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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wal-Mart Stores, Inc. v. John Clark

Case No. D2004-0636

1. The Parties

The Complainant is Wal-Mart Stores, Inc., Bentonville, Arkansas, United States of America, represented by Venable, LLP, Washington, DC, United States of America.

The Respondent is John Clark, Dallas, Texas, United States of America, represented by Robert S. Preece, Dallas, Texas, United States of America.

2. The Domain Name and Registrar

The disputed domain name <walmartsurplus.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2004. On August 16, 2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On August 16, 2004, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 the Respondent of the Complaint, and the proceedings commenced on August 18, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 7, 2004. On September 7, 2004, the Respondent’s representative requested an extension of time to file its response. On the same date, the Center forwarded the Request to the Complainant for comments. The Complainant had no objections. Accordingly, the Center granted an extension until September 20, 2004 to file a Response. The Response was filed with the Center on September 20, 2004.

The Center appointed Sandra A. Sellers as the sole panelist in this matter on September 30, 2004. 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.

On September 24, 2004, Complainant filed a Request to file a supplemental filing in support of the Complaint. Respondent then filed a Request to file its Reply to Complainant’s Response. The Complainant opposed Respondent’s Request. Though the Panel is not required to accept these supplemental filings, the Panel has determined to do so and has reviewed them as part of the record.

4. Factual Background

Complainant is the world’s largest retailer. In the United States, Wal-Mart operates nearly 1400 WAL-MART retail stores and over 1500 WAL-MART suppercenters.

Complainant owns the famous service mark WAL-MART for retail services in 46 countries. Complainant’s rights in each of these 46 countries predate Respondent’s registration of the <walmartsurplus.com> domain name. Complainant’s registrations are based on first use of the mark as early as July 1, 1962.

Respondent John Clark is an individual involved in the surplus business. On July 7, 2004, he registered the domain name in issue. The domain name leads to a website that gives an introduction to the surplus business, and offers for sale the “Surplus Power Program.” The “Surplus Power Program” contains contact information for the contractors that handle Wal-Mart surplus and salvage goods, as well as other helpful information about processing, transporting and reselling these goods. The “Surplus Power Program” can be purchased through the web site for US$57.00.

5. Parties’ Contentions

A. Complainant

Complainant contends that the domain name is identical or confusingly similar to Complainant’s famous service mark, and that there has been an instance of actual confusion. Complainant also contends that Respondent has no rights or legitimate interests in the domain name, and is using it for commercial gain. Complainant finally contends that Respondent registered the domain name with knowledge of Complainant’s service mark rights, and uses the domain name with the intent to attract visitors to its web page for commercial gain.

B. Respondent

Respondent contends that the domain name is not confusingly similar to Complainant’s famous mark¹, and that the web site contains a disclaimer that disavows any affiliation with Complainant. He states that he has rights and legitimate interests in using the domain name as fair use because the website is for the promotion of a book about how to purchase surplus goods from Wal-Mart Stores, Inc. Finally, he contends that his registration and use of the domain name is not in bad faith because of fair use, and that there is nothing to mislead visitors.

6. Discussion and Findings

Pursuant to Policy paragraphs 4(a)(i-iii), for the Complainant to prevail and have the disputed domain name transferred to it, the Complainant must show that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in the disputed domain name; and

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

A. Identical or Confusingly Similar

It is undisputed that the Complainant is the owner of the service mark WAL-MART. It also is undisputed that WAL-MART is a famous mark.

The disputed domain name, <walmartsurplus.com>, consists of the Complainant’s service mark to which the generic term “surplus” has been added. Adding a generic term to a well-known mark does not sufficiently distinguish the domain name from Complainant’s mark. This view has been expressed repeatedly by other Panels, including those involving the WAL-MART mark. See, e.g. Wal-Mart Stores, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0620; Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056; Wal-Mart Stores, Inc. v. Mike Flynn, WIPO Case No. D2002-1020.

Accordingly, this Panel finds that the domain name <walmartsurplus.com> is confusingly similar to the Complainant’s famous service mark, WAL-MART, and meets the first criterion of Policy Paragraph 4(a).

B. Rights or Legitimate Interests

The crux of this matter is whether Respondent has shown that he has a legitimate interest and fair use in using Complainant’s service mark as part of his domain name, due to the fact that his “Surplus Power Program” informs readers how to buy surplus goods from Wal-Mart Stores, Inc.

In essence, Respondent claims that its use of the domain name is legitimate because it is protected by the “nominative fair use” doctrine. Pursuant to this doctrine, use of a trademark to identify the trademarked goods in a commercial context does not violate the trademark owner’s rights if it meets the following three requirements: (a) the product cannot be readily identifiable without using the mark; (b) the defendant uses only so much of the mark as reasonably necessary to identify the product; and (c) the defendant does nothing that would, in conjunction with its use of the mark, suggest sponsorship or endorsement by the trademark holder. Allen-Edmonds Shoe Corporation v. Takin’ Care of Business, WIPO Case. No. D2002-0799; citing New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302, 308 (9^th Cir. 1992); Toho Co. v. William Morrow & Co., 33 F.Supp.2d 1206, 1211 (D.C. Cal. 1998).

In this case, Respondent fails to meet at least the first two tests of the nominative fair use doctrine. Respondent’s own actions show that his product CAN be readily identifiable without using the Complainant’s mark, due to the fact that he titled his book “Surplus Power Program.” Similarly, the first part of his website discusses surplus goods generally before finally indicating that his program will enable one to buy surplus or salvaged goods that originated from Wal-Mart. Consequently, Respondent’s use of Complainant’s service mark as a domain name is not reasonably necessary to identify Respondent’s product, “Surplus Power Program.” Respondent easily could use a generic or descriptive domain name and still sell his book. See also The Rival Company v. DVO Enterprises, WIPO Case No. D2002-0265.

Respondent relies upon a recent WIPO decision, Dr. Ing. h. c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481, in which the Panel found that the Respondent had legitimate interests in using Complainant’s mark, PORSCHE, as part of the domain names <porschebuy.com> and <porsche-buy.com>. In that case, the Respondent used the domain name to operate a free service which brought together buyers and sellers of used PORSCHE cars. I find that that case is distinguishable from our current situation, because Respondent John Clark clearly operates his site for commercial gain, and has chosen a domain name that incorporates the Complainant’s service mark for the purpose of enticing customers to buy Respondent’s book.

Accordingly, Respondent does not have any rights or legitimate interests in using Complainant’s service mark as part of his domain name.

C. Registered and Used in Bad Faith

This Panel finds that Respondent registered and used the domain name in bad faith. Respondent knew of Complainant’s famous service mark prior to registration and during the full time of use of the domain name. Further, as set forth above, Respondent’s registration and use is not protected under the nominative fair use doctrine.

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 <walmartsurplus.com> be transferred to the Complainant.

Sandra A. Sellers
Sole Panelist

Dated: October 15, 2004

¹ Indeed, Respondent states that “there is no doubt that Wal-Mart is one of the strongest marks in the world. That is conceded.”