WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wal-Mart Stores, Inc. v. Excel Stock Exchange
Case No. D2002-0966
1. The Parties
The Complainant is Wal-Mart Stores, Inc. of Bentonville, Arkansas, United States of America, represented by Venable, Baetjer, Howard & Civiletti, LLP, United States of America.
The Respondent is Excel Stock Exchange of Westcliff-on-Sea, Essex, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Registrar
The disputed domain names
, and
are registered with R
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 18, 2002. On October 21, 2002, the Center transmitted by email to R a request for registrar verification in connection with the domain name(s) at issue. On October 21, 2002, R transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. On October 22, 2002, the Center issued a notification that the Complaint was administratively deficient, requesting that Complainant confirmed whether the second disputed domain name was or . On October 22, 2002, Complainant filed an amendment to the Complaint confirming that the second disputed domain name was . On October 23, 2002, the Center verified that the Complaint, together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 23, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was November 12, 2002. The Response was filed with the Center on November 11, 2002.
The Center appointed Kiyoshi I. Tsuru as the sole panelist in this matter on December 3, 2002. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Center required the Panel that, in accordance with Paragraph 12 of the Rules, the Panel would exercise its discretion to receive two supplemental filings (one from Complainant dated November 12, 2002, and one from Respondent dated November 13, 2002.) Pursuant to Paragraphs 10 (b), 10 (d) and 12 of the Rules, on December 8, 2002, in order to try to ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case, The Panel asked The Center to provide it with the said communications. Having analyzed the contents of such supplemental filings, The Panel has decided to consider them in deciding this case.
4. Factual Background
Complainant operates retail stores in several countries and owns registrations for the mark in 46 countries, including the United Kingdom. The United Kingdom trademark registrations for the mark WAL-MART include Registration No. 2225251, which covers, among other things, banking services in Class 36, and which was applied for on March 9, 2000, and granted on June 7, 2002. Complainant�s oldest UK trademark registration for the mark WAL-MART was filed on April 30, 1994, and registered on September 1, 1995.
Complainant also owns United States Registration Number 1,783,039, registered on July 20, 1993, for the mark WAL-MART, registration which claims first use of the mark as early as July 1, 1962. The mark has been in use in commerce uninterruptedly ever since.
Complainant has operated retail stores in the United Kingdom since 1999 through its subsidiary, ASDA Stores Limited, and has operated a retail store under the name WAL-MART in the United Kingdom since 2000. Today, Complainant operates 225 retail stores in the United Kingdom. Complainant also operates 1,647 Wal-Mart stores and 1066 Wal-Mart Supercenters, among others, throughout the United States, as well as 648 Wal-Mart stores and 455 Wal-Mart Supercenters outside the United States, in countries such as Argentina, Brazil, Canada, China, Germany, South Korea, Mexico, Puerto Rico and the United Kingdom. Worldwide annual sales in fiscal 2002 were over $217 billion, $35 billion of which were outside the United States.
Respondent registered the disputed domain names on December 2, 1999.
5. Parties� Contentions
A. Complainant
Confusing Similarity
Complainant contends Respondent�s domain name registration, asserting that such registration is likely to be confused with Complainant�s service mark WAL-MART. Complainant states that its rights predate Respondent�s registration of the contended domain names.
