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Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

Wal-Mart Stores, Inc. v. Jeff Milchen

Case No. D2005-0130 (WIPO, April 10, 2005)

In this domain name dispute brought under the Uniform Domain Name Dispute Resolution Policy ("UDRP"), the presiding Panelist directed Jeff Milchen ("Milchen") to transfer to Wal Mart the domain name walmartfacts.biz Milchen had registered. In reaching this result, the Panelist held that a professed intention to use a domain name in the future to operate a gripe site critical of Wal-Mart was insufficient to establish the legitimate interest in that domain necessary to defeat complainant's claim under the UDRP, when such an intention had not yet been acted upon.

Complainant Wal-Mart Stores Inc., the world's largest retailer, is the owner of the service mark "Wal-Mart," which it uses in its business operations.  Wal-Mart has registered a number of domains that incorporates its Wal Mart mark, including "walmartfacts.com."

Respondent Jeff Milchen is an individual who claims to be a long standing critic of Wal-Mart.  Milchen registered the domain walmartfacts.biz, allegedly to operate a gripe site.  As of the date of the commencement of this proceeding, however, it appeared that the only materials posted on the site Milchen operated at this domain were copied from website(s) operated by Wal-Mart.  Milchen did not post any original content or materials he created on this site, critical or otherwise.

Wal-Mart commenced this UDRP proceeding to compel Milchen to transfer the walmartfacts.biz domain name to it.  To prevail in such a proceeding, Wal-Mart must show:

(1) the domain name registered by respondent is identical or confusingly similar to Wal-Mart's service mark;

(2) respondent has no legitimate interests in the domain; and

(3) the domain was registered and is being used in bad faith.

The Panelist found that Wal-Mart had established each of these elements, and accordingly directed the transfer of the domain name.

Milchen argued that he had a legitimate interest in the domain name sufficient to defeat Wal Mart's claim.  Under the UDRP, par. 4(c)(iii), a respondent can demonstrate such a legitimate interest if he can show that he is "making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."  Milchen argued that because he intended, in the future, to operate a gripe site at this domain critical of Wal-Mart, he had a legitimate interest in the domain under this provision.

The presiding Panelist rejected this contention.  As stated above, at present, the site posted by Milchen at the domain did not contain any original content, and certainly no content critical of Wal-Mart.  It only contained material Milchen apparently copied from a web site(s) operated by Wal-Mart.  Said the Panel:

[R]espondent has not presented sufficient information that the intention behind establishing the Domain Name was "nominative fair use".  The prospect of posting critical commentary at some future time is not appropriate for consideration by the Panel.  Therefore the Panelist is not convinced given the evidence in this proceeding that the Domain Name and website to which it is directed were intended for free speech or fair comment when registered, constructed and initially used.

The Panelist further found that Wal Mart had made the balance of the showing required for relief under the UDRP.  Milchen did not dispute that Wal-Mart had a valid service mark in "Wal-Mart", or that his domain was identical or confusingly similar thereto.

The Panelist also found that Milchen had used and registered the domain in bad faith, notwithstanding its determination that "respondent does not appear to have an intent for commercial gain."  In reaching this result, the Panelist relied on the fact that Milchen had made no use of the domain name, was aware of Wal-Mart's name at the time he registered the domain, downloaded material from Wal-Mart's site(s) for use on Milchen's own web site thereby infringing Wal-Mart's copyrights therein, was an avid critic of Wal-Mart, and used Wal Mart's entire mark in the offending domain.

Finding Wal-Mart had met its burden under the UDRP, the Panelist directed Milchen to transfer the domain at issue to Wal-Mart.

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