WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Wal-Mart Stores, Inc. v. Po Ser Case No. D2009-1450 1. The Parties
The Complainant is Wal-Mart Stores, Inc. of Arkansas, United States of America, represented by Greenberg Traurig, LLP of United States of America.
The Respondent is Po Ser of Shanghai, the People's Republic of China. 2. The Domain Names and Registrars
The disputed domain names and
are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2009. On October 28, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain names. On October 29, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 30, 2009. 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” or “UDRP”), 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 November 2, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 22, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 23, 2009.
The Center appointed Geert Glas as the sole panelist in this matter on November 26, 2009. 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
Since the Respondent failed to Reply to the Complainants contentions, the Panel accepts as true the factual background as set out by the Complainant.
The Complainant is a United States based retail company, offering products and services, both online and via retail stores, in the apparel, food, electronics, toys, sports, fitness, books, music, furniture, pharmacy, home products, automotive, financial and other industries.
The Complainant is the owner of several trademark registrations in the famous marks WAL-MART and WALMART, for retail and other services in several countries. Its trademark registrations include: (i) U.S. registration No. 1,322,750, registered on February 26, 1985; (ii) U.S. registration No. 1,783,039, registered July 20, 1993; (iii) U.S. registration No. 2,891,003, registered October 5, 2004; and (iv) U.S. registration No. 3,612,345, registered on April 28, 2009 (Annex 3 to the Complainant).
The Complainant also incorporates the WAL-MART and WALMART marks as well as variations thereof in the domain names and website content for its websites located at ““, ““, “” and ““ (Annex 4 to the Complainant).
On September 4, 2009 the Respondent, a China based company, registered the disputed domain name “. On September 26, 2009 the Respondent registered the disputed domain name
.
The disputed domain names give access to webpages where links to various other websites are provided under such headings as “bargain shopping”, “clothes shopping” or “Walmart gift cards”. None of these links seem to relate to Complainant's websites. 5. Parties' Contentions A. Complainant
By its Complaint of October 27, 2009 and its amended Complaint of October 30, 2009, the Complainant requests for the transfer of the disputed domain names as it asserts that the three cumulative requirements of paragraph 4(a) of the Policy have been satisfied:
a) The disputed domain names are confusingly similar to the WAL-MART marks as (i) they incorporate in their entirety Complainant's well-known and distinctive WAL-MART marks, and (ii) the combination thereof with generic terminology is insufficient to distinguish the disputed domain names from the Complainant's marks.
b) The Respondent does not have any rights or legitimate interests in the disputed domain names.
c) The Respondent uses the disputed domain names in bad faith as the websites to which the disputed domain names resolve, make use of the Complainant's WAL-MART and WALMART marks in order to raise advertising revenue through the use of sponsored links. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:
i. the Respondent's domain name is identical to or confusingly similar to a trademark or service mark in which the Complainant has rights;
ii. the Respondent has no rights or legitimate interests in the domain name;
iii. the Respondent's domain name has been registered and is being used in bad faith.
Pursuant to paragraph 15(a) of he Rules, the Panel has to decide the Complaint on the basis of the statements and documents submitted to it and in accordance with the Policy, Rules and any principles of law that it deems appropriate. A. Identical or Confusingly Similar
The Complainant has submitted sufficient evidence that it is the owner of several trademarks consisting of the words “wal-mart” and “walmart”.
The Panel holds that the disputed domain names are confusingly similar to the above trademarks. The disputed domain names, as registered by the Respondent, incorporate the WAL-MART and WALMART trademarks. The addition of the generic term “winners” and the addition and misspelling of the term “peaple of” do not result in the disputed domain names ceasing to be confusingly similar to the invoked trademarks. For rulings on the addition of generic terms see Nokia Corporation. v. N a.k.a IBCC,WIPO Case No. D2000-0102 (finding that appending the generic term “girls” to the NOKIA trademark was a “rather neutral addition” that would not distinguish the domain name from the trademark); and Louis Vuitton Malletier v. Enrico Villa,WIPO Case No. D2000-0721 (finding “Louis Vuitton” to be the core and distinctive element in the domain name and thus confusingly similar to the “Louis Vuitton” registered trademark of the Complainant). For rulings on “typosquatting” (i.e. misspelling) see LouisVuitton v. Net-Promotion,WIPO Case No. D2000-0430 (finding confusingly similar to “Louis Vuitton”, as the omission of the letter “o” is not a perceptible difference and the way to pronounce both words would be identical or almost identical); and Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc.,WIPO Case No. D2000-0587 (finding that the Respondent was “obviously engaging in “typosquatting a practice that has been condemned and been found to be confusingly similar to the marks which they mimic” by registering the domain names and ).
Moreover, the condition of confusing similarity is easier fulfilled when the corresponding trademark is well-known, as is the case here. In this respect, see Christian Dior Couture SA v. Liage International Inc.,WIPO Case No. D2000-0098 (finding that “to allow “” and “” domain names to remain with Respondent would contribute worldwide to erode the marks of Complainant in a manner contrary to the international obligations of the U.S. (because of the TRIPs) and to the most recent restatement of world intellectual property law standards as embodied in Art. 16 para. 6 TRIPs”).
For the foregoing reasons, the Panel decides that the contested domain names and are confusingly similar to Complainant's trademarks WAL-MART and WALMART in the sense of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in the domain name:
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 organisation) 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 non-commercial 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 Complainant has sufficiently demonstrated that the Respondent is not licensed or otherwise authorised to use the Complainant's trademarks.
The Panel is unaware of any evidence showing either of the three above-mentioned elements to be applicable as Respondent failed to submit any evidence that disproves Complainant's credible allegations. See in this respect Microsoft v. Azra Khan,WIPO Case No. D2003-0481; and Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A and Ermenegildo Zegna Corporation v. Mr. Mario Giovanni Mario,WIPO Case No. D2003-0699.
For the foregoing reasons, the Panel decides that the Respondent does not have any rights or legitimate interests in the disputed domain names and in the sense of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the occurrence of one of the following circumstances, in particular but without limitation, may be found by the Panel to be evidence of registration and use of a domain name in bad faith:
i. circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
ii. you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
iii. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv. by using the domain name, you have intentionally attempted to attract, for commercial gain, internet users to your web site or other on-line location, 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.
Paragraph 4(a)(iii) provides for a cumulative requirement of registration in bad faith and use in bad faith.
In view of the above established fact that WALMART and WAL-MART are well-known trademarks, it is inconceivable to the Panel that at the moment of registration of the disputed domain names, the Respondent could have been unaware of the existence of the aforementioned trademarks. Consequently, the Panel determines that the disputed domain names could only have been registered in bad faith. See in this respect Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Mr. Lian Ming,WIPO Case No. D2003-0266; Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137; G Corporation v. William E. Merritt,WIPO Case No. D2000-0266; and Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163.
The Respondent has been using the disputed domain names for websites where different links are provided under such headings as “bargain shopping”, “clothes shopping” or “Walmart gift cards”. It seems to the Panel that pursuant to paragraph 4(b)(iv) of the Policy, this use of the disputed domain names constitutes an intentional attempt, for commercial gain, to attract Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation or endorsement of its websites.
For the foregoing reasons, the Panel decides that there is sufficient evidence of Respondent's bad faith both in the registration and use of the disputed domain names and in the sense of paragraph 4(a)(iii) of the Policy. 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.
Geert Glas
Sole Panelist
Dated: December 14, 2009
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