Complainant is Wal-Mart Stores, Inc. of Bentonville, Arkansas, United States of America (“United States”), represented by the law firm Drinker, Biddle & Reath, LLP, United States.
Respondent is John Boland of South Salem, New York, United States, self-represented. 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2014. On November 21, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 21, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 Respondent of the Complaint, and the proceeding commenced on November 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 17, 2014. The Response was filed with the Center on December 16, 2014.
The Center appointed Richard G. Lyon as the sole panelist in this matter on December 22, 2014. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his 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, the largest retailer in the world, holds numerous trademarks for WALMART, duly registered on the principal register of the United States Patent & Trademark Office (USPTO). The earliest of these included with the Complaint is dated 1985 claiming a first use in commerce of 1962.
Respondent registered the disputed domain names in June 2014. According to screen shots submitted with the Complaint, at one time each disputed domain name resolved to a page of pay-per-click hyperlinks. When the Panel accessed them one resolved to such a pay-per-click page, the other resolving to a page with the notation “Website coming soon! Please check back soon to see if the site is available.”
Complainant through counsel sent a cease-and-desist letter to Respondent on August 11, 2014. Respondent replied the following day indicating his interest in selling the disputed domain names only “at a fair and reasonable cost.” Following inquiries requesting specifics, Respondent stated in a November 6, 2014 email that he would sell the disputed domain names for USD 12,100 “in consideration of the time and money spent, and potential value of the [disputed] Domain Names.” 5. Parties’ Contentions A. Complainant
Complainant contends as follows:
1. The dominant feature of each disputed domain name is “walmart”. Complainant has rights in WALMART by reason of its many USPTO-registered marks and longtime prominent use of its corporate name in retail commerce. The disputed domain names are thus confusingly similar to a mark in which Complainant has rights.
2. Complainant has never authorized Respondent to use its WALMART marks, and Respondent has never been commonly known by that term. Respondent’s use of the disputed domain names for commercial gain through the pay-per-click links is not bona fide under Policy precedent. Respondent remains responsible for the content of pages at domain names he owns even if these pages were generated by the Registrar.
3. Respondent’s second email quoted above acknowledges an intent to profit from sale of the disputed domain names to Complainant, the mark owner and requests a price in excess of his out-of-pocket costs directly related to the domain names. Respondent’s use of the disputed domain names for pay-per-click pages is an attempt to profit from the goodwill attaching to Complainant’s marks and thus an “attempt[] to attract, for commercial gain, Internet users to [his] 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.” See Policy, paragraphs 4(b)(i) and 4(b)(iv). B. Respondent
The Response is silent as to paragraphs 4(a)(i) and 4(a)(ii) of the Policy, but Respondent does contest Complainant’s charge of bad faith. As to selling the disputed domain names, Respondent had no such intention until contacted by Complainant, at which point Respondent “determined based on [his] costs in securing the name, time spent in doing so, the potential benefit of ‘saver’ domain names in a future shopper marketing business to be $12,100.” Respondent had nothing to do with the pay-per-click pages; rather they were generated by the Registrar. Respondent did not profit from these pages and in fact was unaware of them and unaware that the Registrar “could/would do that.” 6. Discussion and Findings A. Standard of Proof
The fact that Respondent has not answered Complainant’s allegations regarding the first two Policy heads does not ipso facto mean that those elements are established. Even in a default case a complainant must provide proof from which the panel can make the necessary findings. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.6.
Complainant here has done so. It has furnished uncontested proof of valid trademark rights in WALMART, the dominant feature of both disputed domain names, thus meeting its burden of proof under paragraph 4(a)(i) of the Policy. By furnishing uncontested proof that Respondent has never been known by the word “walmart” and has never been authorized to use that mark, the burden of production shifts to Respondent to demonstrate a right or legitimate interest. WIPO Overview 2.0, paragraph 2.1. Nothing in the record demonstrates a right or legitimate interest of Respondent in either disputed domain name. Thus Complainant has carried its evidentiary burden under paragraph 4(a)(ii) of the Policy. B. Registered in Bad Faith
To establish registration in bad faith Complainant must demonstrate Respondent’s actual knowledge of Complainant and its mark and that Respondent selected the disputed domain names to take advantage of fame or value attaching to Complainant’s mark. This Panel has consistently referred to this second aspect as “targeting” Complainant’s mark.1
Certain marks, usually popular retail brands, are common knowledge. See Avon Products, Inc. v. Whois Privacy Protection Service, Inc. / Extra Paid,WIPO Case No. D2013-0354; CVS Pharmacy, Inc. v. Top Investments, LLLP,WIPO Case No. D2011-0379; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Complainant’s WALMART marks fit this description, certainly in the United States. As one of the country’s most prominent and ubiquitous retailers, few Americans could credibly deny (and Respondent does not deny) knowledge of the brand. Because the mark is the dominant feature of the disputed domain names, this suffices for an inference of actual knowledge and targeting. That the only demonstrated use of the disputed domain names, which occurred shortly after registration, was standard pay-per-click pages serves to reinforce this inference. C. Used in Bad Faith
Use in bad faith, which must be separately proven,2 would normally be established by the use of the pay-per-click pages, some of which link to competitors of Complainant. Respondent asserts that he was unaware of the provision in the registration agreement he clicked to accept that allowed the Registrar to park such pages and should not suffer the consequences of the Registrar’s acts.