Complainant goes on by saying that [t]here is clear similarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. That [t]he second level domain names WALMARTBANK and WAL-MARTBANK are a combination of two words, "WALMART or WAL-MART" and "BANK", and that the latter is merely a generic term. Complainant cites some previous UDRP cases to argue that a domain name consisting of a trademark plus a generic term is confusingly similar to the trademark in question: Wal-Mart Stores, Inc. v. Kenneth E. Crews, August 30, 2000, (domain name was confusingly similar to "well-known �Wal-Mart�" trademark), WIPO Case No. D2000-0580, Nokia Corporation v. N a.k.a IBCC, WIPO Case No. D2000-0102 April 18, 2000, (domain name was confusingly similar to NOKIA; addition of "general noun, girls [was] indeed a rather neutral addition to this trademark."), Louis Vuitton Malletier v. Enrico Villa, WIPO Case No. D2000-0721, October 13, 2000, (domain name was found to be confusingly similar to the trademark "Louis Vuitton") and Heineken Brouwerijen B.V. v. Mark Lott, WIPO Case No. D2000-1487, January 30, 2001, (domain name was confusingly similar to trademark HEINEKEN; citing other similar cases)
Complainant argues that the WAL-MART mark is famous, based on its continuous use in commerce since at least 1962, the vast number of stores that it operates worldwide and its sales figures (see point 4 supra). Complainant also supports its claim to a famous mark alleging that it makes extensive use thereof and that it advertises the mark extensively, the Internet being a significant vehicle for Complainant. In this regard, Complainant finally states that [b]ecause of its ownership of the well-known UK retail chain ASDA, as well as its position as the World�s largest retailer, Wal-Mart is well-known in the United Kingdom.
Complainant states that it provides banking services within Wal-Mart Supercenters and that consumers are likely to look for information about Wal-Mart�s banking services under the disputed domain names.
Respondent�s lack of rights or legitimate interests in respect of the domain name
Complainant asserts that, to the best of its knowledge, Respondent has no rights to any trademark consisting of the terms "WAL-MART" in any country; that Respondent has the intent, for commercial gain, to misleadingly divert Complainant�s consumers to its website or to disrupt complainant�s business, that Respondent does not have legitimate rights to the contested domain names and that Respondent does not appear to be making any legitimate use of these domain names.
Bad faith registration and use
Complainant asserts that Respondent registered the disputed domain names with knowledge that Complainant held rights in and to its WAL-MART mark, and that Respondent had constructive notice of Complainant�s trademark rights by virtue of (a) Complainant�s trademark registrations in the United States and the United Kingdom, as well as in many other countries; and (b) Complainant�s use of a trademark registration symbol when referencing the mark in print advertising and on its websites located at "", "", and "", and Wal-Mart�s use of the mark in The United States, the United Kingdom, and elsewhere. That [t]he domain names were registered shortly after Wal-Mart began UK operations (Complainant provided some evidence showing UK press reports regarding the merger, released two or three days prior to Respondent�s registration date).
Complainant states that Respondent did not reply to Complainant�s Cease and Desist letter, sent on September 12 and 13, 2002, a copy of which was provided with the Complaint.
Complainant alleges that Respondent acquired the disputed domain names in bad faith, primarily for the purpose of diverting Complainant�s customers to Respondent�s site or disrupting Complainant's business by preventing Complainant from using the domain name for its own business. Complainant concludes that [s]ince Wal-Mart does offer banking services by hosting banks within Wal-Mart Supercenters, Respondent must have intended to register these domain names in anticipation that Wal-Mart would need them, and that Respondent�s registration of these domain names creates a strong likelihood of confusion with Complainant�s mark Wal-Mart in the marketplace.
B. Respondent
Respondent does not contend the existence of Complainant�s "Wal-Mart" trademark.
Respondent states that he knows of no single Wal-Mart store in the United Kingdom (UK), but presumes the existence of one such store, based on Complainant�s assertion. He states that Complainant has neglected to mention its location and the date it commenced trading.
Confusing Similarity
Respondent argues that the disputed domain names are not identical to Complainant�s marks. That [i]f deemed �confusingly similar�, then every trademark holder would have a virtual monopoly.
