The Complainant is Wal-Mart Stores, Inc., Arkansas, the United States of America, represented by Robert L. Raskopf of Quinn Emanuel Urquhart Oliver & Hedges, LLP of the United States of America.
The Respondent is Traffic Yoon, of Seoul, the Republic of South Korea.
2. The Domain Name and Registrar
The disputed domain name <boycottwalmart.com> is registered with AusRegistry Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2006. On June 29, 2006, the Center transmitted by email to AusRegistry Pty Ltd a request for registrar verification in connection with the domain name at issue. On July 1, 2006, AusRegistry Pty Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification from the Center that the Complaint was administratively deficient, the complainant filed an amendment on July 5, 2006. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 10, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2006. The Respondent did not submit a Response. Accordingly, the Center formally notified the Respondent of the consequences of his default on July 31, 2006.
The Center appointed Philip N. Argy as the sole panelist in this matter on August 15, 2006. The Panel finds that it was properly constituted. The Panel submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
There being no Response, the following facts are uncontested.
The Complainant was established in 1962, in the United States of America as a local specialty store and is currently the world’s largest retailer. The Complainant offers for sale a wide variety of products including but not limited to electronics, computers, toys, furniture, sports and fitness equipment, automotive and apparel. The Complainant owns and has continuously used the WAL-MART and WALMART trademarks and service marks in the United States of America for retail department store services since 1962.
In addition to the common law trademark rights in WAL-MART and WALMART the Complainant has numerous registered United States of America trademarks which incorporate the terms “Wal-Mart” or “Walmart” which it uses in the United States and internationally in connection with its retail stores and in connection with services such as credit cards, vision care, vacation planning and pharmacy. The marks include but are not limited to:
- U.S Reg. No 1,322,750 for WALMART and Design;
- U.S. Reg. No. 1,783,039 for WAL-MART.
The Complainant also operates a website at “www.walmart.com” where consumers can shop online and obtain information about Wal-Mart stores. The website is arranged in various product categories and as such is a vital part of the Complainant’s business and contributes to the Complainant’s online identity and brand. The Complainant also owns and operates a number of other domain names which incorporate the WAL-MART or WALMART mark, including <walmart.com>, <walmartsupercenter.com>, <walmartstores.com> among others, that link to the Complainant’s website.
Due to the Complainant’s extensive use and millions of dollars in advertising, the WAL-MART and WALMART marks have acquired invaluable goodwill and reputation in the United States and in many other places around the world. Additionally the Complainant uses the WAL-MART and WALMART marks extensively on its Wal-Mart buildings, advertising and community support programs.
The Respondent registered the domain name <boycottwalmart.com> on or about May 13, 2004.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the disputed domain name is virtually identical or at least confusingly similar to the Complainants WAL-MART mark as the Respondent has merely added the term “boycott” to a term that is identical to the WAL-MART mark.
Specifically, the Complainant cites a number of prior panel decision that held that a domain name with the addition of “boycott” or “sucks” is confusingly similar to the trademark to which it is applied.
Further, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant knows of no other “WALMART” that offers goods or services and Wal-Mart has not authorized any individual or business entity to register the <boycottwalmart.com> domain name. Further the Complainant contends that the Respondent is not using the <boycottwalmart.com> domain name as a site for genuine non-commercial criticism of the Wal-Mart business. The Complainant contends that the Respondent is using the site in a commercial manner to redirect internet traffic to competitors of the Complainant. The Complainant also contends that the Respondent is using the domain name in bad faith as it is using it for commercial gain rather than for genuine criticism or complaints. Further, the Complainant contends that the Respondent intends to sell the domain name, evidenced by a banner prominently displayed on the “www.boycottwalmart.com” website, which indicates use in bad faith as the Complainant’s clear status as owner of the mark leads to the inference that the Respondent meant to sell the domain name to the Complainant or a competitor for more than reasonable out of pocket expenses.
B. Respondent
As noted above, the Respondent did not file a Response to the Complaint.
6. Discussion and Findings
The Complainant has shown that it is the owner of the marks WAL-MART and WALMART, through the registration of various WAL-MART and WALMART trademarks in the United States and the use of the domain names such as <walmart.com>, <walmartsupercenter.com> and <walmartstores.com>.
When comparing the Complainant’s mark to the disputed domain name, it is well established that the generic top-level domain, in this case “.com” should be excluded from consideration as being a generic or functional component in the domain name. Once the “.com” is excluded from the disputed domain name the remaining term is “boycottwalmart”, which consists solely of the derogatory word “boycott” and the Complainant’s mark without the hyphen. The Panel must decide whether the remaining term “boycottwalmart” is confusingly similar to the marks WAL-MART or WALMART.
Since the Complainant’s mark is embedded in the disputed domain name, it is hard to say there is no similarity, but finding that the disputed domain name is similar to the Complainant’s marks is not sufficient. The critical question in this Panel’s view on this aspect of the Policy is whether the similarity is “confusing”.
