WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wal-Mart Stores, Inc. v. Longo
Case No. D2004-0816
1. The Parties
The Complainant is Wal-Mart Stores, Inc., of Bentonville, Arkansas, United States of America, represented by Venable, LLP, United States of America.
The Respondent is Longo, of Paris, France.
2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October�6,�2004. On October�7,�2004, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On October�8,�2004, Network Solutions, LLC 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. The Center has verified that 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�13,�2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November�2,�2004. The Center has certified that the Respondent did not submit any response. Accordingly, the Center notified the Respondent of his default on November�4,�2004.
The Center appointed Joseph Dalby as the sole panelist in this matter on November�16,�2004. 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.
4. Factual Background
The Complainant operates retail department stores in a number of countries, principally in North America, but also South America, Asia and Europe. It has in excess of 4000�outlets worldwide, all trading under the Service mark WAL-MART, or similar variations thereto.
The Complainant can trace use of its Service Mark back to 1962, but in this Complaint relies upon trademarks registered in the US (Registration Number 1,783,039) on July�20,�1993, and in France (No. National 00 3 052 199) on September�18,�2000, copies of which the Complainant has produced.
The Complainant also operates online, and is the incumbent registrant for “”, and “”. The Panel notes that this domain name resolves to a live website advertising and offering for sale products and services commercialized under the registered trademark.
The Respondent is identified as Longo at an address in Paris. This information was obtained from a WHOIS search the Complainant executed prior to declaring its rights over the domain name, and is confirmed by the Registrar of the domain name. No information has been submitted about Longo’s economic or personal activities, or indeed if it refers to an individual or an organization.
The disputed domain name is, at the time of this decision, live and resolves to a web page of indeterminate association, displaying pornographic images and links to pages of similar content.
5. Parties’ Contentions
A. Complainant
The Complainant submits that the disputed domain name constitutes a “classic case of ‘typosquatting’” and is likely to be confused with its distinctive service mark, and its rights therein which are expansive and predate the Respondent’s registration. Typosquatting, it contends, virtually dictates a finding of bad faith. The Complainant points out that although it does not operate any stores in France, travelers to neighboring Germany would be become familiar with the Complainant’s service mark. It adds however that it makes extensive use of the mark in all its activities. The Complainant contends that the Respondent had constructive notice of its trademarks by virtue of the trademark registrations and the wide use of the service mark.
B. Respondent
The Respondent has not, at least within this proceeding, formally replied to the Complainant’s contentions. However, it replied to the Complainant’s initial request to desist with the disputed domain name registration, in an approximate attempt to exploit an apparent failure by the Complainant to register this particular domain name for itself when it became available. It requested payment of a fee in compensation of the time and expertise it took to secure the disputed domain name.
6. Discussion and Findings
The domain name is governed by the Policy, by virtue of the contract between the Registrar and Registrant/Respondent.
The Respondent has been given an adequate opportunity to deal with the allegations against him and it is thus noted that the Respondent has not offered any contentions in rebuttal of the claims and contentions made by the Complainant.
In this matter the Panel finds as follows:
A. Identical or Confusingly Similar
Although the trademark certificates supplied are not certified as identical to the original, in the absence of any challenge from the Respondent, they are deemed to be authentic copies.
The Complainant has proven that it has rights to an established and valid trademark. Other than the addition of “www-” the disputed domain name is identical to the trademarks relied upon. And the additional text does not substantially alter the character and integrity of the domain name to render it any less identical or confusingly similar.
B. Rights or Legitimate Interests
Taking the Complaint in its entirety, the Complainant has satisfactorily demonstrated a prima facie case that the Respondent has no rights to or legitimate interests in the domain name. In default of the Respondent adducing any evidence to rebut this contention, the Complainant has adequately proved this element. If anything, there is an implied admission attributed to the Respondent that it does not have any rights of legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
It is noted that none of the scenarios in paragraph 4(b) of the Policy are made out or relied upon.
Given that the Respondent has failed to adduce any evidence of rights or legitimate interests in the disputed domain name is suggestive of bad faith. Furthermore, whether a registered domain name could be described as an incidence of typosquatting is a question of fact, and the Panel accepts that it is. Such a finding of fact is presumptive of registration in bad faith, and in the absence of any rebuttal, this criterion in made out. Given the fame of the Complainant’s mark, the demand for payment for returning the domain name, when the Respondent has not demonstrated any rights or legitimate interests in the domain name, and the fact that the disputed domain name is connected to a pornographic site from which the Respondent probably derives revenue, the Panel finds use in bad faith.
7. Decision
For all the foregoing reasons, the Panel finds that:
(i) The domain name is identical or confusingly similar to a trademark in which Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the domain name;
(iii) The domain name has been registered and is being used in bad faith;
In accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainant.
Joseph Dalby
Sole Panelist
Date: November�29,�2004
Full & Egal Universal Law Academy