Panel orders union’s domain name be transferred to Walmart.
Walmart has succeeded in taking down a criticism website created by the United Food and Commercial Workers International Union.
In July, the retailer filed a dispute with World Intellectual Property Organization against the union’s use of the domain names ReallyWalmart.org, .com, and .net.
ReallyWalmart.org hosted a site that parodied Walmart’s actual website TheRealWalmart.com.
A three person panel determined that the domain name itself would cause confusion because it includes the word “really”, implying that it’s “really Walmart” instead of a parody website. It also looked at the actual style of the website, which closely mimicked TheRealWalmart.com.
In registering the disputed domain names here, Respondent used the term “really” to directly and in a misleading manner signal sponsorship or affiliation with Complainant. Panels in other proceedings involving noncommercial protest sites have found that the use of a misleading domain name that did not signal a lack of sponsorship or affiliation with the mark holder can amount to bad faith. E.g., 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461 and Banque Cantonale de Genève, supra. Those proceedings involved mostly neutral domain names, none of which were so strong in suggesting a relation with the right holder as the disputed domain names in this proceeding. Without embracing so broad a rule as that used in those other proceedings, the Panel is comfortable in ruling that in the specific circumstances of this case, the use of the term “really” constitutes bad faith for purposes of the Policy. The Panel also finds that the use of language, trademarks, and a style on the website to which the disputed domain name routes that imitates Complainant’s website is also misleading; it compounds the confusion, while the language of the website does not clearly and immediately dispel that confusion.
The panel also said that the union’s failure to submit a response in the proceeding was further evidence of bad faith “under these circumstances”.
The domain names will be transferred to Walmart as a result of the decision.