Domain Name Owner Must Give Up Site, WIPO Rules

Rhett Pardon
GENEVA — In a case of particular interest to domain name owners, the World Intellectual Property Organization ruled last month that the registrant of WalMartFacts.biz must hand over his site to the retail giant.

Taking its case to WIPO, which arbitrates Internet intellectual property cases, Wal-Mart succeeded against Jeff Milchen, who has been "long critical" of the company.

A WIPO panelist decided in the case that Milchen’s domain name is “confusingly similar to [Wal-Mart’s] registered trademark and that an intent to post critical commentary on a website does not translate into fair use of the domain name.”

WIPO, which ultimately ruled that Milchen registered and used the domain in bad faith, said that the "prospect of posting critical commentary at some future time" is needed to refute the trademark owner's claim that the registrant lacks "rights or legitimate interests" in the domain name.

Contesting it has trademark registrations in 46 companies and that it already owns WalMartFacts.com, the retailer could not establish bad faith under any of the four non-exclusive factors of the Uniform Domain Name Dispute Resolution Policy. But WIPO found bad faith in other circumstances.

WalMartFacts.biz lacked original content, and Milchen merely copied material from Wal-Mart's site but added nothing of his own, the court determined.

The court also found that Milchen had actual and constructive knowledge of the Wal-Mart’s trademark before he registered the domain and that he bore ill will toward the retailer, as demonstrated by his history of criticism of the company.

Milchen also incorporated the entire trademark in the domain name, the court said.

“We believe the WIPO judge decided wrongly,” Milche told XBiz. “One reason is that Walmart's claim and the WIPO ruling was based largely on the fact that the site did not yet have content as of the ruling.

“Walmart initiated the domain grab just three weeks after registration. I was preparing material to post, but could not afford to spend the money to launch the site — I was contracting a web designer — knowing that it could be taken away.”

After the ruling, Milchen said that he may appeal the case if “a sponsor is willing to fund it.”

“I'll soon decided whether to try a different domain or simply add the content to ReclaimDemocracy.org/walmart, already perhaps the most comprehensive information source on the corporation,”Milchen said. “Directing ReclaimDemocracy.org, a national nonprofit organization dedicated to restoring citizen authority over corporations, is my "day job." The case is Wal-Mart Stores Inc. vs. Milchen, No. D2005-0130.