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Wal-Mart loses case for control of boycottwalmart.com

WIPO does not swallow 'confusingly similar' claim

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The world's largest retailer Wal-Mart has failed in its attempt to gain control of the web address boycottwalmart.com. An arbitration panel has ruled that it was unlikely that visitors would be confused and think that it was a Wal-Mart site.

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.

Copyright © 2006, OUT-LAW.com

OUT-LAW.COM is part of international law firm Pinsent Masons.

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