Wal-Mart has failed to remove a website used to criticise the company in a dispute highlighting the divide between US and non-US views on free speech.
The US retailer tried to transfer three domains with the term ‘walmartat50’, all of which directed to the same site, by using the Uniform Domain Name Dispute Resolution Policy (UDRP). The system resolves disputes between trademark owners and domain registrants.
Wal-Mart had launched walmart50.com in July 2011 to celebrate 50 years in business. The respondent in the case, UFCW International Union, registered the three domains in March 2012. The bottom of the site, which included one quote saying the company “trampled” on its workers’ human rights, referenced groups called OURWalmart and Making Change at Walmart, both unaffiliated with the brand.
In the decision on September 19, panellist Michael Albert at the World Intellectual Property Organization (WIPO) said the domains were confusingly similar to Wal-Mart’s mark and were not used in a non-commercial manner—a defence under the UDRP. This was partly because there was no disclaimer that it was a ‘complaint’ site.
But analysing the case further, the panellist allowed UFCW to retain the site. Albert said despite allegations that UFCW used the domains commercially—activities that could highlight bad faith use—Wal-Mart did not submit any evidence to support these claims. He added it was “significant” that the respondent was not in competition with Wal-Mart.
The case reemphasises that US laws tend to place more protection on free speech than those of other countries. It is well known that in cases involving two US parties and a disputed ‘gripe’ site, panellists typically find in favour of the latter, if it is cleared of cybersquatting.
“This shows that in cases involving US parties, whose conduct must generally comport with US law, legitimate gripe sites cannot be challenged through the UDRP,” said David Bernstein, partner at Debevoise & Plimpton in New York. “Such sites are an exercise of free speech that has long been recognised and upheld by US courts.
“UK and US panellists have very different views on this, and if the gripe site involves all UK or European parties then a UDRP panel would more likely transfer it, if the domain namecontains the trademark without making clear that it is a criticism site.”
Matthew Harris, partner at Waterfront Solicitors in London, said it made “no sense to have different approaches affected by local laws” and it was “deeply undesirable for a UDRP outcome to depend on geography”.
“While WIPO is aware of the divide, encourages consistency and has tried to bridge the gap at its panellist meetings in the past, there is no binding policy,” he said.
Wal-Mart and the UFCW have clashed in a UDRP case before. In July 2011 Wal-Mart successfully transferred ‘ourwalmart.org’, which the panel said had been used for commercial gain.
This article was first published on 01 December 2012 in World IP Review
udrp, wal-mart, wipo, ufcw