Respondent states that [t]he Complainant has no registration of Trademark of walmartbank or wal-mart bank and certainly not when the Respondent registered them on December 2, 1999; that in his opinion, [o]wnership of a Trademark does not confer ownership of all variations unless obvious and harmful (to the core business) activity is taking place (such as a pornogpraphic site, an alternative supermarket site or a domain pointing to a competitor.) He cites SBC Communications Inc. v. eWorldWideWeb, Inc., WIPO Case No. D2002-0608, October 7, 2002, as a means to argue that no one has exclusive rights to common or descriptive terms. He states that two associates of [him], Mr Clive Walter, an energy consultant and Mr Peter Martin, an engineer, should quite legitimately be able to trade as "Wal(ter)-Mart(in) Associates, "Walmart Associates" or even "Wal-Martbank", or "Walmartbank", if they decided to open a website that was a financial bank, a recycling bank, a charitable or foundation bank or even a bloodbank or spermbank.
In Respondent�s opinion, [t]he principle here should be that a trademark should cover only the specific name and that only blatant abuses that confer obvious damage or hurt should be considered in any legal argument regarding variations on that trademark.
Respondent continues by saying that [e]ven if the Complainant's trademark mentions banking services this does not allow them to usurp retrospectively the word "bank", when they have previously made no visible claim to such; that [n]ot only is there no "Wal-Mart" or "Walmart" Banks currently operated by the Complainant, there are also no "Mal-Mart Stores" in the UK, excepting, allegedly, the one cited by the Complainant.
Respondent states that he would display a sizeable disclaimer if the site were opened, should there be the slightest possibility or hint of confusion, by virtue of the websites modus operandi. He suggests that [a]t this stage, neither the Complainant nor the Respondent are actually running an organisation named "Walmart" or "Wal-Mart" Bank, and the website is dormant.
Respondent�s rights or legitimate interests in respect of the domain name
Respondent asserts that he definitively has rights and/or legitimate interests in the contended domain names, that [h]e has traded domain titles, normally non-contentious, for three years to date and ensures not one but 12 potential legitimate uses for a site, before purchasing, in order to maximise its future potential.
Respondent analogizes the practice of registering domain names to the �futures� markets and suggests that Respondent may be a �Futures� trader. In explaining his vision, he describes himself: Maybe [I] glimpsed a future whereby a few big multi-nationals would abuse their positions to create instant banking conglomerates by virtue of unlimited marketing budgets and an annual through traffic in their stores of billions. He argues free speech elements and cites as an example the domain name , which resolves to an activist site run by Greenpeace to prevent environmental problems. Respondent further states that the disputed domain names could therefore legitimately be set up to "Bank" complainants against a perceived bullying, dominating and aggressive multi-national corporation.
Respondent offered one more analogy to his practice of registering domain names, by comparing it to the Great Gold Rush in the USA itself, in that after research and a little digging around, prospectors would stake their claim. The same applies in real estate and so it should in virtual estate. Respondent concludes: Perhaps the Respondent envisaged the day [the domain names] might be worth something and brought [them] as a potential investment.
Respondent goes on by saying: My presumption is that the Complainant may well now actually be opening their own bank and now wish to retrospectively claim any titles they can in order to fulfill this new found ambition. If America really wishes the rest of the world to believe it is offering a level playing field then I must have the same right to play �Futures� as the commodity, shares and spread traders that are so profligate in the USA.
Bad faith registration and use
Respondent denies that the disputed domain names were registered and used in bad faith, because Respondent has not opened or operated any website that uses such domain names.
Respondent suggests, inter alia, the following allegedly legitimate uses for the contested domain names:
a) Collection of Walmart advertising and memorabilia to illustrate the rise of a grocer to a multi national banking corporation.
b) Online monitoring and comparison service for new supermarket banking groups who are suddenly springing to life.
c) Resource centre, supplying referenced factual information on the Complainant for facilitating the vast numbers of individuals who appear to be in legal situations with the Complainants.
Respondent alleges that the domain name has been registered by National Bank of Houston, Texas, since December 2, 1999, and thus questions the true motivation of Complainant, in filing this Complaint.
Respondent argues: The correct protocol [�] should be to offer to purchase for the perceived market value at that time, just like any other piece of real estate.
