## Facts

- Wal-Mart Stores, Inc. owned longstanding, widely recognized trademark rights in “Wal-Mart” used for large-scale retail services and associated online branding.
- Respondents (Walsucks and Walmarket Puerto Rico, associated with Kenneth Harvey) registered multiple domain names incorporating “walmart” or “wal-mart,” paired with geographic terms and, in several instances, the term “sucks,” including: `walmartcanadasucks.com`, `wal-martcanadasucks.com`, `walmartuksucks.com`, `walmartpuertorico.com`, and `walmartpuertoricosucks.com`.
- The registrations used Wal-Mart’s mark as the dominant element of each domain name and targeted locations where consumers might expect Wal-Mart-related sites.
- Respondent asserted the domains were intended for consumer criticism and free-expression “gripe” sites.
- Wal-Mart presented evidence that respondent contacted Wal-Mart and offered to sell at least some of the domain names.
- Wal-Mart initiated a UDRP proceeding seeking transfer of the disputed domain names.

## Issues

1. Whether the disputed domain names were identical or confusingly similar to Wal-Mart’s trademark under the UDRP.
2. Whether respondent had rights or legitimate interests in the disputed domain names, including as purported noncommercial criticism sites.
3. Whether the disputed domain names were registered and used in bad faith, including by targeting the mark to sell the domains or disrupt Wal-Mart’s business.

## Decision

- The panel found the disputed domain names confusingly similar to Wal-Mart’s trademark, notwithstanding the addition of geographic terms and “sucks.”
- The panel found respondent lacked rights or legitimate interests in the domain names.
- The panel found the domain names were registered and used in bad faith, including for leverage and sale to the trademark owner.
- The panel ordered transfer of all disputed domain names to Wal-Mart.

## Legal Principles

- Under the UDRP, confusing similarity is assessed by comparing the domain name and the complainant’s mark; adding geographic terms or pejorative wording (e.g., “sucks”) does not, by itself, prevent a finding of confusing similarity where the mark remains the dominant element.
- A respondent does not establish “rights or legitimate interests” merely by asserting an intent to host criticism; the panel examines objective indicia of legitimate noncommercial or fair use and whether the registrant is instead appropriating the mark as an Internet identifier.
- Evidence that a domain name was registered primarily to sell to the trademark owner for more than out-of-pocket costs supports bad faith under the UDRP.
- Bad faith may also be shown where registrations are calculated to interfere with or disrupt the trademark owner’s online presence and to create bargaining pressure.

## Conclusion

Applying the UDRP’s three-part test, the panel concluded that respondent’s trademark-targeting domain registrations—despite “sucks” and geographic modifiers—were confusingly similar to Wal-Mart’s mark, unsupported by legitimate interests, and registered and used in bad faith, warranting transfer to Wal-Mart.


Wal-Mart Stores, Inc. v. Walsucks, WIPO Case No. D2000-0477 (2000)