The Complainant correctly argues that normally any content generated, even automatically generated, by the Registrar pursuant to such a provision is attributed to the registrant. The WIPO Overview 2.0, paragraph 3.8, provides (emphasis added; citations omitted):
“3.8 Can third party or ‘automatically’ generated material appearing on a website form a basis for finding bad faith?
Panels have found that a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content - for example, in the case of advertising links appearing on an ‘automatically’ generated basis. To the extent that the presence of certain advertising or links under such arrangement may constitute evidence of bad faith use of the relevant domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third-party trademarks. It may not be necessary for the registrant itself to have profited directly under such arrangement in order to establish bad faith use under paragraph 4(b)(iv) of the UDRP. It would normally be sufficient to show that profit or ‘commercial gain’ was made by a third party, such as by the operator of an advertising revenue arrangement applicable to the registrant, or a domain name parking service used by the registrant. Reasons may include that a rights holder should be able to rely on the registrant for enforcement purposes, or that such registrant has undertaken not to infringe third party rights in its registration agreement (see paragraph 2 of the UDRP).
Some panels have found that the inclusion of such advertising links may not necessarily be a basis for finding respondent bad faith where shown to be genuinely automated, and there is no evidence that the respondent influenced the advertising content, and the respondent credibly denies knowledge of the complainant’s trademark and there is no evidence of the respondent previously being put on notice of such mark, and other indicia of cybersquatting are not present.”
While some panels have relaxed application of this general rule for reasons other than those listed in the second quoted paragraph, the circumstances of this case do not justify a departure. Respondent is not a complete stranger to the domain name system. A quick search reveals that thirty-five domain names, all registered on the same day, are registered at the email address used for the disputed domain names. Respondent acknowledges undertaking “an independent shopper marketing effort” using domain names and evaluating prices of various domain names online. As one disputed domain name no longer resolves to a pay-per-click page, Respondent apparently knows how to prevent such use. Further, nothing in the Response explains or attempts to explain in any way Respondent’s unauthorized use of another’s trademark in a domain name.
Looking at these facts in a light most favorable to Respondent, at best Respondent may have been unaware of the Policy and the undertakings he as registrant made upon acquiring the disputed domain names. True, those representations are often made – and appear here to have been made – simply by clicking a box in a thirty-second transaction. That fact however does not excuse Respondent from the consequences of his action, the applicability of the Policy, or the binding nature of his undertaking that “to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party.” Policy, paragraph 2. Under sound Policy precedent Complainant has established use in bad faith.3 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names and be transferred to Complainant.
Richard G. Lyon
Sole Panelist
Date: December 26, 2014
1 See, e.g., Clearwater Systems, Inc. v. Glenn Johnson / Clear Water Systems of Remington Inc.,WIPO Case No. D2014-0878.
2 WIPO Overview 2.0, paragraph 3.1, Consensus View; see also Validas, LLC v. SMVS Consultancy Private Limited,WIPO Case No. D2009-1413.
3 The Panel prefers not to consider Complainant’s alternative ground for finding bad faith, Respondent’s asking price for the disputed domain names. Complainant concedes that it initiated discussion of possible sale of the disputed domain names and that Respondent proposed a sale price only after several months’ prodding. Such circumstances do not by themselves necessarily demonstrate bad faith. E.g., Countrywide Financial Corporation, Inc. v. Aziz Popal,WIPO Case No. D2005-0295. The Panel does note that Respondent has not documented his claimed expenses, as required by paragraph 4(a)(i) of the Policy, and that (unlike several cases involving complainant-initiated sale negotiations) Complainant here did not hide its identity. Respondent thus knew he was dealing with the mark owner.
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