WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Wal-Mart Stores, Inc. v. Domains by Proxy, Inc. / Eric King, Richard Walker Male, Dennis Quiles Case No. D2010-0168 1. The Parties
Complainant is Wal-Mart Stores, Inc. of Bentonville, Arkansas, United States of America, represented by Kenyon & Kenyon LLP, United States of America.
Respondents are Domains by Proxy, Inc. of Scottsdale, Arizona, Eric King of Milwaukee, Wisconsin, Richard Walker Male of Jerome, Idaho, and Dennis Quiles of Houston, Texas, all in the United States of America. 2. The Domain Names and Registrar
The disputed domain names , , and , (collectively the “Disputed Domain Names”) are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2010. On February 5 and 8, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the Disputed Domain Names. On February 9, 2010, GoD, Inc. transmitted by email to the Center its verification response, disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to Complainant on February 9, 2010, providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant sent an email to the Center on February 16, 2010, indicating that Complainant intended to proceed with the originally filed Complaint without amendment. The Center verified that 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 Respondents of the Complaint (both the originally-named Respondents as well as the registrants of the Disputed Domain Names as provided by GoD, Inc. – all of which, collectively, are referred to herein as the “Respondents”), and the proceeding commenced on February 18, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2010. Respondents did not submit any response. Accordingly, the Center notified Respondents' default on March 11, 2010. On March 12, 2010, Respondent Dennis Quiles sent a response via email as indicated in Section 5, below.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on March 19, 2010. 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
Complainant Wal-Mart Stores, Inc. (“Walmart”) is one of the largest retailers in the world. Established in 1962, Walmart now has over 8,000 retail units and over 2 million employees worldwide. Walmart services over 200 million customers weekly in the United States alone, the location listed for all Respondents in this proceeding. Walmart's sales for the 2009 fiscal year totaled over USD 400 billion dollars. Walmart is famous in the United States and worldwide as a discount retailer.
Complainant is the owner of current United States trademark registrations on various iterations of its name including WAL-MART (issued in 1993) and WAL-MART and design (issued in 1985). Complainant has also registered its mark with and without hyphens, (WALMART or WAL-MART), and has registered its marks followed by various descriptive words (i.e., WAL-MART FINANCIAL SERVICES, registered 2003; WAL-MART MONEYCARD, registered in 2008). Additionally, Complainant holds numerous foreign trademark registrations.
Complainant also holds the registrations for various domain names, which it uses to host its websites for consumer information and interactions. These include (registered in 1995); (with a hyphen, which redirects to “www.”); and various iterations including descriptive terms that indicate the specific services or information offered, such as , and .
Respondents registered the Disputed Domain Names on October 18, 2009 () and January 16, 2010 ( and ) respectively. Respondents have apparently not used the Disputed Domain Names to link to active web sites. However, Respondents have apparently used an email address associated with the domain name as part of a scheme to divert Complainant's consumers to Respondents' web site and other activities by seeking “secret shoppers” to shop at Complainant's stores on Respondents' behalf. In this way, Respondents have used the Disputed Domain Names for their own apparent financial gain.
Respondents have no license from, or other affiliation with, Complainant. 5. Parties' Contentions A. Complainant
Complainant contends that (i) the Disputed Domain Names are identical or confusingly similar to Complainant's trademarks; (ii) Respondents have no rights or legitimate interests in the Disputed Domain Names; and (iii) Respondents registered and are using the Disputed Domain Names in bad faith. B. Respondent
Respondents did not reply to Complainant's contentions in this proceeding. However, on March 12, 2010 after Respondents' default was notified, one of Respondents, Dennis Quiles, the named registrant of sent the following email [restated exactly]:
“My name is Dennis Quiles, this is my formal response to Case No D2010-0168; I have never purchased a domain name what so ever. I had answered an add for employment as a secret shopper, This company had assumed my name to purchase the domain names in question. I had received a check from the company to purchase money transfers, I still have this check in my possession. I had never cashed the check because I questioned it's authenticity, unable to contact the company I did nothing further. I have spoke to [Mr.] Midfielder, [email address] and will assist in any way to resolve this complaint. Further more I relinquish any domain name to Wal-Mart purchased under my name without my consent or knowledge. Please contact me so we can resolve this complaint as soon as possible.” 6. Discussion and Findings
As a preliminary matter, the Panel notes that there are three named Respondents in this case, as well as the name of the privacy shield under which the domain names were originally registered. Paragraph 3(c) of the Rules specifically provides that a complaint may relate to more than one domain name, provided that they are registered by the same domain name holder. Situations may occasionally arise in which multiple respondents may be considered as one domain name holder for the purpose of this provision. Such a situation arises here.
