Domain name disputes are settled by the arbitration panel of the
World Intellectual Property Organisation (WIPO). That body has
ruled that Wal-Mart cannot have control of the disputed domain.
The domain is controlled by Traffic Yoon of South Korea, a
company which put up no defence in the case. Wal-Mart argued that
the domain name was "confusingly similar" to its own addresses,
which is not permitted.
"Since [Wal-Mart'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," said the WIPO decision. "The critical question in
this Panel’s view on this aspect of the Policy is whether the
similarity is “confusing”."
"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,"
said the panel. "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."
The panel ruled that Wal-Mart's case could not stand because
nobody finding the website boycottwalmart.com would imagine that
the site belonged to the retailer.
"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'," said its decision. "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," it ruled.
Other decisions had ruled that the inclusion of a trademark in a
name always made for confusing similarity or that the inclusion of
a derogatory term such as 'boycott' always meant that the site
could not be counted as being confusingly similar. Sole panellist
Philip Argy said that neither approach should be taken and that
cases should be judged on their own merits.
Argy's decision does provide some clarification but because
precedents do not hold sway in the arbitration process it does not
guarantee that other panels will follow the same rules.
