Out-Law / Your Daily Need-To-Know
Kenneth Harvey of Newfoundland has won the right to continue hosting a customer grievance web site at Wallmartcanadasucks.com following the first decision of its kind by a panel of the World Intellectual Property Organisation (WIPO) that went against Wal-Mart, the retail giant.
It was the third case between Wal-Mart and Mr Harvey to come before WIPO. The other cases involved similar domain names, but also involved requests for money from Wal-Mart which WIPO took as evidence of bad faith use, ruling in favour of Wal-Mart. The latest decision concerned the question of whether a domain name including the suffix “sucks” is confusingly similar to the word to which “sucks” is appended; and whether a criticism or parody privilege extends to the use of the suffix “sucks”. The panellist, Henry H. Perritt, Jr. wrote,
“As sole panellist, 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.”
In Mr Harvey’s submission to the WIPO panellist, he wrote:
“Anyone with even the tiniest speck of intelligence would realise 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."
Mr Perritt agreed with Harvey that the arbitration rules, “should not be used to shut down robust debate and criticism… [Mr Harvey] maybe 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.”
Mr Perritt also acknowledged that “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.”
Mr Perritt concluded that Harvey could keep the name on the grounds that:
- Wallmartcanadasucks.com was not confusingly similar to Wal-Mart’s trade marks;
- Mr Harvey has rights or legitimate interests in the name, “to use it as a foundation for criticism” of Wal-Mart; and
- The domain name was neither registered nor used in bad faith.
Mr Harvey called the decision a victory for the freedom of expression. He criticised Wal-Mart for registering over 50 sucks.com domain names, such as walmartgermanysucks.com and walmartchinasucks.com, to ensure that “customers cannot complain about them on the internet.”
The case is believed to be the first decision by WIPO in support of someone who registered a sucks.com domain name.