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Wal-Mart Stores, Inc. v. Jessica Dozier
Case No. D2006-0635
1. The Parties
The Complainant is Wal-Mart Stores, Inc., Bentonville, Arkansas, United States of America, represented by Welsh & Katz, Ltd., United States of America.
The Respondent is Jessica Dozier, Fairburn, Georgia, United States of America.
2. The Domain Name and Registrar
The disputed domain name
<walmartevents.com> (the “Domain Name”) is registered with
Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2006. On May 24, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On May 24, 2006, 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 May 31, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 20, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2006.
The Center appointed Douglas M. Isenberg as the sole
panelist in this matter on June 28, 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 states that it is “the world’s largest retailer”, operating approximately 1,200 Wal-Mart stores and more than 2,000 Wal-Mart Supercenters in the United States and approximately 2,600 Wal-Mart Stores and Supercenters internationally. The Complainant states that it makes “extensive use” of the Internet, operating websites with the domain names <walmart.com>, <wal-mart.com>, <walmartstores.com> and <walmart-events.com>.1
The Complainant states that it is the owner of, and it provides a copy of the certificate of registrations for, the following federal trademark registration in the United States, among others: WAL-MART, Reg. No. 1,783,039 (registered July 20, 1993).
The Domain Name was created on October 16, 2005.
The Complainant states that it sent a demand letter
to the Respondent regarding the Domain Name on May 4, 2006, a copy of which
was provided as an exhibit to the Complaint, and that the Respondent received
but never replied to the letter.
5. Parties’ Contentions
The Complainant contends that the Domain Name is “likely to be confused with the Complainant’s famous and distinctive service mark WAL-MART,” that “[t]here is clear similarity between the Registrant’s domain name and the Complainant’s mark”, that “[i]t 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 that “Respondent’s domain name is likely to confuse consumers and cause them to mistakenly believe that the domain name <www.walmartevents.com> is associated with Wal-Mart, especially in light of the fact that Complainant operates its own website at www.walmart-events.com”.
The Complainant contends, as set forth in more detail below, that “Respondent has no rights or legitimate interests with respect to the domain name <www.walmartevents.com>”.
The Complainant submits that the Domain Name was registered in bad faith and implies (but does not explicitly state, other than in a section heading) that the Domain Name is being used in bad faith. The Complainant further contends, among other things, that the Respondent had constructive notice of the Complainant’s trademark rights; that the Respondent is using the Domain Name “to advertise links for various websites which sell products and services”; that the Respondent uses the Complainant’s trademarks on its website, which “falsely implies to consumers that the Respondent is in some way affiliated with the Complainant and/or that the Complainant has given the Respondent authority to use these marks”; and that “some of the links identified on the Respondent’s website as affiliated with the Complainant have content and offer services that are of an explicit nature,” including advertisements for escort services, breast enhancements and a weight-loss service that boasts “Look Sexy Naked”.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
Pursuant to the Policy, the Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith.(Policy, Paragraph 4(a)).
A. Identical or Confusingly Similar
Based upon the U.S. trademark registrations cited by the Complainant, including U.S. Reg. No. 1,783,039, it is obvious that the Complainant has rights in the WAL-MART mark.
As to whether the Domain Name is identical or confusingly similar to the Complainant’s WAL-MART mark, the relevant comparison to be made is with the second-level portion of the Domain Name only (i.e., “walmartevents”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. See, e.g., The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. FA0008000095491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address”); see also United States Patent and Trademark Office’s Trademark Manual of Examination Procedures (3d ed.) § 1215.02 (“neither the beginning of the URL (‘http://www.’) nor the TLD have any source-indicating significance”).
As previously stated by this Panel in Wal-Mart Stores, Inc. v. Consolidated
Motors, Inc., WIPO Case No. D2006-0547, the
Panel agrees with the decision in Wal-Mart Stores, Inc. v. Consolidated Motors,
Inc./Van Flury, WIPO Case No. D2006-0085,
in which the panel there wrote:
“Respondent’s disputed domain name incorporates Complainant’s
mark in its entirety, adding only the descriptive terms “auto sales”
and the generic top-level domain “.com”. Neither of these additions
to Complainant’s mark negates the confusing similarity between the disputed
domain name and Complainant’s mark. See Arthur Guinness Son & Co.
