark as the site's domain name (the external address that users must enter in order to get to the site) creates initial interest confusion, which, as discussed above with regard to the disclaimer defense, is actionable under the Lanham Act." (Footnote 31)

Unlike the domain name thebuffalonews.com, walmartcanadasucks.com itself makes it clear that the Web site is not sponsored by the complainant.

D. Panel Decision No.D2000-0477

In Panel Decision No.D2000-0477, Professor Frederick M. Abbott found "The record of this proceeding evidences that Respondent did not register "walmartcanadasucks.com" and his other "-sucks" names in order to express opinions or to seek the expression of opinion of others. The record indicates that his intention was to extract money from Complainant. An application of the Sleekcraft factors in another context involving Complainant’s mark and the word "sucks" might produce a different result than that reached here. The Panel notes that use of a domain name confusingly similar to a mark may be justified by fair use or legitimate noncommercial use considerations, and that this may in other cases permit the use of "-sucks" formative names in free expression forums." (Footnote 32)

The analysis in Case No.D2000-0477 concentrated on distinguishing the Lucent sucks and Bally sucks cases. It did not consider more broadly the law relating to critical or parodic uses of domain names and trademarks. Professor Abbott distinguishes Bally on the grounds that it did not involve using ballysucks as a domain name, but rather the word ballysucks on a Web page accessible under a different domain name. (Footnote 33) This distinction does not dilute the effect of the Bally court's analysis of the relationship between parody or criticism and trademark infringement.

Professor Abbott did not find that use of a "sucks" domain name never would be permissible, but he declined to find a general immunity for use of the "sucks" suffix. On the record before him, which included use of several domain names not involving the suffix "sucks," and which were likely to create consumer confusion, he extended his finding of bad faith, associated with these confusingly similar domain names, to the domain name including "sucks."

This case involves only one domain name, which includes "sucks." I do not see how a domain name including "sucks" ever can be confusingly similar to a trademark to which "sucks" is appended. But whether or not a per se privilege for use of "sucks" is appropriate, the record in this case does not support a finding that the ICANN Policy has been violated.

E. Content of wallmartcanadasucks site and legitimacy of Respondent interests

The complainant must establish that the Respondent "has no rights or legitimate interests in respect of the domain name." (Footnote 34) Whether the complainant can establish this element depends on the legitimacy of the contents of Respondent's Web site accessible through wallmartcanadasucks.com and the use of that domain name as a means of accessing that Web site.

The accused Web site contains little criticism of Wal-Mart products or practices other than its efforts to control use of its name in Web domain names. This supports an inference that the Web site is closely related to earlier Cybersquatting cases involving this Respondent, rather than the kind of criticism of an enterprise that friends of the Internet might be comfortable in encouraging.

Do the cases allowing critical or parodic use of infringing marks or domain names extend to this kind of criticism? Can the Respondent be said to have a legitimate interest in a domain name used for purposes of criticizing prior domain name litigation? The U.S. Supreme Court has suggested that the quality of criticism is immaterial.

1. Quality of criticism immaterial

The Supreme Court has cautioned in a copyright parody case:

"The threshold question when fair use is raised in defense of parody is whether a parodic character may reasonably be perceived. Whether, going beyond that, parody is in good taste or bad does not and should not matter to fair use. As Justice Holmes explained, "[i]t would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of [a work], outside of the narrowest and most obvious limits. At the one extreme some works of genius would be sure to miss appreciation. Their very novelty would make them repulsive until the public had learned the new language in which their author spoke." Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251, (1903) (circus posters have copyright protection); cf. Yankee Publishing Inc. v. News America Publishing, Inc., 809 F.Supp. 267, 280 (SDNY 1992) (Leval, J.) ("First Amendment protections do not apply only to those who speak clearly, whose jokes are funny, and whose parodies succeed") (trademark case)." (Footnote 35)

2. Legitimacy of Respondent site

Thus whether wallmartcanadasucks is effective criticism of Wal-Mart, whether it is in good taste, whether it focuses on the right issues, all are immaterial; the only question is whether it is criticism or parody rather than free-riding on another's trade mark.