A.1 Complainant�s Supplemental Filing
In its supplemental filing, Complainant argues the following:
1. That Respondent is a professional, or semi-professional trader in domain names; that Respondent admits in his Response that some of these "trades" have indeed been contentious, and that this implies that there has been a pattern of registering domain names that infringed the rights of other parties (arguing that Respondent has also registered and ).
2. That Respondent admits that he hoped to gain financially by registering the disputed names. Complainant made reference to Respondent�s likening of domain name registration processes to the Great Gold Rush.
3. That Respondent admits that he was aware of Complainant�s rights in its mark in the United States as well as in the UK
4. That Respondent has no free speech rights to the disputed domain names when he has never used such names for such a purpose in the past. Complainant cited Paul Barnett Puckett, Individually and d/b/a Nature�s Window v. Christopher D. Miller, WIPO Case No. D2000-0297, June 12, 2000, (Respondent�s claim of free speech rejected when respondent put content relating to free speech on website only after notification of dispute.)
5. That Respondent has now offered to "negotiate" with complainant about the domain names, presumably for a profit; because he offered Complainant the opportunity to "negotiate" to buy this name.
6. That Respondent�s use of false contact information and different aliases further suggest that he is a deliberate cybersquatter
7. That Respondent�s registration of the domain names and other circumstances of the case are enough to establish passive bad-faith use under the UDRP guidelines (citing some precedents regarding "passive holding": Wal-Mart Stores, Inc. vs. Su Rong Ye, WIPO Case No. D2002-0771, October 17, 2002, citing in turn Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2002-0003, February 18, 2000.)
B.1 Respondent�s supplemental filing
Respondent replied to Complainant�s supplemental filing, as follows:
1. That by normally non contentious, [he means] where there has been no complaint. That he and his former partners purchased around 300 domains. That a couple [domains] have proved to be slightly contentious.
2. That he has 12 possible uses assigned to the disputed names, among which the trade in futures is only one. Respondent further stated:
The names are not confusingly similar. Either the Complainant is a bank or it aint ! And it certainly wasn�t three years ago. No way no how. And when I go down the High Street I NEVER walk into my bank to buy tinned food and neither do I conduct foreign exchange at the supermarket. They are not confusingly similar to any sane man.
3. That he does NOT admit that he was aware of any rights whatsoever with regard to the Complainant; that he merely suggested that he COULD be a virulent capitalist watching US culture; that nowhere has he admitted that he specifically knows or knew of any of the Complainant�s activities.
4. That his contention that he can use domains at a later date is a free speech
defense. Respondent suggests that he is entitled to open "".
5. That Respondent has now offered to negotiate
6. That he has not used false information or aliases. That he moved and left the address the domains were registered at; that the address WAS correct on registration; that EXCEL STOCK EXCAHANGE was registered in 1993 at the Secretary of States Office for the Department of Trade and Industry and thus is not a pseudonym.
7. That Complainant has proved NO circumstance whereby passive bad faith is proven.
6. Discussion and Findings
In accordance with the Policy, Paragraph 4(a), the Complainant must prove that:
"(i) the domain name in question is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name, and
(iii) the domain name has been registered and is being used in bad faith."
In the administrative proceeding, the Complainant must prove that each three of these elements are present.
A. Identical or Confusingly Similar
The domain names , and are confusingly similar to Complainant�s trademark "Wal-Mart." Previous decisions rendered in accordance with the Policy state that "Wal-Mart" is a famous mark (see e.g.
Wal-Mart Stores, Inc. v. Instant Ads, LLC, WIPO Case No. D2001-0323, April 26, 2001; Wal-Mart Stores, Inc. v. James Cann and Save Family Businesses Panel, WIPO Case No. D2000-0830, October 11, 2000, Wal-Mart Stores, Inc. v. Kenneth E. Crews, Case No. D2000-0580, August 30, 2000)
Complainant has provided extensive evidence showing that it has trademark rights over the mark "Wal Mart."
