Does WalMart Think Its Customers Would Confuse It With the Devil?

It’s been years since I have had to litigate the issue of whether the inclusion of a trademark in the domain name for a web site about the trademark holder has Lanham Act ramifications. I rather thought that issue was settled by such cases as Lamparello and Bosley. The final nail in the coffin was the defeat of Wal-Mart in Smith v. Wal-Mart.  But lo and behold, I got request out of the blue for help protecting the website WalMart Is the Devil posted by a dissatisfied former employee, against a claim of trademark infringement, contending that Wal-Mart’s customers might imagine that they could get to Wal-Mart’s own e-commerce site by name-guessing

When we represented Charles Smith in defending his Walocaust parodies, we sought declaratory relief in the Northern District of Georgia, because we were worried about getting hometowned in federal court in Bentonville, and having to litigate a parody case in the Eighth Circuit. (One of Wal-Mart;s lawyers vindicated that strategy, telling me afterward that their client was, in fact, planning to sue in Arkansas).   But the trademark claim in this case is so weak that I expect we could be successful in the Western District of Arkansas if need be.   We have explained to Wal-Mart the error of its ways.

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