The Complainant is Wal-Mart Stores, Inc. of Bentonville, Arkansas, United States of America, represented by Drinker, Biddle & Reath, LLP, United States of America.
The Respondent is Intdomain / Apexed of Burgenland, Austria. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2017. On April 5, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 6, 2017, 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.
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, and the proceedings commenced on April 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 27, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 28, 2017.
The Center appointed Jon Lang as the sole panelist in this matter on May 15, 2017. 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 with international operations that include more than 11,000 retail units in 27 countries, with e-commerce in 10 countries. It serves more than 245 million customers weekly.
The Complainant has used its WALMART mark since at least as early as 1962 in connection with retail store services and has since expanded its uses to numerous goods and services. In addition to long-standing common law trademark rights in its WALMART mark, the Complainant owns numerous trademark registrations throughout the world, including the following U.S. trademark registrations: Reg. No. 1,783,039 for WAL-MART registered on July 20, 1993, and Reg. No. 4,180,335 for WALMART.COM registered on July 24, 2012. The Complainant has also registered various domain names that include its WALMART mark, e.g., , and (the WALMART Domain Names).
The Respondent registered the disputed domain name (the Domain Name) on February 23, 2017, a date which postdates the Complainant’s adoption of its WALMART mark by more than 50 years and postdates the Complainant’s registration of the domain name by more than 20 years.
The Domain Name currently redirects to what appears to be a variety of third-party landing webpages, including to one purported to be associated with Home Depot, a competitor of the Complainant.
The Complainant wrote to the Respondent on March 2, 2017 regarding the Complainant’s objections asking it to cease use of the Domain Name. The Complainant received a response on March 3, 2017 acknowledging infringement and offering to sell the Domain Name for $1,890 (USD) stating:
“Hello, Thanks for your email. Sorry we violated your company’s trademark rights, and I understand that you said, so this domain could be sold to your company at a low price. Only 1890 USD. We could transfer the domain name via S, and the transfer will be finished in one week. Thank you. Best regards, Song”.
The Complainant declined the Respondent’s offer. The Respondent wrote again on March 5, 2017 as follows:
“Sorry, this domain is only for sale. If you want to buy it, please contact us.”
Not much else is known about the Respondent as it has not taken part in these proceedings. However, the results of a reverse WhoIs search as been annexed to the Complaint which reveals that the Respondent is associated with a large number of domain name registrations for third-party brand names, for example, , and .
The Complainant has not granted any license or consent, express or implied to Respondent to use the WALMART mark or the WALMART Domain Names. 5. Parties’ Contentions A. Complainant
General
As a result of Complainant’s longstanding and international use, the WALMART mark and the WALMART Domain Names have become famous and distinctive indicators of source, affiliation or sponsorship by the Complainant.
The Respondent has copied the WALMART mark and the WALMART Domain Names which will likely cause confusion among the Complainant’s consumers and the wider public and otherwise injure the Complainant’s exclusive rights in its WALMART trade name and trademark.
The Respondent exploits the popular recognition and goodwill that the Complainant has built in its WALMART mark and the WALMART Domain Names by appropriating, registering and using the Domain Name. The Complainant has not authorized the Respondent’s use of the Domain Name and it has no legitimate right or interest thereto. The Respondent’s activities improperly create the impression that the Domain Name is owned, used, sponsored or approved by the Complainant. There is no fair use shelter for the Domain Name the Respondent has inappropriately chosen.
The Respondent’s Domain Name is Confusingly Similar to the Complainant’s Mark
The Domain Name is confusingly similar to the Complainant’s instantly recognizable WALMART mark and the WALMART Domain Names. The Complainant’s U.S. registrations for the WALMART mark are conclusive evidence of the validity of the mark, the Complainant’s ownership thereof and the Complainant’s exclusive right to use the mark. The Domain Name wholly incorporates the Complainant’s immediately recognizable WALMART mark, causing the average Internet user to assume, wrongly, that the Respondent is affiliated with, sponsored by, or otherwise related to the Complainant. As the Domain Name incorporates the Complainant’s famous WALMART mark and name in its entirety and fails to add any properly distinguishing indicia, the Domain Name is confusingly similar to the Complainant’s WALMART mark and WALMART Domain Names.
The Respondent Has No Rights or Legitimate Interests in the Domain Name
The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name given: (i) the Complainant’s incontestable U.S. trademark registrations, being conclusive evidence of its exclusive right to use the WALMART mark; (ii) the Complainant’s WALMART mark and name having become internationally famous and well-known through extensive promotion and use since 1962; (iii) the Complainant has not granted the Respondent a license or any other authorization to use or register the Complainant’s marks and name; and (iv) nothing in the Whois records for the Domain Name indicates that the Respondent is commonly known by the Domain Name or the WALMART trademark.
The Respondent seeks to benefit from the goodwill associated with the Complainant’s WALMART mark and WALMART Domain Names by using a confusingly similar domain name to divert Internet users from genuine WALMART Domain Names. The Respondent’s actions create confusion as to the origin or sponsorship of the Domain Name.