F. Solicitation of Payment for Domain Name

One of the factors to be considered under the ICANN Policy in determining bad faith is whether the Respondent has solicited payment for transfer of the accused domain name. The record associated with the first two disputes between this complainant and this Respondent included a letter sent by the Respondent to the complainant asking for payment for consulting services relating to identification of domain names that Wal-Mart should register. Wal-Mart, and the sole panelist in Decision No. 2000-477 concluded that this request for payment satisfied the requirement of subparagraph 4 (b)(i).

I am unwilling to extend that inference from the earlier cases to this case. There has been no demand for payment for transfer of walmartcanadasucks.com. Nor has there been any request for payment for consulting services in connection with walmartcanadasucks.com. The inference of a demand for payment for transfer of the domain name was only weakly supported in the earlier cases, and there is no basis for it in this case. The letter regarding consulting services made no reference to transfer of domain names, and has not been renewed.

 

7. Findings

1. Complainant owns, among other trademarks, United States Registration Number 1,783,039, registered July 20, 1993, for the mark Wal-Mart for use in retail department store services (U.S. 101).

2. Among the marks Complainant owns and uses in Canada is Canada Registration Number TMA502,605, registered October 21, 1998, for the mark Wal-Mart for use in retail department store services.

3. Complainant’s Wal-Mart mark is famous.

4. Complainant makes extensive use of the Wal-Mart mark. Complainant uses its 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 children’s hospitals, industrial development grants, environmental programs and a variety of community support programs.

5. 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.

6. Complainant has websites located at, among other Internet addresses, http://www.walmart.com, http://www.wal-mart.com, and http://www.walmartstores.com.

7. On July 26, 2000, Respondent registered the domain name "wallmartcanadasucks.com, with Tucows.com.

8. A Web site is accessible under that domain name, which contains criticism of Wal-Mart.

9. 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.

 

8. Conclusions

1. The accused domain name is not identical or confusingly similar to a trademark or service mark in which the complainant has rights.

2. The Respondent has rights or legitimate interests in respect of the domain name, to use it as a foundation for criticism of the complainant.

3. The accused domain name has not been registered and is not being used in bad faith, as bad faith is defined in the ICANN Policy.

4. On the record in this case, the Respondent has not registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant or a competitor, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name. Preceding cases involved a request for consulting services, but even in those cases there was no explicit demand for payment in exchange for accused domain names; at most, an inference could be drawn of the relationship between the request for payment and the registration of disputed domain names. In this case, there is no request for payment of any kind linked to the accused domain name.

5. The Respondent has not registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name. There is no likelihood of the complainant registering the accused domain name for any purpose except to preclude domain names that evidence criticism of the complainant.

6. The Respondent has not registered the domain name primarily for the purpose of disrupting the business of a competitor. The Respondent and complainant are not competitors.

7. By using the domain name wallmartcanadasucks, the Respondent has not 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 complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s web site or location of a product or service on the Respondent's web site or location. There is no likelihood of confusion between wallmartcanadasucks and Wal-Mart's products and services.

8. Accordingly, the complainant has not established the elements of a violation of the ICANN Policy.

 

 

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Henry H. Perritt, Jr.
Sole Panelist

Dated: November 23, 2000

 

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Footnotes:

1. The complaint alleges three prior proceedings. I have been able to identify only two: Cases No.D2000-0150 and No.D2000-0477.

2. Rules for Uniform Domain Name Dispute Resolution Policy 15(a) (1999) [hereinafter "ICANN Rules"].

3. Uniform Domain Name Dispute Resolution Policy [hereinafter "UDNDRP" "UDRP" or "ICANN Policy"] ¶4(a).

4. ICANN Policy ¶4(b).

5. 15 U.S.C. § 1125(d).