It is well established that when comparing the domain name with the Complainant’s mark, reference should not be made to the content of the website (See A&F Trade Mark, Inc. and Abercrombie & Fitch Stores, Inc v. Justin Jorgenson, WIPO Case No. D2001-0900). Additionally, as discussed in America Online, Inc v. Jonathan Investments Inc, and AOLNEWS.COM, WIPO Case No. D2001-0918, in order to establish confusing similarity the panel in that case was of the view that one must show that the public will be confused as to trade origin. In America Online the question of confusing similarity was stated as:
“Is it likely therefore that, because of the similarity between the Domain Name on the one hand and the Complainant’s trade mark on the other hand, people will believe that the Domain name is associated in some way with the Complainant.”
This Panel regards this as the appropriate test to be applied when considering confusing similarity. Not only must a Complainant establish similarity between the disputed domain name and its trade marks, but it must also establish that people seeing the disputed domain name will be confused by that similarity as to the trade origin of the products, services or proprietorship of the site to which the disputed domain resolves. There have been many cases which have diverged from this test, which makes the Panel reluctant to disagree with them without a more detailed analysis of the underlying principles. In essence, this Panel is of the view that embedding a trademark in a domain name is usually sufficient to establish similarity. What requires more focus than it has perhaps had in many other cases is the role of the word “confusingly”. Not without some trepidation does this Panel embark on that exercise.
In Wal-Mart Stores, Inc v. Walmarket Puerto Rico, WIPO Case No. D200-0477 it was stated that whether a domain name and a trademark are confusingly similar involves the application of a “multifactorial 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). In Sleekcraft, the Court enumerated eight factors to be weighed in the questions of likelihood of confusion. These factors were: (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 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”.
With respect, this Panel does not agree that the Sleekcraft test of ‘likelihood of confusion’ of goods bearing one trade mark with another trade mark is or should be the identical test for ‘confusing similarity’ under the Policy, although some of the factors enumerated in Sleekcraft are useful for determining confusing similarity between a trademark and a domain name. This Panel prefers the view that “the test of confusing similarity under the Policy [should be] confined to a consideration of the disputed [domain] name and the trademark” (Vivendi Universal v. Mr. Jay David Sallen and GO247.COM,INC, WIPO Case No. D2001-1121).
The Complainant has argued that formulating a domain name by adding a derogatory term to a trade mark always results in a domain name that must be seen as confusingly similar to the trade mark. Indeed there have been a number of Panel decisions that have held that a domain name which consists of a disparaging word such as “sucks” and a complainant’s mark must in all circumstances be confusingly similar because not all Web users speak English fluently (Vivendi Universal v. Mr. Jay David Sallen and GO247.COM, INC, WIPO Case No. D2001-1121 and Koninklijke Philips Electronic N.V v. In Seo Kim, WIPO Case No. D2001-1195. However, on a number of occasions, other Panels have concluded that appending a critical or disparaging term, such as “sucks”, to a mark to formulate a domain name automatically signals that the corresponding website is intended for parody or criticism, and eliminates any significant risk that the public will be confused into believing that there is an identical trade origin (Qwest Communications International, Inc. v. DefaultData.com a/k/a Brian Wick, WIPO Case No. D2003-0002) and ArthurGuinness Son & Co. (Dublin) Limited, Guinness Anchor Behad v. Josh.com.my a.k.a Josh Lim, WIPO Case No. D2002-1117). These cases have essentially held that trademark owners are so unlikely to disparage or parody their own goods or services, that no reasonable member of the public would be confused as to trade origin, and that therefore the use of a critical or disparaging term in a domain name obviates confusion.
This Panel respectfully disagrees with both of the foregoing alternative approaches if they are pressed in unqualified form. A domain name which combines a disparaging or critical term with a trademark may well be confusingly similar to the trademark, but not always. This Panel considers that confusing similarity will be established where those persons who are mostly likely to want to access a complainant’s website will be confused as to whether the complainant is the owner and operator of the website to which the disputed domain name resolves. As previously mentioned, this is determined with no regard to the content of the website but merely comparing the domain name (without the generic top-level domain) with the trademark. This is quite important to appreciate, since the Policy is only intended to deal with cases where the domain name is identical or confusingly similar to a complainant’s trademarks. In this Panel’s view the Policy is not intended to, and cannot, be responsive to all variants of confusing conduct by a respondent, and that is why in this Panel’s view resort to the body of a respondent’s website is not helpful when considering the test on the first aspect of the Policy. (A respondent’s website content may, of course, be relevant to the other two elements that a complainant has to prove to succeed under the Policy).
