WIPO Domain Name Decision D2000-0150 for walmartcanada.com

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Wal-Mart Stores, Inc. v. Walmarket Canada

Case No. D2000-0150

 

1. The Parties

The Complainant is Wal-Mart Stores, Inc., a United States corporation with its headquarters in Bentonville, Arkansas.

The Respondent is Walmarket Canada, of 134/5 Phayathai Road, Bangkok, 10400, Thailand. The Response was filed by Mr. Kenneth J Harvey who identifies himself as "the president of Walmarket Canada". No street address is given for him, but the telephone number supplied bears the area code for the province of Newfoundland, Labrador, Canada.

 

2. The Domain Name and Registrar

The domain name at issue is . The domain name is registered with inc., 578 5th Avenue, 11th Floor, New York, NY 10018, United States of America ("the Registrar").

 

3. Procedural History

The Complaint submitted by Wal-Mart Stores, Inc. was received on March 10, 2000 (electronic version) and March 13, 2000 (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center"). An amendment to the Complaint was received by WIPO Center in various forms of communication on March 22-24, 2000.

On or about March 16, 2000 a request for Registrar verification was transmitted by WIPO Center to the Registrar, requesting it to:

(a) Confirm that a copy of the Complaint had been sent to it by the Complainant as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy, paragraph 4(a).

(b) Confirm that the domain name at issue is registered with , inc.

(c) Confirm that the person identified as the Respondent is the current registrant of the domain name.

(d) Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrar�s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact for the domain name.

(e) Confirm that the Uniform Domain Name Dispute Resolution Policy was in effect.

(f) Indicate the current status of the domain name.

By emails dated March 17 and 20, 2000, the Registrar advised WIPO Center as follows:

(a) had received a copy of the Complaint from the Complainant.

(b) is the Registrar of the domain name registration which was created on February 3, 2000.

(c) Walmarket Canada is the current registrant of the said domain name. Its relevant WHOIS information is shown as follows:

Organisation:

Walmarket Canada
134/5 Phayathai Road
Bangkok, 10400
Thailand

Administrative Contact:

Kenneth Harvey k.jharvey@the
Phone: (709) 528 1996

Technical and Zone Contact:Internic, Registrar
internic-free@
Phone: (212) 594 9880

(d) The Uniform Dispute Resolution Policy is applicable to the domain name.

(e) The domain name registration is in "Active" status.

The Registrar has adopted the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").

The Respondent has never requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate his agreement with . The Respondent is accordingly bound by the provisions of the Domain Name Dispute Resolution Policy, i.e., the ICANN policy.

Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, WIPO Center, on March 24, 2000, transmitted by post/courier, facsimile and email a notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to the Registrar and ICANN.

The Complainant elected to have its Complaint resolved by a single panel member: it has duly paid the amount required of it to WIPO Center.

The Respondent was advised that a Response to the Complaint was required within 20 calendar days (i.e., by April 12, 2000). He was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email.

On April 10, 2000, the Respondent, through Mr. Harvey, filed a Response in hard-copy only. On April 10, 2000, the WIPO Center notified certain deficiencies in the Response. The Response and an Amendment to Response were emailed to WIPO Center on April 12, 2000.

On April 13, 2000, WIPO Center invited the Honourable Sir Ian Barker QC of Auckland, New Zealand, to serve as sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.

On April 13, 2000, the Honourable Sir Ian Barker QC advised his acceptance and forwarded to WIPO Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplementary Rules.

On April 17, 2000, WIPO Center forwarded to the Honourable Sir Ian Barker QC by courier the relevant submissions and the record. These were received by him on April 26, 2000. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by April 30, 2000. In the circumstances of delays caused by the Easter holidays and the requirements for additional pleadings, the Panel�s decision is unlikely to be available before May 4, 2000.

On April 17, 2000, the Panelist advised WIPO Center pursuant to Rule 12 that he required a Reply to the Response from the Complainant by April 20, 2000. This reply was received by the Panelist on April 20, 2000.

On April 17, 2000, the Respondent complained that he should be given the right to reply to the Complainant�s Reply. The Panel requested WIPO Center to inform the Respondent that a reply to a reply is not normally permitted. In accordance with standard litigation and arbitration practice, a Complainant is normally permitted to reply to fresh matters raised in a Response. The Respondent was given until April 26, 2000 within which to file any submission on any matters in the Reply which was genuinely new and not covered earlier in his Response. This further material was received by the Panel on April 25, 2000.