The Respondent Registered and Is Using the Domain Name in Bad Faith
Of the examples of registration and use of a domain name in bad faith as set out in the Policy, the most relevant here is that the Respondent “by using the domain name . . . [has] intentionally attempted to attract, for commercial gain, Internet users to [its] website . . . by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location”.
The Complainant’s trademark registrations, which predate registration of the Domain Name, provide constructive notice of the Complainant’s rights. The Respondent’s calculated choice of the Domain Name as a means of misleading Internet users thereby disrupting the Complainant’s business, evidences bad faith.
The Respondent’s registration of the Domain Name with knowledge, both constructive and actual, of the Complainant’s rights in the WALMART mark, evidences bad faith.
In Swarovski Aktiengesellschaft v. Phily Helen,WIPO Case No. D2012-1208 it was said that “The Respondent’s use of the disputed domain name to direct visitors to a website which so obviously uses the Complainant’s registered trademarks in order to sell identical or similar products to those of the Complainant’s is clear indication of bad faith use under the Policy”
The Respondent’s admission of infringement and offer to sell the domain for $1,890 USD, a price far exceeding the Respondent’s registration costs, is further evidence of bad faith use. Moreover, the reverse WhoIs search demonstrating that the Respondent has registered a large portfolio of third-party brand names is further evidence of the Respondent’s methods and intentions. The Complainant believes that this evidence points not only to bad faith registration and use of the Domain Name, but also the Respondent’s likely involvement in larger-scale activities of this nature. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed. A. Identical or Confusingly Similar
The Complainant clearly has rights in the WALMART trademark. In addition to the marks annexed to the Complaint, the Panel also carried out a review of the United States Patent and Trademark Office, Trademark Electronic Search System (TESS) for WALMART (word marks) which revealed the numerous WALMART related (word) marks owned by the Complainant, including Reg. No. 4474440 for WALMART, registered on January 28, 2014 (with a filing date of June 3, 2013).
Ignoring the generic Top-Level Domain “.biz” (as the Panel may do for comparison purposes), the Domain Name comprises the Complainant’s WALMART trademark, followed by the word “stores”. As the WALMART trademark and Domain Name are not identical, the issue of confusing similarity must be considered. Under the UDRP, the test for confusing similarity typically involves a comparison, on a visual or aural level, between the trademark and the domain name. To satisfy the test, the trademark to which the domain name is said to be confusingly similar, would generally need to be recognisable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent confusing similarity.
The well-known WALMART trademark is clearly recognizable within the Domain Name. The only real issue therefore is whether the word “stores” which follows it, renders the Domain Name something other than confusingly similar (to the WALMART trademark). In the Panel’s view, it does not.
Indeed, inclusion of the word “stores” in the Domain Name may well enhance the risk of confusing similarity given the nature of the Complainant’s business.
Accordingly, the Panel finds that the Domain Name is confusingly similar to the WALMART® trademark for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established. B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding.
Despite a respondent not having been licensed by or affiliated with a complainant, it might still be able to demonstrate rights or legitimate interests. For instance, a respondent can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers.
However, in this case, the Respondent is not known by the Domain Name and, given the nature of the web pages to which the Domain Name resolves, which appear to be very much commercial in nature and, indeed, competitive with the Complainant, it cannot be said that there is legitimate noncommercial use. Indeed, it can readily be assumed that the overriding purpose of the webpages to which the Domain Name resolves is to produce a commercial gain. There must also be an absence of an intent to mislead (for commercial gain) but the Respondent’s choice of Domain Name may well suggest the opposite i.e. that there is in fact an intent to mislead Internet users into believing that there is some form of association between the Respondent and the Complainant when there is not. In these circumstances, it can further be said that “use”, such as it is, could not be regarded as “fair”.
A respondent can also show that it was using a domain name in connection with a bona fide offering of goods or services. However, it is difficult to accept that webpages advertising for sale goods of third parties, (whether or not competitive) using a domain name that is confusingly similar to a trademark of another, could amount to a bona fide offering of goods or services without clear justification for such use. No such justification has been advanced in this case, or indeed appears likely.
It seems clear that the Respondent set out to acquire a domain name that would create an impression of association with the Complainant for its own commercial gain, regardless of the misleading impression created thereby. The Respondent’s subsequent use of the Domain Name in these circumstances cannot result in any acquisition of rights or interests in such Domain Name. In Drexel University v. David Brouda,WIPO Case No. D2001-0067, the UDRP panel stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”.
There is no evidence before this Panel that suggests that the Respondent has rights or legitimate interests in the Domain Name or that there would be anything inappropriate in a finding that reflects this. Accordingly, this Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
One way a complainant may demonstrate bad faith registration and use is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it.
The Respondent was clearly aware of the Complainant’s WALMART trademark at the time of registration given the (unauthorized) use to which the Domain Name has been put. The purpose behind the registration appears to have been to attract Internet users to the Respondent’s webpages using a domain name confusingly similar to the Complainant’s WALMART trademark. In other words, the very circumstances envisaged above.
The Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith. 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 name be transferred to the Complainant.
Jon Lang
Sole Panelist
Date: May 25, 2017
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