In this case, all three of the disputed domain names are displaying identical content. The textual string in all of the names is substantially similar, and the email contact address provided in the publicly-available WhoIs records for two of the disputed domain names is identical. The Panel is thus satisfied that all of the above-named entities are properly included as Respondents in this case.
Finally, the Panel notes that the registrant of the domain name has stated that it is not connected to the other Respondents and that his name was fraudulently used to register the disputed domain name. No supporting evidence was provided to support this bare claim. Accordingly, the Panel finds that this registrant is properly joined as a Respondent, and will assess the content of its email submission below. A. Identical or Confusingly Similar
This Panel must first determine whether the Disputed Domain Names are “identical or confusingly similar to a trademark or service mark in which the Complainant has rights” in accordance with paragraph (4)(a)(i) of the Policy. The Panel finds that each of the Disputed Domain Names meets that standard. Each of the domain names incorporates in full some iteration of Complainant's famous, registered trademark WALMART (or WAL-MART, with a hyphen). Since Complainant uses its mark variously with and without a hyphen both in its trademark registrations and in its domain names, Respondent's use of hyphens in two of the Disputed Domain Names does not make them any less identical or confusingly similar to Complainant's marks.
The Panel finds that the added word “recruiting” in the Disputed Domain Names would be perceived by Internet users as descriptive of a website where they could find information about recruiting for employment, or perhaps “secret shoppers” for Complainant. Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph (4)(a)(i) of the Policy. See, for example, Microsoft Corporation v. StepWeb,WIPO Case No. D2000-1500 (transferring ); Wal-Mart Stores, Inc. v. Horoshiy, Inc.,WIPO Case No. D2004-0620 (transferring ); General Electric Company v. Recruiters,WIPO Case No. D2007-0584 (transferring ). Indeed, as stated previously, Complainant itself offers consumers various services via trademark and domain name registrations that include the mark WALMART or WAL-MART (with a hyphen), followed by descriptive or generic terms.
This Panel therefore finds that the Disputed Domain Names are confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy. B. Rights or Legitimate Interests
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain names at issue in a UDRP dispute. For example, paragraph (4)(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “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”.
Respondents did not formally reply to the Complaint, however, and no evidence has been presented to this Panel that might support a claim of Respondents' rights or legitimate interests in the Disputed Domain Names. Rather, as mentioned in Section 4 of this Panel's decision, Respondents have apparently used an email address associated with one of the Disputed Domain Names to divert Internet users for fraudulent purposes for Respondent's financial gain. The only Respondent who did reply in this proceeding, Dennis Quiles, commented in his email message: “[t]his company had assumed my name to purchase the domain names in question.” The Panel accepts Mr. Quiles' statement as an admission by Mr. Quiles of his lack of rights or legitimate interests in owning the domain name.
Therefore, this Panel finds that Complainant has provided sufficient evidence of Respondents' lack of “rights or legitimate interests” in the Disputed Domain Names in accordance with paragraph (4)(a)(ii) of the Policy which Respondents have not rebutted. C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that domain names were registered and used in bad faith. For example, paragraph (4)(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [Respondents] have intentionally attempted to attract, for commercial gain, Internet users to [Respondents'] web site or other on-line location, by creating a likelihood of confusion with [Complainant's] mark as to the source, sponsorship, affiliation, or endorsement of [Respondents'] web site or location or of a product or service on [the] web site or location.” As noted in Section 4 of this decision, Respondents have used an email address associated with one of the Disputed Domain Names to lure Internet users. Specifically, Respondents have perpetuated a scheme to divert Complainant's consumers by seeking “secret shoppers” to shop at Complainant's stores on Respondents' behalf, and potentially to fraudently divert money to Respondents. In so doing, Respondent is trading on the goodwill of Complainant's trademarks to attract Internet users, presumably for Respondent's own commercial gain.
Complainant's marks are famous and have been for many years, including in the United States where Respondents' addresses are all listed. It would be difficult for Respondents to demonstrate that they were not aware of Complainant's marks at the time they registered the Disputed Domain Names, nor did Respondents offer any evidence to that effect. Rather, the Panel accepts the submission of the one Respondent who did reply, Dennis Quiles, that, to his knowledge, the domain name for which he is listed as the registrant, , has been registered and used in bad faith.
Therefore, this Panel finds that Respondents registered and used the Disputed Domain Names in bad faith in accordance with 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 Complainant.
Lorelei Ritchie
Sole Panelist
Dated: March 24, 2010
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