Even though the site was literally nothing other than a photo of a horse crudely overlaid on a picture of a Walmart store and there is no possible way a reasonable human being would think this was something created by the retailer, the letter says the use of the Walmart name “suggests Walmart’s sponsorship or endorsement of your website and correspondingly, your activities,” and that this infringes on retailer’s trademark “because it weakens the ability of the Walmart mark and domain name to identify a single source, namely Walmart.”
Jacques — who described the site as a “piece of postmodern Dadaism — nonsense-art using found objects” and contended that it was “an obvious parody” which falls under the umbrella of fair use — did not heed the company’s takedown demand and the site remained live and unchanged.
But the Guardian reports that the site so rankled Walmart that it wasted additional time and money by taking its complaint to the World Intellectual Property Organisation and sought to take over Walmart.horse under the WIPO’s Uniform Domain Name Dispute Resolution Policy.
“The UDRP is a domain name dispute resolution process that was designed to address cybersquatting issues,” trademark lawyer Roberto Ledesma explains to the Guardian. “This is reflected in the elements needed to prevail in a UDRP, which requires that the domain name has been registered in ‘bad faith’ and without rights or legitimate interests in the domain.”
But the matter never actually went before a UDRP panel, as Jacques decided it wasn’t worth fighting Walmart anymore.
And though Walmart.horse does not redirect to Walmart.com, or even a section of Walmart.com related to horses, the Guardian reports that the company is indeed the proud owner of the URL.
Generic top-level domains (like .horse and .bike) are expected to be somewhat of a legal battlefield in the coming years. This is especially true of domains like the new .sucks, which is currently in the process of being doled out to interested buyers. However, anyone looking to register a URL like Walmart.sucks is going to have to pay top dollar.