The disputed domain names consist of Complainant�s protected trademark, plus the addition of the generic term "BANK".
Numerous Policy decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is confusingly similar to a registered trademark, e.g. Wal-Mart Stores, Inc. v. Kenneth E. Crews, August 30, 2000, (domain name was confusingly similar to "well-known �Wal-Mart�" trademark), WIPO Case No. D2000-0580, Nokia Corporation v. N, WIPO case No. D2000-0102 April 18, 2000, (domain name was confusingly similar to NOKIA; addition of "general noun, girls [was] indeed a rather neutral addition to this trademark."), Louis Vuitton Malletier v. Enrico Villa, WIPO case No. D2000-0721, October 13, 2000, (domain name was found to be confusingly similar to the trademark "Louis Vuitton") and Heineken Brouwerijen B.V. v. Mark Lott, WIPO case No. D2000-1487, January 30, 2001, (domain name was confusingly similar to trademark HEINEKEN; citing other similar cases)
The other slight difference would be the deletion of a hyphen between "Wal" and "Mart" in the domain name , which is irrelevant. Wal-Mart Stores, Inc. vs. Su Rong Ye, WIPO Case No. D2002-0771 October 17, 2002.
The Panel coincides with those preceding Panels who have ruled, mutatis mutandis, that persons coming across the website [resolving to , and/or ] might well conclude that [they are] owned by or associated with the Complainant as the owner of the famous WAL-MART mark, Wal-Mart Stores, Inc. v. Peter Carrington, WIPO Case No. D2002-0846, October 31, 2002; or that [p]ersons dealing with, or even perusing the website of [, and/or ] could easily conclude that the registrant of the domain name was associated with Wal-Mart�s operation[�] Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628, August 11, 2000.
SBC Communications Inc. v. eWorldWideWeb, Inc., WIPO case No. D2002-0608, October 7, 2002, cited by Respondent to assert that that no one has exclusive rights to common or descriptive terms, is not applicable to this case, precisely because SBC Communications states that Respondent, and anyone else, has a legitimate right to register (and keep) any common descriptive term that is used in a generic sense as part of a domain name �i.e. to resolve to a website featuring goods or services which the name describes, for example, or [emphasis added]. "Wal-Mart" is certainly not a common descriptive term in English and it is not used in a generic sense. The domain name could be used freely without the risk of generating confusion regarding the trademark "Wal-Mart", but the same cannot be said of , and/or .
Respondent�s assertion that Mr. Clive Walter, an energy consultant and Mr Peter Martin, an engineer, should quite legitimately be able to trade as "Wal(ter)-Mart(in) Associates, "Walmart Associates" or even "Wal-Martbank", or "Walmartbank" is not correct, because in the case at hand the union of a protected trademark (especially if this trademark is famous like "Wal-Mart") with a generic term could create confusion among the relevant consuming public.
Therefore, the Panel has reached the conclusion that Complainant has proved the first element of the Policy.
B. Rights or Legitimate Interests
Respondent has provided no evidence showing trademark rights anywhere in the world. He has not proved rights to the name "Wal-Mart" or any variations thereof.
The Panel will briefly analyze Respondent�s claims to legitimate interests in the contested domain names:
1. Domain name trading. The practice of buying, selling or exchanging domain names that are normally non-contentious, does not grant the trader rights or legitimate interests per se. Such a practice does not fall within Section 4(c)(1) of the Policy (bona fide offering of goods or services), especially if the domain name offered includes a famous trademark protected by a third party. Respondent knew or must have known of the existence of this mark, due to its use since at least 1962, its advertisement and the US and UK trademark registrations held by Complainant (see point 5 A supra).
2. �Futures� trading. The registration of a domain name that includes a trademark of another, for the purpose of obtaining a financial gain in the future (similarly to how it happens in the �futures� market) cannot be considered to grant legitimate rights over that domain name either.
