Complainant is Wal-Mart Stores, Inc. of Bentonville, Arkansas, United States of America, represented by Cavelier Abogados, Colombia (the "Complainant").
Respondent is Steve Johnson of Sugar Land, Texas, United States of America (the "Respondent"). 2. The Domain Name and Registrar
The Disputed Domain Name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 6, 2014. On June 6, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 7, 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 proceedings commenced on June 12, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 2, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on July 18, 2014.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on July 23, 2014. 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 is the owner of the following relevant trademarks:
WAL-MART, registration number 168310, Colombia, valid until October 27, 2014;
WAL-MART, registration number 380582, Colombia, valid until May 20, 2019;
WAL-MART SAVE MONEY. LIVE BETTER, registration number 380572, Colombia, valid until May 14, 2019;
Formal recognition of WAL-MART as a well-known mark by the Trademark Office of Colombia in Resolution No. 017939 on May 30, 2008.
Numerous international trademarks for WAL-MART.
The Disputed Domain Name was registered on September 17, 2012, as confirmed by the Registrar. 5. Parties' Contentions A. Complainant
Complainant alleges that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Complainant is an American multi-national retail corporation that runs chains of large discount department stores and warehouse stores. It is the largest public corporation in the world and the biggest private employer in the world with over two million employees. Complainant operates stores in 27 countries around the world and its trademarks for WAL-MART (the "Walmart Marks") are well-known globally in connection with retail stores, grocery stores, membership clubs, drugstores, discount stores, department stores, advertising through websites which use the Walmart Marks as domain names, scholarship programs, televised telethons for children's hospitals, environmental programs, as well as a variety of community support programs.
Numerous mentions in various media outlets, including Forbes, have listed the Walmart Marks and Complainant's brand as among the most valuable in the world.
Complainant's Walmart Marks in Colombia, and Complainant's activities there, resulted in the Trademark Office of Colombia's recognition of WAL-MART as a "well-known mark" in the Colombia marketplace in the Office's Resolution No. 017939 of May 30, 2008.
Complainant alleges that Respondent has no rights or legitimate interest in the Disputed Domain Name and that Respondent is neither affiliated with Complainant nor licensed to use Complainant's trademarks.
Complainant alleges that since Respondent Registered the Disputed Domain Name , Respondent has not used the Disputed Domain Name and is only passively holding the Disputed Domain Name with the effect of blocking Complainant from registering a website that could be directed toward its Colombian customers. Complainant presents correspondence between Complainant and Respondent in which Respondent requests more money for the purchase of the Disputed Domain Name and admits to not having legitimate interest in the Disputed Domain Name. Complainant alleges that repeated offers to find a mutually agreeable purchase price have gone unanswered by Respondent who continues to stall in peaceable transfer of the Disputed Domain Name despite an initial indication that Respondent would be amenable to such transfer.
Complainant alleges that the Disputed Domain Name was registered and is being used in bad faith. Complainant alleges that Respondent has not used the Disputed Domain Name since its registration and that such inaction constitutes bad faith. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Name is confusingly similar to Complainant's trademark WAL-MART. The mere addition of the country code Top Level Domain (ccTLD) ".co" is not sufficient to avoid confusion with Complainant's trademark and does not serve to differentiate the Disputed Domain Name from Complainants' Walmart Marks. B. Rights or Legitimate Interests
Complainant has presented evidence of its rights in the trademark WAL-MART referencing specific registrations in Colombia and pre-existing usage sufficient to warrant common law trademark protection for purposes of the Policy.
Complainant alleges, and Respondent has not disputed, that Respondent is not affiliated with Complainant nor is Respondent licensed to use Complainant's trademark.
Complainant has presented evidence that Respondent is not using the Disputed Domain Name and is passively holding it. Complainant has presented evidence of correspondence from Respondent to Complainant in which Respondent denies seeking profit and claims to be "safeguarding" the Disputed Domain Name from other potential abusers. Complainant's correspondence shows that Respondent failed to respond to efforts to negotiate a sales price for the transfer of the Disputed Domain Name despite initial willingness to sell it to Complainant.
The Panel finds that Respondent does not have any rights to use Complainant's trademark and that, under the circumstances, does not have rights or legitimate interests in the Disputed Domain Name. The claim that the Disputed Domain Name is merely being safeguarded by Respondent from other potential abusers is undermined by Respondent's later refusal to communicate with Complainant regarding the sale of the Disputed Domain Name, suggesting that Respondent is targeting the trademark of Complainant.
The Panel finds that Complainant has established this element. C. Registered and Used in Bad Faith
Complainant rightly points out that inaction, or passive holding, in relation to a domain name registration can constitute bad faith use. In support of its argument, Complainant cites previous UDRP decision Telstra Corporation Limited v. Nuclear Marshmellows,WIPO Case No. D2000-0003. Complainant has also supplied evidence of its registered trademark with a first use in commerce which predates the registration of the Disputed Domain Name, as well as media recognition of the Complainant which similarly predate the registration.
Given Complainant's indisputable international business model, advertising, physical presence, and sales, there is no possibility that Respondent was unaware of Complainant or Complainant's Walmart Marks at the time the Disputed Domain Name was registered. Respondent's claim, in correspondence presented by Complainant, that it was not aware of Complainant's intellectual property rights at the time of registration is not credible and is, as Complainant rightly points out, undermined by Respondents renewal of the Registration after Respondent allegedly became aware of the concept of intellectual property.
Complainant has presented evidence of Respondent's similar bad faith registrations in previous UDRP proceedings which suggest that Respondent has a pattern of bad faith conduct and further make Respondent's claimed ignorance as to the existence of intellectual property rights not believable. See, Alibaba Group Holding Limited v. Steve Johnson,WIPO Case No. DCO2013-0018; and see, Picture Brite Corporation and Picture Bright Corporation v. JENRAY c/o Steve Johnson, NAF Case No. FA0503000437811.
Therefore, the Panel finds that Respondent's registration and use of the Disputed Domain Name is in bad faith. 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 Name be transferred to Complainant.
Maxim H. Waldbaum
Sole Panelist
Date: August 11, 2014
Full & Egal Universal Law Academy