The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").

The language of the administrative proceeding is English, being the language of the registration agreement.

 

4. Factual Background

The Complainant operates stores throughout the United States, employing some 600,000 workers. It also has 144 stores in Canada and lesser numbers in Puerto Rico, Mexico, Brazil, Argentina, China, United Kingdom, Korea, Indonesia and Germany. Its stores are discount retail stores, grocery stores, pharmacies, membership warehouse clubs and deep discount warehouse outlets.

The Complainant holds registrations for the mark for use in retail department stores in the United States and Canada. The registration is on the basis that the mark was known in Canada as early as 1965. It also holds registrations for the mark in 46 countries, including Thailand, the United Kingdom and the People�s Republic of China. The Thailand registration is Number SM3711, registered November 24, 1995, and is for retail department store services. The mark has been in continuous use in the United States since 1962 and is used in the Complainant�s extensive advertising of its services and merchandise on television, websites, etc. For example, amongst its Internet addresses are , and .

The Respondent has no rights granted by the Complainant in any of the marks involving the word "Wal-Mart".

The Respondent claims to wish to use the domain name to promote the sale in Thailand of wall fixtures, including clocks, paintings, picture frames and general wall products. These items are offered for sale by the Complainant in its stores and websites, amongst a whole host of other products.

The Respondent registered the domain name on February 3, 2000. Two days later, he sent a message to the Complaint:

"This is to let you know that www.WalMartC, http:\\www.WalMartC is up for auction at GreatD. I am the owner. Perhaps certain executives within your company might be interested in purchasing it. Thanks for passing this along to the appropriate individuals. Kindest regards, Kenneth J. Harvey."

The Complainant subsequently found the domain name listed for sale on the Great Domains website, with an asking price of $5 million. The Complainant did not solicit this offer to sell by the Respondent.

On February 16, 2000 the Complainant sent the Respondent a "cease and desist" letter. The Respondent removed the name from the Great Domains website and stated in his email to the Complainant of February 22, 2000 that the listing for sale was "the punch line of a joke bet upon by one of my staff members". The staff member was said to have been disciplined. In this email, the Respondent assured the Complainant that would never be used in Canada or the United States to promote the goods and services of Walmarket Canada.

In his Response, the Respondent stated that it was after he had received the "cease and desist" letter that he reviewed the ICANN Rules, halted attempts to sell and "decided to develop the site as an allowable business concern".

 

5. Parties� Contentions

The Complainant submits that its mark is well-known throughout the United States and all those other countries in which it trades. The mark would also be known to all persons, not necessarily from those countries, who may have shopped at a Wal-Mart store when visiting one of the countries where Wal-Mart stores are established. It submits that the Respondent has no legitimate rights to use the name , even if he plans to develop a business selling wall fixtures etc. in Thailand, as he claims is his intention. The fact that the Respondent may have purchased the domain name is a factor of no significance if its use contravenes the rights of the Complainant.

The Complainant further submits that the domain name was registered and is used in bad faith. Improper use of the name is shown by the Respondent�s attempt (later withdrawn) to sell the name through the Great Domains websites for $5 million. The Complainant claims that the Respondent�s response to the "cease and desist" letter of the Complainant (i.e., his email of February 22, 2000) is "disingenuous, confrontational and threatening". The Respondent threatened to transfer ownership of the domain name to a partner in another country where the Complainant does not have a trademark "in good faith to avoid trademark altercations". He threatened to initiate court proceedings in Thailand to block the transfer, should the Panel decide in the Complainant�s favour, although he claimed that his attorney was checking Thai trademark registrations. The Complainant submits that, in a final display of bad faith, the Respondent threatened that "any action taken against would be a major public relations blunder on the part of Wal-Mart". The Complainant further submits that the name is confusingly similar to "Wal-Mart" and creates a strong likelihood of confusion in the market place.

In his Response, the Respondent stresses his career as an author, journalist and editor in Canada to show that he has an extensive history of legitimate business concerns. His claim is that when he discovered that the domain name was not registered, he purchased it: from whom and for what consideration is not advised. He says that no prompt had appeared during the online purchase process, indicating that the Respondent had no right to the name. He claimed that shortly after purchasing the domain name, he sent an email to the Complainant to determine if it were interested in buying the domain name in question which name he viewed as his rightful piece of property.