6. Compare ICANN Policy ¶4 (a)(i) with 15 U.S.C. § 1125 (d)(1)(A)(ii).

7. Compare ICANN Policy ¶4 (a)(iii) with 15 U.S.C. § 1125 (d)(1)(A)(ii). The ICANN Policy says "registers and statute uses." The statute says "registers or uses."

8. Compare ICANN Policy ¶4 (a)(iv) with 15 U.S.C. § 1125 (d)(1)(B)(i)(V) (intent to divert business); compare ICANN Policy ¶4 (a)(i) with 15 U.S.C. § 1125 (d)(1)(B)(i)(VI).

9. See ICANN Policy ¶4 (b)(ii) & (iii) (preventing owner of mark from registering and disrupting business of competitor).

10. See 15 U.S.C. § 1125 (d)(1)(B)(i)(VII)-(IX) (misleading false statements in registration, prior registration or acquisition of multiple domain names, degree to which mark is famous or distinctive).

11. Compare ICANN Policy ¶4 (a)(ii) with 15 U.S.C. § 1125 (d)(1)(B)(i)(I)-(III).

12. ICANN rules ¶15 (a).

13. Compare ICANN Policy ¶4 (a)(i) with 15 U.S.C. § 1125 (d)(1)(A)(ii).

14. 29 F.Supp.2d 1161 (C.D. Cal. 1998)

15. AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir.1979) (offering eight-factor test to evaluate likelihood of confusion).

16. 29 F. Supp.2d at 1164 [citation omitted].

17. The Court notes that there is a distinction between this example and cases like Panavision where an individual appropriates another's registered trademark as its domain name. In the "cybersquatter" cases like Panavision, there is a high likelihood of consumer confusion-- reasonably prudent consumers would believe that the site using the appropriated name is the trademark owner's official site. Here, however, no reasonably prudent Internet user would believe that "Ballysucks.com" is the official Bally site or is sponsored by Bally.

18. 29 F. Supp.2d at 1164-1166 [citations omitted].

19. Lyons Partnership v. Giannoulas, 179 F.3d 384, 388 (5^th Cir. 1999) (affirming summary judgment for defendant asserting parody defense, citing Campbell v. Acuff-Rose Music, 510 U.S. 569 (1994))

20. 95 F. Supp. 2d 528 (E.D. Va. 2000).

    9 Registering domain names 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 Greg Farrell, From Sour Grapes to Online Whine, USA Today, April 6, 2000, at 01B (man spends $100,000 to register domain names of over 500 of world's largest companies plus sucks.com suffix, "a traditional Web addendum to identify a site for complaints"); Thomas E. Anderson, Emerging Intellectual Property Issues in Cyberspace, 78 Mich. B.J. 1260, 1263 (1999) ("Cybergripers are websites dedicated to criticizing a person, product, or business").

21. 95 F. Supp.2d at 535-36.

22. Restatement (Third) of Unfair Competition § 25 cmt. i (1995) (The "use of another's trademark, not as a means of identifying the user's own goods or services, but as an incident of speech directed at the trademark owner, ... raises serious free speech concerns.").

23. 112 F.Supp.2d 330 (S.D.N.Y. 2000),

24. 112 F.Supp.2d at 341.

25. Id. at 337 (citing L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26 (1st Cir.1987); Lucasfilm Ltd. v. High Frontier, 622 F.Supp. 931 (D.D.C.1985)), Restatement (Third) of Unfair Competition § 25 cmt. i (1995).

26. 112 F.Supp.2d at 337 (quoting United We Stand America, 128 F.3d at 91).

27. 113 F.Supp.2d 915 (E.D. Va. 2000)

28. 113 F. Supp.2d at 921.

29. 86 F.Supp.2d 176 (W.D.N.Y. 2000)

30. 86 F. Supp.2d at 183-184.

31. Id. at 191.

32. WIPO Panel Decision No.D2000-0477,

33. www.compupix.com

34. ICANN Policy ¶4 (a)(ii).

35. Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 582-83 (1994).