Web site battle against United Food & Commercial Workers International Union — WalMart loses

Arbitration panel rules union can keep domain names used to criticize retailer.

Wal-Mart has failed to take down a United Food & Commercial Workers International Union (UFCW) web site critical of Walmart.

A single member World Intellectual Property Organization arbitration panel has ruled that the UFCW can retain its domain names Walmartat50.com, walmartat50.com, walmartat50.net and walmartat50.org.

Walmartat50.com is a web site that seeks to give the union’s take on WalMart:

As Walmart celebrates its 50th anniversary this year, the firm is telling clients and communities a one-sided story regarding its business and values. Walmart wants us to think their history reflects the promise of America –if you work hard, anything is possible.

The site was created following Walmart created its own web site to commemorate 50 years in business, Walmart50.com.

The panel ruled that the domain names weren’t registered and used in bad faith.

I’m a bit surprised by the decision. Although gripe sites can be protected in WIPO UDRP decisions, typically they use domain names that are clearly distinguishable from the trademark holder’s (e.g. “sucks”. In this case you have to visit the site to realize it’s not owned by Walmart. As the panelist points out, it’s not even entirely clear until you poke around the UFCW site a bit.

I’m also surprised that the panelist agreed that the UFCW is “not using the Disputed Domain Names to its own commercial advantage; there is neither advertising nor requests for financial support on Respondent’s website.” The site provides a clear business advantage to the union, and even has a lead generation petition form. Just since the site doesn’t have paid advertising or direct requests for contributions doesn’t mean it’s not being used for financial gain.