On receipt of the "cease and desist" letter from the Complainant, the Respondent immediately removed the sale listing and looked at the ICANN Rules to discover that he was not permitted to buy a domain name for the purpose of selling it at a profit. He claimed that he sought investors interested in developing this piece of Internet "real estate property" and secured investors in England, Thailand and China. He claims that is a piece of "cyber-real estate" for which he has paid and which property he will protect against "distressing attempts by a third party to divest him of it by any means available through court challenges". He claims that the WIPO process appears "biased and centered on unwarrantable rights of the Complainant". He asserted his compliance with Rule 4(c)(i) of the Rules in that "Walmarket Canada" had "demonstrable preparations of use" of the domain name before notice of dispute had been received.

He claimed that the Complainant�s representative was guilty of coercion by writing to him on March 13, 2000 asking if he had a number to put forward. He claimed that he did not want to make an offer because he was not interested in selling the site, but for developing it for Walmarket Canada, which he says will be "up and running by May 30, 2000". He said that wholesalers are being secured and money is being invested in web design and programming, stock accumulation and overseas promotion, particularly in Thailand and in other countries where the Complainant does not have a recognisable profile. No detail was provided of these latter assertions.

The Complainant in Reply submitted that it is not trying to prevent the Respondent from selling wall products, lighting fixtures etc. over the Internet in Thailand or anywhere else, but simply that the Respondent has no rights or legitimate interests in respect of the domain name . The Complainant asserts that Thailand trademark legislation provides (as do most trademark statutes) for the rejection of applications for registration of marks that are identical or confusingly similar with another trademark already registered, such as the Complainant�s mark listed in Thailand.

The Respondent states that he now wishes to change his business name to WalMartC, which the Complainant characterises as an attempt to interfere with the Complainant�s online identity and brand, rather than an example of a legitimate business activity.

In his comment to the Complainant�s Reply, the Respondent alleged that the Complainant has no retail presence in Thailand and that "to the people of Thailand, Wal-Mart�s name is as foreign as the notion of falling snow". He repeated his claim that he is not acting in bad faith and that he has a legitimate right to use the domain name.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".

The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:

(a) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

(b) That the Respondent has no rights or legitimate interests in respect of the domain name.

(c) The domain name has been registered and used in bad faith.

In the Panel�s view, the domain name is confusingly similar to the Complainant�s trademarks registered in the USA, Canada and Thailand and other countries . The Complainant has a reputation for this name for a convenience store. This reputation is well-recognised in the United States and Canada particularly, but in many other countries also. Applying the usual tests under trademark law and passing-off law, the Panel decides that the domain name is confusingly similar. Persons dealing with, or even perusing the website of, could easily conclude that the registrant of the domain name was associated with the Wal-Mart operation in Canada. Nor is it any excuse to say that the Complainant does not trade in Thailand. It owns a registered trademark in that country which it is entitled to use. It is entitled to the benefit of registration unless and until the Thailand authorities revoke the registration, which is not likely to occur until after a judicial hearing. It would be difficult to imagine that any Court would uphold the use of a name confusingly similar to a registered mark where that name had first been used some 4 years after the registration of the mark.

Paragraph 4(c) of the Policy shows how a Respondent can demonstrate rights or interest in the domain name at issue. Whilst the overall onus of proof rests on a Complainant, nevertheless failure by a Respondent to demonstrate that he comes within paragraph 4(c) can assist the Panel in deciding whether on consideration of all the evidence a Complainant has discharged the onus of proof. The following circumstances in particular, but without limitation, if found by the Panel to be proved, demonstrate rights or legitimate interests in the domain name at issue.

"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

The Panel finds that there is no evidence that the Respondent, before receiving notice of the dispute, used or demonstrably prepared to use the domain name in connection with a bona fide offering of services. In fact, the Respondent admits that it was only after receiving the "cease and desist" letter that he turned his mind to developing the site for the sale of wall products etc. That letter must surely be "any notice to you of the dispute". "Demonstrable preparations to use the domain name" (if any) occurred after the notice. Nor is there any real evidence of demonstrable preparations.

No names are given of the companies in England, China or Thailand said to be interested in developing the site. No detail is given of their financial commitment to the project or of their experience in retailing wall fixtures etc on the Internet. No particulars are given of either possible wholesalers or of the money allegedly invested in web design and programming, stock accumulation and overseas promotion.

