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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Wal-Mart Stores, Inc v. G.W. and Mm Mmmm

Case No. D2001-0277

 

1. The Parties

The Complainant is Wal-Mart Stores, Inc, a United States corporation, of 702 Southwest Eighth Street, Bentonville, Arkansas, USA.

The respondents are G.W. and Mm Mmmm of 23 Oakfield Avenue, Glanmire, County Cork, Ireland ("the Respondent").

 

2. The Domain Name and Registrar

The domain name, which is the subject of the Complaint, is <ewalmart.com>.

The Registrar of the domain name is Melbourne IT Limited of Level 2, 120 King Street, Melbourne, Victoria, 3000, Australia ("Melbourne IT").

 

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

(a) The Complainant initiated the proceeding by the filing of a Complaint, which was received by the WIPO Arbitration and Mediation Center ("the Center") via e-mail and in hardcopy on February 22, 2001. The Complainant elected to have the dispute decided by a single member administrative panel.

(b) On February 27, 2001, the Center transmitted to Melbourne IT, via e-mail, a Request for Registrar Verification in connection with the Complaint. On the same day, Melbourne IT transmitted to the Center, via e-mail, Reply from Registrar. This stated that the registrant is G.W. of 23 Oakfield Avenue, Glanmire. County Cork, Ireland, that the administrative contact for the domain name is Mm Mmmm of the same address, that the technical contact is Evan Weatherup of Elysium House, 126-128 New Kings Road, Parsons Green, SW6 4LZ, London, United Kingdom and that the Uniform Domain Name Dispute Resolution Policy ("the Policy") applies to this domain name.

(c) On February 28, 2001, the Center verified that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy of WIPO ("the Supplemental Rules") as required by Paragraph 4(a) of the Rules and Paragraph 5(a) of the Supplemental Rules. Payment in the required amount has been made by the Complainant to the Center.

(d) On March 1, 2001, the Center sent the Notification of Complaint and Commencement of Administrative Proceeding and Complaint to the Respondent by post/courier (with enclosures) and email (using details of the domain name registrant, administrative contact, technical contact, zone contact and billing contact). The Center advised that the Response was due by March 20, 2001.

(e) No Response was received from the Respondent by the due date of March 20, 2001. On March 22, 2001, Notification of Respondent Default was sent to the Respondent by email using the same contact details and methods as were used for the Notification of Complaint. No reply by the Respondent to the Notification of Respondent Default was received.

(f) Having received a Statement of Acceptance and Declaration of Impartiality from the Panelist, the Center transmitted to the parties a Notification of Appointment of Administrative Panel on April 2, 2001. The Projected Decision Date was April 15, 2001. The Panelist sought an extension in accordance with Paragraph 15(b) of the Rules.

(g) Having reviewed the communication records in the case file, the Panelist finds that the Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ all reasonably available means calculated to achieve actual notice to Respondent". As such, the Panelist’s decision is based upon the Complaint, the Policy, the Rules and the Supplemental Rules without the benefit of any Response from the Respondent.

 

4. Factual Background

- The Complainant

The Complainant is Wal-Mart Stores, Inc. It is the owner of US Trademark Registration Number 1,783,039, registered July 20, 1993, for the mark WAL-MART for retail department store services in class 42. A copy of the registration is attached to the Complaint (Annex C). This registration is based on first use of the mark on July 1, 1962. The Complainant also holds registrations for the WAL-MART mark in 46 countries. These rights pre-date the Respondent's registration of the domain name in issue.

The Complainant currently operates some 3000 stores and offices throughout the United States and 1000 outside America. It is stated to be the world's number one retailer with stores in the United States, Canada, Puerto Rico, Mexico, Brazil, Argentina, China, the United Kingdom, Indonesia, Germany and Korea.