In Berlitz Investment Corp v. Stefan Tinculesue, WIPO Case No. D2003-0465, the panel found that a domain name consisting of a trademark with the disparaging word “sucks” “could be” confusingly similar to the Complainant’s trade mark. In that case the Complainant’s trademark was used in relation to a business which provided English tuition to customers who did not speak English. In the particular circumstances, the Complainant’s customers and potential customers were likely to be confused as to whether the Complainant was associated with the domain name, as they may not have appreciated the nuances of American slang.
In America Online, the domain name which was in dispute was <fucknetscape.com>. In that case, the Panel applied the test of confusing similarity, that is, whether it was likely, because of the similarity between the domain name and the trademark, that people would believe that the domain name was associated in some way with the complainant”. The learned Panel said:
“The Panel regards it as inconceivable that anyone looking at this Domain Name will believe that it has anything to do with a company of such high repute as the Complainant. It is manifestly, on its face, a name which can have nothing whatever to do with the Complainant. It is a name which, by its very nature, declares that it is hostile to Netscape.”
It is clear from both Berlitz Investment and America Online that the question of whether a person would be confused as to the trade origin of a domain name has to date been regarded by panelists as highly dependant on the facts and circumstances of each case. In this Panel’s view that is not necessarily the right approach either. In this Panel’s view, unless the Policy is to be asked to perform a task for which it and the administrative procedures that it involves are poorly equipped, in terms of receiving and dealing with evidence, the question needs to be more confined to one of confusing similarity when the disputed domain name and the complainant’s trademarks are compared side by side through the eyes of the likely viewers of the two.
In the present case, the Complainant has provided evidence that it is located in 15 countries world wide. No further information has been provided as to the countries or the language spoken in these countries. The Complainant has not asserted that it has clientele which would be unfamiliar with the English language. In fact, on the Complainant’s website at “www.walmart.com”, the countries cited as having Wal-Mart stores are those countries in which English is the predominate or official language. Therefore, the Panel cannot conclude that the requisite confusion will arise because the Complainant’s customers or potential customers would not understand the meaning of “boycott”.
This Panel considers that this case can also be distinguished from those cases in which the term “sucks” has been appended to a trade mark. In the present case the word “boycott” is used as a prefix. The ordinary meaning of boycott is disparaging and critical, unlike “sucks” which relies on an understanding of idiomatic American slang. Furthermore, where the concatenated word is a prefix rather than a suffix, the emphasis normally placed on the initial portion of a domain name tends to ‘bury’ the trade mark. Conversely, if the appended word is a suffix, the trade mark is at the beginning of the domain and therefore much more likely to retain its trade mark effect on the reader.
In Wal-mart Stores, Inc v. xc2, WIPO Case No. D2006-0811, this Panel applied the principles enunciated above and reached the view that <walmartblows.com> is confusingly similar to the Complainant’s trademarks. There is no inconsistency in the two decisions. On the contrary, the different outcomes reflect no more than the fact that, in this Panel’s view, some members of the public wishing to find a website associated with the Complainant would be confused as to whether the Complainant owned or operated the website at “www.walmartblows.com”.
Conversely, this Panel is of the view that members of the public wishing to find a website associated with the Complainant would not be confused as to whether the Complainant owned or operated the website at “www.boycottwalmart.com”. It would be perfectly clear to anyone who recognized the Complainant’s trademarks that the disputed domain name would not resolve to a site used by the Complainant to promote its own goods or services. Accordingly, the Panel finds that “boycottwalmart.com” is neither identical nor confusingly similar to the trademark “Wal-mart” nor any proven variants of that mark.
There could be other situations in which the use of a clearly disparaging word used to prefix a trademark would lead the public to conclude that the trade origin of the domain name is the same as the trademark owner. This could be because the disparaging word was a slang word which would not be appreciated as being derogatory by a number of people. Additionally, the complainant may be able to show that their particular customers would not understand the word to be derogatory as was shown in Berlitz Investment. Further, as discussed in Vivendi Universal, it may be shown that the addition of a derogatory word to a trademark would not necessarily indicate that the domain name was not associated with the trademark owner because of the individual facts. In Vivendi Universal, the example given to demonstrate that a domain name incorporating a derogatory term and a trademark may be confusingly similar was the hypothetical trademark <electroluxsucks.com>. Electrolux uses the slogan “Nothing sucks like Electrolux” and therefore, because of the particular facts, it is feasible that the domain name may be associated with the trademark owner.
Lest there be any doubt, this decision is not authority for the proposition that all domain names which combine the term ‘boycott’ with a trademark are unable to be confusingly similar to the trademark. It is simply that this Panel finds that in this case the Complainant failed to make good the proposition.
As the Complainant has failed to establish that the disputed domain name is identical or confusing similar to its trademark, it is unnecessary to consider whether the Complainant has carried its burden of showing whether the Respondent has a right or legitimate interest in the domain name or whether the domain name was registered and used in bad faith.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Complaint is denied.
Philip N. Argy Sole Panelist
Date: September 20, 2006
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