It was the third
case between Wal-Mart and Mr Harvey to come before WIPO. The other
cases involved similar domain names, but also involved requests for
money from Wal-Mart which WIPO took as evidence of bad faith use,
ruling in favour of Wal-Mart. The latest decision concerned the
question of whether a domain name including the suffix “sucks” is
confusingly similar to the word to which “sucks” is appended; and
whether a criticism or parody privilege extends to the use of the
suffix “sucks”. The panellist, Henry H. Perritt, Jr. wrote,
“As sole panellist, I conclude that a domain
name including the word ‘sucks’ cannot be confusingly similar and
that a privilege for criticism and parody reinforces that
conclusion.”
In Mr Harvey’s submission to the WIPO panellist, he wrote:
“Anyone with even the tiniest speck of
intelligence would realise that Wal-Mart would never be running a
site called: wallmartcanadasucks.com. In fact, the only reason
Wal-Mart wishes to own the disputed domain name is to take it out
of circulation. They do not wish to use it, but wish to keep it
from individuals who wish to use it to post complaints against
them."
Mr Perritt agreed with Harvey that the arbitration rules,
“should not be used to shut down robust debate and criticism… [Mr
Harvey] maybe acting childishly. He may be retaliating for having
lost earlier Cybersquatting cases. But this does not necessarily
mean that he may be forced to transfer the accused domain
name.”
Mr Perritt also acknowledged that “the use of the SUCKS.COM
suffix attached to a company name has become a standard formula for
internet sites protesting the business practices of a company.”
Mr Perritt concluded that Harvey could keep the name on the
grounds that:
- Wallmartcanadasucks.com was not confusingly similar to
Wal-Mart’s trade marks;
- Mr Harvey has rights or legitimate interests in the name, “to
use it as a foundation for criticism” of Wal-Mart; and
- The domain name was neither registered nor used in bad
faith.
Mr Harvey called the decision a victory for the freedom of
expression. He criticised Wal-Mart for registering over 50
sucks.com domain names, such as walmartgermanysucks.com and
walmartchinasucks.com, to ensure that “customers cannot complain
about them on the internet.”
The case is believed to be the first decision by WIPO in support
of someone who registered a sucks.com domain name.