The Complainant makes extensive use of the mark. The Complainant uses its WAL-MART mark on and in its discount retail stores, grocery stores, membership warehouse clubs, pharmacies, deep discount warehouse outlets, advertising throughout the world, websites, scholarship programs, telethons for children's hospitals, industrial development grants, environmental programs and a variety of community support programs. The Internet is a significant vehicle for the Complainant. It has websites located at, among other Internet addresses, <walmart.com>, <wal-mart.com> and <walmartstores.com>. These websites are an important part of the Complainants' corporate on-line identity and brand.

- The Respondent

According to the Better-Whois.com database, the Respondent's domain name <ewalmart.com> was registered on March 17, 2000, (Annex A to the Complaint). The site appears to be inactive.

 

5. Parties' Contentions

A. Complainant

The Complainant contends that the Respondent’s domain name <ewalmart.com> is confusingly similar to the trademark or service mark WAL-MART in which the Complainant has rights. Reliance is placed on the similarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. It is asserted that the second level domain name "ewalmart" is a combination of two words, "walmart" and "e". The first word "walmart" is said to be virtually identical in appearance and sound to the Complainant's mark WAL-MART. The Respondent has merely added the letter "e" before the mark.

Further, the Complainant states that the domain name is confusingly similar to the Complainant's WAL-MART mark because the mark is famous throughout the world. As such, the Complainant asserts that buyers would be likely to think that any site connected with the domain name originates from the Complainant. The Complainant states that the Respondent's domain name is likely to confuse customers and cause them to believe mistakenly that the domain name is associated with the Complainant's stores and, specifically, the Complainant's electronic shopping services provided through its on-line store. It notes that the letter "e", when added as a prefix to another word (such as in "e-mail"), denotes an electronic or on-line presence, typically through the offer of goods or services. The Complainant did not authorise the Respondent's use of any domain name.

Further, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name. Reliance is placed, first, on the fact that the Respondent is not currently using the domain name in connection with any on-going business. A search of websites found that the domain name is currently not being used by the Respondent (see Annex E to the Complaint). In addition, the Complainant has searched for and not found any evidence that the Respondent holds trademark rights to the mark "ewalmart" anywhere in the world.

The Complainant also contends that the domain name was registered in bad faith. It asserts on information and belief, that the Respondent registered the domain name with knowledge of the Complainant's rights in its mark. It also asserts that the Respondent has constructive notice of the Complainant's trademark rights by virtue of its registrations in the United States and Korea as well as in many other countries and the use of the trademark registration symbol when referencing the mark in print advertising and on websites. As such, it is asserted that the Respondent logically also had notice of the Complainant's registration for the domain name by reason of the availability of easy to use WHOIS directories and the fact that a business registrant would, at least, initially, seek registration of the .com version of a proposed domain name.

Further, the Complainant notes that the Respondent is not using the domain name with any on-going legitimate business. Its only action to date has been to passively hold the domain name since registration on March 16, 2000.

The Complainant also states that the Respondent has provided false contact information in registering the domain name. A search of Ireland's directories for "G.W." and "Mm Mmmm" suggests that these are false names. Further, the e-mail address of the administrative contact is not a working e-mail address. An e-mail sent to that address was returned as a failed delivery (see Annex F to the Complaint).

The Complainant contends that WIPO has recognised that the passive holding of a domain name that is confusingly similar to the mark of a complainant and the provision of false contact information may constitute "bad faith" under paragraph 4(b) of the Policy. Reference is made to the decisions in Hamburger Hamlets, Inc. v.Hallee Wachsmuth, WIPO Case No. D2000–1548 (citing Chernow Communications v. Jonathan D. Kimball, WIPO Case No. D2000-0119 and Mondich and American Wine Biscuits, Inc. v. Brown, WIPO Case No. D2000-0004.)

B. The Respondent

There is no evidence from the Respondent.

 

6. Discussion and Findings

Melbourne IT has confirmed that the Policy applies to the domain name. Paragraph 4(a) of the Policy requires the Complainant to make out three elements:

A. The "domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights"

The domain name in issue is <ewalmart.com>. The Complainant is the owner of the trademark WAL-MART. The Complainant has used the mark in connection with retail services as early as July 1, 1962. The Complainant also provides electronic shopping services through its on-line store under the WAL-MART mark. The Complainant also has websites at the addresses indicated above.

