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There has been a lot of press around Walmart’s 50th Anniversary. The company built a website at www.walmart50.com that talks about the history of Walmart and other interesting aspects of the company. Some of the company’s critics also geared up for the anniversary including the UFCW International Union (“UFCW”) which registered the domains www.walmartat50.com, www.walmartat50.org, and www.walmartat50.net and put up websites criticizing the company. In response Walmart filed a UDRP complaint with the World Intellectual Property Organization (“WIPO”) seeking transfer of the domains.

UFCW fought the UDRP and the arbitrator denied Walmart’s request to transfer the domains. Overall, the arbitrator appeared to be extremely sympathetic to Walmart’s arguments, even going as far as saying that he thought the websites appeared to be Walmart sites, and refusing to find that UFCW had legitimate rights in the domain names simply because it was criticizing Walmart. Citing the recent WIPO decision in Sutherland Institute v. Continuative LLC the arbitrator explained that the non-commercial use of a website to criticize does not in-and-of-itself provide a positive right in a domain name when there is an “impermissible likelihood of confusion” from such use. The arbitrator noted some of the similarities between the UFCW’s websites and Walmart’s:

“In particular, the website linked to the Disputed Domain Names uses not just the WALMART mark but also the same or similar colors and font used by Complainant in conjunction with its use of the mark. Nowhere does the website disclose or clearly disclaim that Respondent and the other groups featured on the website are not affiliated with Complainant. To the contrary, an Internet user may have to click on one of the logos for OURWalmart or Making Change at Walmart linking to the groups’ respective websites to discover that the groups and, accordingly, the website are not associated with Complainant. While on a closer reading it becomes increasingly apparent that the content is of a critical nature, the website at first glance appears to this Panel to be associated with Complainant.”

Even so, the arbitrator did not find evidence of “bad faith” conduct by UFCW largely because it had not received compensation or a commercial advantage from the sites, stating: “[i]ndeed, no commercial purpose is apparent from the website associated with the Disputed Domain Names.” Thus, even though there was strong evidence of confusing similarity, the fact that UFCW did not post advertising on the site, solicit for donations or members, or do anything other than provide a forum for members or supporters to criticize Walmart ultimately saved the day for UFCW.

As a takeaway, there are few important lessons (for both sides of a domain dispute) to consider. First, using a domain name/website as a means to criticize a company will not automatically grant the registrant a right to the domain. Second, if you are going to post a critical website, it is still important to consider disclaimers or banners that tell users expressly that the site is not affiliated with the subject trademark holder. Lastly, bad faith will not automatically be presumed on the part of the registrant even if there is strong evidence (as there was here) of confusing similarity. A complainant should emphasize commercial advantages, etc… gained by the registrant in order to make their UDRP case stronger and attempt to define the dispute less on “fair speech” grounds, and more in terms of user/source confusion...