Wachovia Wins Domain Dispute, But Protest Sites Deemed Legal

by Glen Shapiro, LawAndTax-News.com, New York

20 October 2003

In a decision issued last week, the World Intellectual Property Organisation (WIPO) ruled that Massachusetts resident, Alton Flanders must return the domain name 'wachovia-sucks.com' to the US financial services provider of the same name, but qualified this by announcing that legitimate protest sites may still receive protection under the free speech provisions of the US constitution.

Wachovia took action against Mr Flanders in July of this year, when it emerged that he was using the domain name to direct internet users to a financial search tool which provided access to rival financial service providers.

When the case first came before a WIPO panel last month, the bank argued that the domain name was "confusingly similar" to its trademark, and that Flanders had registered it in bad faith. Mr Flanders claimed freedom of speech protection, explaining that he was a disgruntled former customer of the bank, and was expressing his dissatisfaction via the disputed domain name.

However, announcing WIPO's decision, panellist Sandra Franklin observed that:

"One must look to the content of the web site to determine if there is an exercise of free speech which allows the Respondent to rely on the fair use exception. To do otherwise would legitimise cybersquatters who intentionally redirect traffic from a famous mark, simply through the use of a derogatory term."

She went on to conclude that in the panel's opinion, Mr Flanders had been aware of Wachovia's trademark, and had registered the domain name in bad faith, most likely for commercial gain. She therefore ordered him to turn wachovia-sucks.com, along with two other disputed domain names over to the bank.

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