## Facts

- Wal-Mart Stores, Inc. owned trademark rights in the WAL-MART mark through extensive use and multiple registrations in the United States and abroad.
- Richard MacLeod (d/b/a “For Sale”) registered the domain name `wal-martsucks.com` on February 12, 2000.
- Wal-Mart did not authorize respondent to use the WAL-MART mark or any variation of it.
- Respondent did not operate an established, noncommercial criticism site at the domain and sought to sell the domain name for a price far exceeding registration costs (reported as over $500,000).
- Wal-Mart filed a UDRP complaint with the WIPO Arbitration and Mediation Center; respondent filed a timely response.
- A sole panelist ultimately adjudicated the dispute under the Uniform Domain Name Dispute Resolution Policy (UDRP).

## Issues

1. Whether `wal-martsucks.com` is identical or confusingly similar to a mark in which Wal-Mart has rights under UDRP ¶ 4(a)(i).
2. Whether respondent had rights or legitimate interests in the domain name under UDRP ¶ 4(a)(ii), including any legitimate noncommercial or fair use as a criticism site.
3. Whether the domain name was registered and used in bad faith under UDRP ¶ 4(a)(iii), including bad faith based on acquiring the domain primarily for resale under UDRP ¶ 4(b)(i).

## Decision

- The panel found `wal-martsucks.com` confusingly similar to the WAL-MART mark.
- The panel found respondent lacked rights or legitimate interests in the domain name.
- The panel found the domain name was registered and used in bad faith, principally because respondent sought to sell it for an amount far exceeding documented out-of-pocket costs.
- The panel ordered transfer of `wal-martsucks.com` to Wal-Mart.

## Legal Principles

- Under UDRP ¶ 4(a), a complainant must prove: (1) confusing similarity to a mark in which it has rights, (2) respondent’s lack of rights or legitimate interests, and (3) bad-faith registration and use.
- A domain name that incorporates a complainant’s mark in full with the addition of a derogatory term (e.g., “sucks”) can still be confusingly similar for UDRP purposes.
- A claimed criticism purpose does not establish a legitimate interest where the registrant’s conduct shows intent to extract value from the mark, including offering the domain for sale.
- Evidence that a domain was acquired primarily for sale to the mark owner (or others) for consideration exceeding documented out-of-pocket costs supports a finding of bad faith under UDRP ¶ 4(b)(i).

## Conclusion

Applying the UDRP, the panel ordered transfer of `wal-martsucks.com` after finding that the domain’s incorporation of the WAL-MART mark satisfied confusing similarity, respondent had no legitimate interest, and respondent’s attempted high-price sale showed bad-faith registration and use rather than bona fide noncommercial criticism.


Wal-Mart Stores, Inc. v. MacLeod (In re wal-martsucks.com), D2000-0662 (WIPO Arb. & Mediation Ctr. Sept. 21, 2000)