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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Wal-Mart Stores, Inc. v. Terry Davies

Case No. D2006-0031

 

1. The Parties

The Complainant is Wal-Mart Stores, Inc., Arizona, United States of America represented by Welsh & Katz, Ltd, United States of America.

The Respondent is Terry Davies, Calgary, Canada.

 

2. The Domain Name and Registrar

The disputed domain name <wal-mart-superstore.com> (the “Disputed Domain Name”) is registered with Schlund & Partner.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2006. On January 12, 2006, the Center transmitted by email to Schlund & Partner a request for registrar verification in connection with the Disputed Domain Name. On January 16, 2006, Schlund & Partner 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. Schlund & Partner notified the Center on January 27, 2006, that the Disputed Domain Name will be placed in Registrar Hold and Registrar Lock Status and will not expire on March 27, 2006, so that the Administrative Procedure can continue. 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 January 25, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 14, 2006. The Respondent did not file a Response. Accordingly, the Center notified the Respondent’s Default on February 16, 2006.

The Center notified the appointment of Michael D. Cover as the sole panelist in this matter on February 23, 2006. 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 in these administrative proceedings is Wal-Mart Stores, Inc. The Complainant states that it is the world’s largest retailer and operates approximately 1,321 Wal-Mart stores and 1,761 Wal-Mart Supercenters. The Complaint also makes extensive use of the Internet and operates websites at various locations including “www.walmart.com”, “www.wal-mart.com”, “www.walmartstores.com”, “www.walmartsuperstore.com” and others.

The Complainant owns various United States Federal Registered Trademarks, including No. 1783039 WAL-MART, although it does not state for which classes this trade mark is registered. The first Wal-Mart was opened in 1962, and the first Wal-Mart Supercenter was opened in 1988; for the financial year ended January 31, 2005, sales of the Complainant amounted to some $285.2 billion US. This is all set out in Annex C to the Complaint.

The Respondent is Terry Davies of Calgary, Canada and nothing more is known about the Respondent.

It appears that the Disputed Domain Name displays, or at least had displayed at one time links through SEDO to various websites offering gift cards to multiple commercial businesses. It appears that SEDO rewards registrants on a basis for each link provided on the website.

On September 2, 2005, the Complainant sent a Cease and Desist letter to the Respondent, through the Complainants’ representatives, Welsh & Katz Ltd. It appears that no response was received and the Complainant has no reason to believe that the Respondent did not receive the Cease and Desist letter.

 

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Disputed Domain Name is likely to be confused with the Complainant’s distinctive service mark, WAL-MART. The Complainant maintains that it is well-settled that the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar and refers to two UDRP Decisions in that regard. The Complainant goes on to argue that the additional terms in a domain name should not affect a finding that a domain name is identical or confusingly similar.

The Complainant then submits that the Respondent has no rights or legitimate interests with respect to the Disputed Domain Name. The Complainant points to there apparently being no rights on the part of the Respondent to any trademark consisting of the term WALMART in any country, that the Respondent does not commercially use the term WALMART in the course of trade or in a bonafide offering of goods and services but does, nonetheless, use the term WALMART for commercial gain. The Complainant also asserts that the Respondent is not commonly known by the Disputed Domain Name and that, quite to the contrary, the Respondent is using the Disputed Domain Name to misleadingly divert the Complainant’s consumers to its website and to tarnish the Complainant’s business.

The Complainant believes that the Disputed Domain Name was registered in bad faith. The Complainant submits that the Respondent must have registered the Disputed Domain Name with knowledge that the Complainant held rights in and to its WAL-MART mark and that the Respondent had constructive notice of the Complainant’s trademark rights, by virtue of not only the Complainant’s various service mark registrations in the United States, but also the Complainant’s use of the trade mark registration symbol when referencing the mark on its website at “www.walmart.com” and in other media.

The Complainant refers to the fact that the Respondent is using the Disputed Domain Name to link through to SEDO and on to various websites offering gift cards to multiple commercial businesses and that it is the case that the Respondent receives compensation from SEDO. As a result, the Complainant maintains it is clear that the Respondent had adopted the Disputed Domain Name as its domain name for its own commercial gain and specifically to attract internet users to its website with a view to creating a likelihood of confusion with the Complainant’s mark.

The Complainant refers to the Cease and Desist letter, already mentioned in this Decision, and requests the Panel to transfer the Dispute Domain Name to the Complainant.

B. Respondent

The Respondent did not respond.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to:

- “Decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these rules and any rules in principles of law that its deems applicable.”

The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:

- That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- 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 by the Respondent in bad faith.

A. Identical or Confusingly Similar

This question raises two issues:

(1) Does the Complainant have rights in a trade mark or service mark; and

(2) Is the Disputed Domain Name identical or confusingly similar to such trade mark or service mark.

The Complainant has rights in what it states to be its distinctive service mark, WAL-MART, through its United States Registered Trade Mark No. 1783039 WAL-MART. It has also established rights through its use of Walmart Supercenter.

It is well-established that additional terms in a domain name should not affect finding that a domain name is identical or confusingly similar, not least in circumstances, as is the case here, where the additional terms are of a totally non-distinctive nature. As to both points, see CBS Broadcasting Inc., f/k/a CBS Inc v. Nabil Z. Aghioul, WIPO Case No. D2004-0988. On the basis of the material before it, the Panel finds that the Complainant has established that the Disputed Domain Name is confusingly similar to a trademark and service mark in which it has rights.

Accordingly, the Panel finds for the Complainant on this issue.

B. Rights or Legitimate Interests

The Respondent has not filed a Response and so it has not been able to demonstrate its rights or legitimate interest to the Disputed Domain Name in accordance with paragraph 4(c) of the Policy. The Complainant has addressed each of these issues in the Complaint. The Panel accepts that the Respondent is not commonly known by the Disputed Domain Name and is using the Disputed Domain Name to misleadingly divert the Complainant’s consumers to its website and to tarnish the Complainant’s business.

The Panel finds that the Respondent has not established rights or legitimate interests to the Disputed Domain Name. On the basis of the material before it in the case file, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that various circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Disputed Domain Name in bad faith:

“(i) Circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or servicemark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Domain Name; or

(ii) You have registered the domain name in order to prevent the owner of the trade mark or servicemark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of your website or location or of a product or service on your website or location.”

On the basis of the material before it, the Panel accepts that the Respondent is using the Disputed Domain Name to link through to a third party website and on to various further third party websites offering gift cards to multiple commercial business and that it is the case that the Respondent received compensation from that first third party website. Further, it is inconceivable that the Respondent was unaware of the Complainant and its rights, in view of the Complainant’s huge size and profile. See Media West-CPI, Inc. et al v. Unasi Inc., WIPO Case No. 2005-1336.

Accordingly, the Panel finds for the Complainant on the issue of registration and use in bad faith under paragraph 4(a) (iii) and 4(b)(iv) of the Policy.

 

7. Decision

For the foregoing reasons, the Panel decides:

(a) That the Disputed Domain Name <wal-mart-superstore.com> is confusingly similar to a trademark and a servicemark in which the Complainant has rights;

(b) That the Respondent has no rights or legitimate interest in respect of the Disputed Domain Name; and

c) That the Disputed Domain Name has been registered and is being used in bad faith.

For all the foregoing reasons, in accordance with paragraphs 4 of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <wal-mart-superstore.com> be transferred to the Complainant.

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Michael D. Cover
Sole Panelist

Dated: March 9, 2006