3. Environmental activism. Unlike Greenpeace, who selected a domain name that conveys the idea of activism against a specific corporation: and who maintains a site relating thereto, filled with eco-activism, Respondent did not register domain names that are related to the environment, nor associated the contested domain names to any kind of environmental activism.
4. Free speech. Respondent mentions some printed statements made by third parties against Complainant, which are protected under free speech principles. The Panel, however, finds it difficult to see analogies between titles such as �Studies by the National Labour Committee and an NBC Dateline expose finds Wal-Mart to be the worst corporate exploiter of Third World labour in America!� and the domain names , or . These domain names do not convey a political, humanitarian or protest message. They do not transmit the idea of criticism. Considering that they were inactive as of the date of Complainant�s filing of the Complaint that originated this procedure, we can assure that they are not related to any kind of content protected by free speech principles. Respondent himself has thought of a criticism domain name: . (see point 5 A.1 supra). There is a difference between this hypothetical name conceived by Respondent, and the disputed domain names.
5. Gold Rush. Respondent suggests that the same rules that applied in the Gold Rush are valid in real estate and should be extended to virtual state. Respondent mentions that perhaps he envisioned the day his domains might be worth something and brought them as a potential investment (see point 5 B supra). The Panel believes that the problem in this analogy is the risk of staking a claim relating to the intellectual property of a bona fide third party. If Respondent envisioned a rise in the price of the contested domain names, such a rise must have been calculated based on Complainant�s fame and recognition.
In light of the above mentioned reasons, the Panel finds that there is no evidence showing that 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, that Respondent has not been commonly known by the contested domain names or that Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant�s trademark (Rules, paragraph 4 (c)), and thus, this Panel concludes that Respondent has no legitimate rights or interests to the disputed domain names
C. Registered and Used in Bad Faith
As stated before (see point 6B1 supra), given Complainant�s continuous use of the mark "Wal-Mart" in commerce since at least 1962, the vast number of stores that it operates worldwide and its sales figures (see point 4 supra), Complainant�s also extensive use of the said mark and Complainant�s trademark registrations in the US, the UK and many other nations, Respondent knew or should have known of the existence of Complainant�s mark "Wal-Mart". This leads the Panel to conclude that the contested domain names were registered in bad faith.
Respondent suggests that he would carry into effect some uses that could be non-infringing (collection of Walmart memorabilia, Online monitoring and comparison service for supermarket banking groups or a resource center for supplying factual information on Complainant for facilitating individuals who appear to be in legal issues with Complainant). However, the Panel concludes that the disputed domain names are not closely related to these activities; that no such uses have been put to practice until now; that Respondent has shown more interest in the investment part of these domains, that the fame, recognition and exposure of the mark "Wal-Mart" in the US, UK and more than 40 other countries of the world is such, that even these uses associated to the contested domain names could cause confusion among the relevant consuming public.
Respondent has constantly referred to profits derived from the disputed domain names. Reference has been made to concepts such as domain name trading, �futures� trading and Gold Rush (see point 6B supra); these types of profits are usually many times higher than the initial investment; Respondent has also stated that [t]he correct protocol in such circumstances should be to offer to purchase for the perceived market value at that time, just like any other piece of real estate (Response at 18). These statements, along with the fact that the mark "Wal-Mart" is famous and is not a common word from the English language, but a valuable source identifier, lead the Panel to conclude that there are circumstances indicating that Respondent has registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring them to Complainant or to a competitor of Complainant, for valuable consideration in excess of his documented out-of-pocket costs directly related to the domain names (Paragraph 4 b(1), Policy). Paragraph 4 b of the Policy clearly establishes that such circumstances shall be evidence of the registration and use (see World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001, January 14, 2000)
For the foregoing reasons, the Panel finds that the disputed domain names have been registered and used in bad faith.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names,
and be transferred to the Complainant
Kiyoshi I. Tsuru
Sole Panelist
Dated: December 17, 2002
Full & Egal Universal Law Academy