Nor has the Respondent ever been commonly known by the domain name. Nor is the Respondent making any legitimate non-commercial or fair use of the domain name without intent for commercial gain misleadingly to divert customers or to tarnish the mark at issue. The Respondent�s conduct about selling and auctioning the domain name suggests otherwise. It is no excuse to say that the attempt to sell for $5 million was the work of an unauthorized employee. The email bore the Respondent�s signature.

The Respondent has no licence or other legal right in respect of the domain name, unless his usage is permitted at law. The Panel therefore decides that the Respondent has no rights or legitimate interests in respect of the domain name.

Paragraph 4(b)(iii) and (iv) of the ICANN policy document, on which the Complainant relies, states:

"the following circumstances � shall be evidence of the registration and use of the domain name in bad faith:

(iii) You have registered the domain name primarily for disrupting the business of a competitor.

(iv) By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line locations, by creating a likelihood of confusion with the complainant�s mark as to the source, sponsorship, affiliation or endorsement of your website or location or of a product or service on your website or location."

Despite all the protestations of the Respondent, the fact is that he did endeavour to sell this name for $5 million. The fact of soliciting the sale and placing the domain name on the Internet for sale has been regarded in a number of WIPO cases as being evidence of abuse and bad faith. Moreover, the fact that the Respondent intends to develop a confusingly similarly-named business in Thailand, where the Complainant has a registered mark, is also indicative of bad faith. One would have thought that his normal prudent course would have been to obtain a search in Thailand which should readily have indicated the confusing similarity of the domain name to marks owned by the Complainant.

The Internet is a worldwide institution and persons accessing any website can come from any country. It must be assumed that some hits on the Respondent�s website could come from persons living in those many countries where there is a registered Wal-Mart mark. These persons could easily have had dealings with the Complainant�s stores or the Complainant�s websites for on-line shopping. They could easily conclude that the domain site had something to do with the Complainant�s Canadian operations. Geographical destinations can be irrelevant to users of the Internet. Search engines seek only the name.

The Panel accordingly determines that the Respondent has registered and used the Complainant�s mark in bad faith.

 

7. Principles of Law Applicable

It is legitimate under paragraph 15(a) of the Rules that the Panel should look at principles of law deemed applicable. Since the Respondent appears to be domiciled in Canada, any legal action would have to be taken against him in that country. If the Respondent is to operate in Thailand, then action could be taken there. The Panel has not had cited to it decisions of Superior Courts in Thailand or Canada. Principles of law set out in decisions of Courts in the United States and the United Kingdom in similar cases could easily be of assistance to Canadian or Thai courts. The law protecting intellectual property, whilst admitting of local differences, is often quite similar, given the various international treaties on intellectual property.

The legal position in England on domain names of confusingly similar wording to registered trademarks was discussed by the Court of Appeal in British Telecommunications Plc and Others v One in a Million Ltd and Others [1999] 1 WLR 903. The Court there was dealing with domain names identical or confusingly similar to registered trademarks where the domain name holders had tried to sell the names to the trademark owners. This is the situation envisaged by paragraph 4(a)(i) of the Rules.

The English position is similar to that taken in other common law jurisdictions. In the United States there are cases noted by Panelists in other WIPO Center decisions, such as Panavision International LP v Toeppen 141 F.3d. 1315 (9th Cir. 1998).

The Respondent�s suggestion that he would not offer goods and services through the domain name other than in Thailand is just not practical. First, any such undertaking could not sensibly be policed. Secondly, persons in the United States, Canada and indeed anywhere, could access the site and think that the use of the name involved some endorsement by the Complainant or its Canadian operation. Besides, the Panel has no jurisdiction to make an order along these lines. The Panel�s jurisdiction under paragraph 4(i) of the Rules is limited to requiring either the cancellation of a domain name or the transfer of registration to a complainant.

The Panel has determined that, under the Policy, the Complainant has proved its case. Accordingly, the Complainant is entitled to the limited relief which this Panel is empowered to give. The Panel�s decision is based primarily on the terms of the Policy cited earlier.

 

8. Decision

For the foregoing reasons, the Panel decides:

a. that the domain name registered by the Respondent is identical or confusingly similar to the trademark to which the Complainant has rights;

b. that the Respondent has no rights or legitimate interests in respect of the domain name; and

c. the Respondent�s domain name has been registered and is being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name be transferred to the Complainant.

 

 

Hon Sir Ian Barker QC
Presiding Panelist

Date: May 2, 2000

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