(Dublin) Ltd. v. Healy/BOSTH, WIPO Case
No. D2001-0026 (March 23, 2001), (finding confusing similarity where the
domain name in dispute contains the identical mark of the complainant combined
with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil,
WIPO Case No. D2000-1409 (December 9,
2000), (finding that “[n]either the addition of an ordinary descriptive
word… nor the suffix ‘.com’ detract from the overall impression
of the dominant part of the name in each case, namely the trademark SONY”
and thus the Policy, paragraph 4(a)(i) is satisfied).”
Similarly in this case, the addition of the word “events” to the Complainant’s trademark does not negate the confusing similarity between the Domain Name and the Complainant’s trademark. Therefore, the Panel is convinced that the Complainant has proven the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant alleges that “Respondent has no rights or legitimate interests with respect to the domain name <www.walmartevents.com>. To the best of the Complainant’s knowledge and belief, the Respondent has no rights to any trademark consisting of the term WALMART in any country. The Respondent does not commercially use the term WALMART in the course of trade or in connection with a bona fide offering of goods and services, but does use the term WALMART for commercial gain. The Complainant believes that the Respondent is not commonly known by its registered domain name. Instead, the Respondent is using the domain name <www.walmartevents.com> to misleadingly divert the Complainant’s consumers to its website and to tarnish the Complainant’s business. The Complainant clearly intends to profit from his registration of this domain name without having any legitimate interests or legitimate rights to the famous WAL-MART mark.”
Under the Policy, “a complainant is required to make out an initial prima
facie case that the respondent lacks rights or legitimate interests. Once
such prima facie case is made, respondent carries the burden of demonstrating
rights or legitimate interests in the domain name. If the respondent fails to
do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
“WIPO Overview of WIPO Panel
Views on Selected UDRP Questions,” paragraph
(visited July 7, 2006).
Accordingly, as a result of the Complainant’s allegations and without any evidence of the Respondent’s rights or legitimate interests in the Domain Name, the Panel is satisfied that the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.(Policy, paragraph 4(b)).
In this case, the Complainant has not alleged with specificity in its Complaint which, if any, of these four factors may exist and evidence bad faith, although it implies that the Respondent has acted in bad faith by “intentionally attempt[ing] to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.” (Policy, paragraph 4(b)(iv)). Specifically, the Complainant indicates that the Respondent’s use of the Domain Name in connection with a website that provides “links for various websites which sell products and services” is evidence of bad faith.
Web pages of the type used by the Respondent in connection with the Domain
Name – sometimes known as an “online domain monetization system,”
a “monetized parking page” or a “paid link farm service”
– have become an “increasingly popular way for domain name registrants
to profit from their activity with little effort.” Wal-Mart Stores,
Inc. v. Whois Privacy, Inc., WIPO Case
No. D2005-0850. Such uses do not necessarily create bad faith. For example,
“where the links on such a page are not competitive with or disruptive
to a relevant trademark owner, or confusing to visitors, such activity may not
violate the Policy.” Id.
Here, however, the Respondent’s web page contains links to goods and services that are competitive with the Complainant; the Respondent’s web page contains the Complainant’s trademark with links to the Complainant’s website; and the Respondent’s web page contains links to adult services (while the Complainant apparently does not offer such services). As a result, the Respondent’s use of a monetized parking page in this manner is bad faith under the Policy.
Therefore, the Panel is satisfied that the Complainant has proven the third
element required by the Policy.
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 <walmartevents.com> be transferred to the Complainant.
Douglas M. Isenberg
Dated: July 7, 2006
1 The Panel independently observed that the domain name <walmart-events.com> was created on October 26, 2003.