The Complainant is Wal-Mart Stores, Inc. of Bentonville, Arkansas, United States of America ("US"), represented by Drinker, Biddle & Reath, LLP, US.
The Respondent is Vladimir Orehov of Simferopol, Ukraine. 2. The Domain Names and Registrar
The disputed domain names , , and (the "Domain Names") are registered with Nanjing Imperiosus Technology Co. Ltd (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 10, 2015. On November 11, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On November 11, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On November 16, 2015, the Center transmitted an email to the Parties in English and Chinese regarding the language of the proceeding. On November 17, 2015, the Complainant submitted its request that English be the language of the proceeding to the Center by email. The Respondent did not submit any comments within the specified due date.
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 and 4, the Center formally notified the Respondent of the Complaint in English and Chinese, and the proceeding commenced on November 23, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 14, 2015.
The Center appointed Linda Chang as the sole panelist in this matter on December 29, 2015. 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 is the world's largest retailer and has retail unites in 27 countries, with e-commerce in 10 countries, and serves more than 245 million customers weekly. The Complainant has used its WALMART trademark since at least as early as 1962 in connection with retail store services and expanded its uses to numerous goods and services including prescription and non-prescription pharmacy services.
The Complainant holds numerous trademark registrations for WALMART, including US Registration No. 1322750, US Registration No. 1783039, US Registration No. 2891003 and US Registration No. 4180335. The earliest of these trademarks was registered on February 26, 1985.
The Domain Names were registered between June 11 and July 23, 2015, and resolved to websites offering for sale of a prescription medicine CIALIS. The Complainant wrote to the Respondent on July 20 and August 3, 2015 regarding the Complainant's objections but received no response. 5. Parties' Contentions A. Complainant
The Complainant contends as follows:
1. The Domain Names are confusingly similar to the Complainant's WALMART trademark. The Domain Names wholly incorporate the Complainant's WALMART mark, and the CIALIS trademark owned by Eli Lilly & Company of Indiana, US. The inclusion of non-distinctive and/or descriptive terms such "over the counter" does not avoid the finding of confusing similarity, but instead caused actual consumer confusion when the Respondent fraudulently attempted to counterfeit the Complainant's online pharmacy services.
2. The Respondent has no rights or legitimate interests in respect of the Domain Names. The Complainant has not granted the Respondent a license or any other authorization to use or register the WALMART mark and name. The Respondent is not commonly known by the Domain Names or the WALMART trademark.
3. The Respondent registered and is using the Domain Names in bad faith. The Respondent's registration of the Domain Names with constructive and actual knowledge of the Complainant's mark evidences bad faith. By resolving the Domain Names to sites purporting to offer anonymous and illegal sales of prescription medicine, the Respondent misled Internet users and disrupted the Complainant's business. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Language of the Proceeding
The Registrar confirms that the language of the Registration Agreement for the Domain Names is Chinese, while the Complainant filed the Complaint in English and has requested for English to be the language of the proceeding, for the reasons that are stated below:
(i) The Respondent is and has for some time been actively conducting business in English, through registering numerous domain names consisting of English phrases and resolving them to English-language websites, including the Domain Names at dispute and their associated websites.
(ii) If the Complainant were required to submit documents in Chinese, the proceedings may be delayed and the Complainant would have to incur substantial additional expense for translations.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceedings by taking into consideration all relevant circumstances, to ensure fairness of both parties and due expedition of the proceeding.
The Respondent has been given a fair opportunity to comment on the language of the proceeding by the Center, but chosen not to respond nor object to the use of English as the language of the proceeding. Considering the circumstances of this proceeding, the Panel agrees that the Respondent comprehends the English language and has sufficient capacity to present its case in English. Using English as language of the proceeding would not be prejudicial to the Respondent in its ability to articulate the arguments for the case.
Taking both of the foregoing points, the Panel thus decides that the language of the proceeding shall be English and the decision will be rendered in English. B. Identical or Confusingly Similar
The Complainant has sufficient evidence demonstrating its established rights in the WALMART mark.
The Panel finds it an accepted principle that an addition of the suffixes such as ".com" being the generic Top-Level Domain is not a distinguishing factor. Therefore, the dominant part of each of the Domain Names is a variation of the term "cialis over the counter (at) Walmart", together with a hyphen "-" randomly placed in the different positions in the term. The Panel agrees that the Domain Names wholly incorporate the Complainant's WALMART mark, and the CIALIS trademark owned by Eli Lilly & Company, and the inclusion of the descriptive terms such "over the counter" does not avoid the finding of confusing similarity. See Carlsberg A/S v. Personal / decohouse, decohouse,WIPO Case No. D2011-0972; ECCO Sko A/S v. Jacklee,WIPO Case No. D2011-0800.
Accordingly, the Panel holds the Domain Names are confusingly similar to the Complainant's trademark, and the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
The Complainant contends that it has not granted the Respondent a license or any other authorization to use or register the WALMART mark and name.
The Panel notes that there is no indication that the Respondent is commonly known by the Domain Names or is using the Domain Names in connection with a bona fide offering of goods or services. In fact, the Respondent's use of the Domain Names to divert Internet users to unauthorized or competing pharmacy websites and thus capitalizing on the Complainant's trademark is not a bona fide use pursuant to paragraph 4(c)(i) of the Policy.
The Respondent also has failed to file a response to prove its rights or legitimate interests in the Domain Names under paragraph 4(c) of the Policy. The Panel is satisfied that the Complainant has established prima facie evidence that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(c) of the Policy. It is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent. See International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683.
For all of the above reasons, the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Names. D. Registered and Used in Bad Faith
The Complainant has been trading under its trademark WALMART since 1962 and enjoys a high reputation with regards to its retail store services worldwide. The Panel finds it inconceivable that the Respondent had no actual notice of the Complainant's trademark at the time of registering the Domain Names. The contents displayed on the homepage at the Domain Names, including "Walmart Pharmacy" and other WALMART marks, is a further indication that the Respondent has the knowledge of the WALMART mark. Consequently, it is pertinent for the Respondent to provide an explanation of its choice in the Domain Names, failing of doing which the Panel draws the conclusion that the Domain Names were registered in bad faith with intent to create an impression of an association with the Complainant and its WALMART trademark.
The Respondent is using the Domain Names to divert Internet users to websites offering for sale of a prescription medicine CIALIS. The Panel finds that bad faith is established by the Respondent's use of the Domain Names to attract Internet users to a for-profit online pharmacy store selling prescription medicines. By incorporating the WALMART trademark in the Domain Names, the Respondent is intentionally creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's websites, and that the Internet users are likely to be confused into thinking that the Domain Names have a connection with the Complainant, which is contrary to the fact and may damage the reputation of the Complainant. In all the circumstances, the Panel is satisfied that the Respondent is using the Domain Names to facilitate illegal sale of prescription medicines and such act of the Respondent is sufficient evidence of bad faith.
Moreover, the Respondent could have rebutted the contentions of the Complainant by responding to the letters sent from the Complainant and this Complaint, but has chosen not to do so. Such failure is further indicative of bad faith. See The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610.
In light of the above facts and reasons, the Panel therefore determines that the Domain Names were registered and are being used in bad faith pursuant to the Policy. 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 Domain Names , , and be transferred to the Complainant.
Linda Chang
Sole Panelist
Date: January 20, 2016
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