In these circumstances, the Panelist finds that the domain name <ewalmart.com> is "confusingly similar" to a trademark in which the Complainant has rights.

B. The Respondent "has no rights or legitimate interests in respect of the domain name"

There is no evidence that the Respondent has rights or legitimate interests in respect of the domain name.

If the Panelist finds any of the matters set out in Paragraph 4(c) of the Policy to be proved, based on the evaluation of all the evidence, that is said to demonstrate the Respondent's rights or legitimate interests to the domain name. There is no evidence of any use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services in terms of Paragraph 4(c)(i) of the Policy. Further, there is no evidence that the Respondent has been commonly known by the domain name, even if it acquired no trade mark or service mark rights in terms of Paragraph 4(c)(ii) of the Policy. Lastly, there is no evidence that the Respondent is making a legitimate non commercial fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the trade mark or service mark at issue in terms of Paragraph 4(c)(iii) of the Policy.

There is no other evidence on which the Panelist can rely suggesting that the Respondent has rights or legitimate interests in respect of the domain name.

In these circumstances, the Panelist finds that the Respondent has no rights or legitimate interests in respect of the Complainant's registered trademark.

C. The "domain name has been registered and is being used in bad faith"

If the Panelist finds evidence of any of the matters set out in Paragraph 4(b) of the Policy that shall be evidence of registration and use of a domain name in bad faith.

The matters set out in Paragraph 4(b) are as follows:

(i) Circumstances indicating that the Respondent has registered or has acquired the domain name for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or to a competitor of that Complainant for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name. There is no evidence of any communication between the Respondent and the Complainant about the domain name.

(ii) The Respondent has registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Complainant has engaged in a pattern of such conduct. There is no evidence on this point.

(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor. Again, there is no evidence on this point.

(iv) By using the domain name, the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent's web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation, or endorsement of the Respondent's web site or location, or of a product or service on the Respondent's web site or location. Again, there is no evidence on this point.

There is no positive evidence of any of these matters. The examples in Paragraph 4(b) however, are intended to be illustrative, rather than exclusive: see Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003. In that case, it was established that "inaction" could constitute bad faith use with reliance on the following factors:

- the respondent was in breach of the relevant Australian business names legislation by virtue of its failure to register its trading name.

- the respondent had provided false address information for the purposes of its domain name registration in breach of its warranty under paragraph 2(a) of the Policy.

- the complainant's trademark is one of the best known trademarks in Australia and it was inconceivable that the person or persons behind the respondent would not be aware of this fact.

- by virtue of the widespread use and reputation of the trademark in issue members of the public in Australia would believe that the entity owning the domain name which included that trademark was the complainant or in some way associated with the complainant.

- any realistic use of the domain name must misrepresent an association with the complainant and its goodwill resulting in passing off, breaches of Australian consumer protection legislation and trademark infringement.

Here, all but the first element is present. Its seems highly likely that the respondent has provided false address information. Further, the trademark WAL-MART is extremely well-known and it is very unlikely that the person or persons behind the Respondent would not be aware of this fact. In these circumstances, the Panelist accepts that there is likelihood that consumers would believe that the entity owning the domain name was the Complainant or in some way associated with the Complainant. Lastly, any realistic use of the domain name is likely to misrepresent an association with the Complainant and, as such, to be liable to constitute passing off. As such, the Panelist finds that the domain name has been registered and is being used in bad faith.

 

7. Decision

In accordance with the finding that the domain name is confusingly similar to a trademark or service mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name and that the domain name has been registered and is being used in bad faith, the Panelist orders that the domain name <ewalmart.com> be transferred to the Complainant.

 


Mary Padbury
Sole Panelist

Dated: June 29, 2001

 

Источник информации: https://internet-law.ru/intlaw/udrp/2001/d2001-0277.html

 

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