Domain Name Owner Must Give Up Site, WIPO Rules

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.

Copyright © 2025 Adnet Media. All Rights Reserved. XBIZ is a trademark of Adnet Media.
Reproduction in whole or in part in any form or medium without express written permission is prohibited.

More News

FSC Unpacks SCOTUS Age Verification Ruling in Webinar

The Free Speech Coalition conducted a public webinar Tuesday to help adult industry stakeholders understand the Supreme Court’s recent decision in FSC v. Paxton, and its potential implications.

UK Lawmaker Calls for Appointment of 'Porn Minister'

Baroness Gabrielle Bertin, the Conservative member of Parliament who recently convened a new anti-pornography task force, is calling for the appointment of a “minister for porn,” according to British news outlet The Guardian.

FSC Toasts Jeffrey Douglas for 30 Years of Service

n the very same evening when the adult industry was hit hard by the Supreme Court ruling supporting Texas’ controversial age verification law, HB 1181, members of the Free Speech Coalition board, staff and supporters gathered to celebrate Jeffrey Douglas’ 30 years as board chair — a fitting reflection of his reputation as an eternal optimist.

TTS Opens UK Testing Location

Talent Testing Service (TTS) has opened a new U.K. location in Ware, Hertfordshire.

FSC: Age-Verification Laws Go Into Effect South Dakota, Georgia, Wyoming on July 1

The Free Speech Coalition (FSC) has published a statement regarding new age verification laws set to go into effect tomorrow in South Dakota, Georgia, and Wyoming.

FSC Responds to Supreme Court Decision on Texas AV Law

The Free Speech Coalition (FSC) has released a statement responding to last week's Supreme Court decision on FSC v. Paxton, the Texas age verification law.

Sex Work CEO Debuts Upgraded 'GPTease' AI Assistant

Sex Work CEO has introduced the new Canvas in-chat editing feature to its AI-powered, NSFW text generator, GPTease.

UPDATED: Supreme Court Rules Against Adult Industry in Pivotal Texas AV Case

The U.S. Supreme Court on Friday issued its decision in Free Speech Coalition v. Paxton, striking a blow against the online adult industry by ruling in support of Texas’ controversial age verification law, HB 1181.

North Carolina Passes Extreme Bill Targeting Adult Sites

The North Carolina state legislature this week ratified a bill that would impose new regulations that industry observers have warned could push adult websites and platforms to ban most adult creators and content.

Supreme Court Ruling Due Friday in FSC v. Paxton AV Case

The U.S. Supreme Court will rule on Friday in Free Speech Coalition v. Paxton, the adult industry trade association's challenge to Texas’ controversial age verification law, HB 1181.

Show More