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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wal-Mart Stores, Inc. v. Jason Banks

Case No. D2007-0266

 

1. The Parties

The Complainant is Wal-Mart Stores, Inc., Debra Hughes, Assistant General Counsel, United States of America, represented by Ballard Spahr Andrews & Ingersoll, LLP, United States of America.

The Respondent is Jason Banks, United States of America.

2. The Domain Names and Registrar

The disputed Domain Names:

<swalmart.com>

<waljmart.com>

<walmartf.com>

<walmzart.com>

<wwwwwalmart.com>

are registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2007. On February 26, 2007, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain names at issue. On February 27, 2007, Wild West Domains, Inc. 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 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 March 7, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 28, 2007.

The Center appointed Lawrence K. Nodine as the sole panelist in this matter on April 5, 2007. 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 United States Registration Nos. 1,322,750; 1,783,039; and 2,891,003 for the service mark WAL-MART.

Complainant owns the domain name <walmart.com> which it registered on February 23, 1995.

Complainant was established in 1962 as a local specialty store and is currently the world’s largest retailer.

Respondent owns the following disputed Domain Names:

- <swalmart.com> – registered on May 2, 2006;

- <waljmart.com> – registered on May 2, 2006;

- <walmartf.com> – registered on May 2, 2006;

- <walmzart.com> – registered on May 2, 2006; and

- <wwwwwalmart.com> – registered on October 6, 2003.

5. Parties’ Contentions

A. Complainant

With respect to paragraph 4(a)(i) of the Policy, Complainant contends:

It has used its trademark and service mark, WAL-MART, since at least as early as 1962;

It is the owner of United States Registration Nos. 1,322,750; 1,783,039; and 2,891,003 for the service mark WAL-MART;

The disputed Domain Names are virtually identical and confusingly similar to the WAL-MART marks in which Complainant has well-established rights;

Four of the disputed Domain Names, namely, <walmartf.com>, <swalmart.com>, <waljmart.com>, and <walmzart.com> consist of domain names that are identical to the WAL-MART mark, with the exception of a minor typographical change. In each of these domain names, the typographical change involves adding a single letter, which is located adjacent to the correct key on the keyboard.

With respect to the fifth domain name at issue, namely, <wwwwwalmart.com>, it is well-established that the addition of additional “w”s to the beginning of a third party’s mark is a form a typosquatting. In this case, the disputed Domain Name adds four (4) “w”s to the WAL-MART mark. Panels have consistently held that the addition of four (4) “w”s to a third party’s mark, rather than just the three (3) that form the “www” prefix, does not obviate the identity or confusing similarity between the disputed domain name and the third party mark, because it merely represents a misspelling of the “www” prefix.

With respect to paragraph 4(a)(ii) of the Policy, Complainant contends:

Respondent has never been authorized by Complainant to use the WAL-MART marks;

The Respondent has no legitimate interests in the Domain Names given that the Domain Names were registered after the Complainant had registered its WAL-MART marks and had established extensive goodwill;

The disputed Domain Names do not reflect the Respondent’s common name;

All of the disputed Domain Names lack any substantive content of their own. Four (4) of the disputed Domain Names, namely, <walmartf.com>, <swalmart.com>, <waljmart.com>, and <walmzart.com> redirect the user to the Complainant’s website, located at “walmart.com”. The remaining disputed Domain Name, <wwwwwalmart.com>, directs the user to a website that provides links for products and services that are competitive with the Complainant’s products and services.

None of the disputed Domain Names confer upon Respondent any legitimate interest in the Domain Names.

With respect to paragraph 4(a)(iii) of the Policy, Complainant contends:

That the Registrant has registered the disputed Domain Names in bad faith according to the paragraph 4(b)(iv) of the Policy:

“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.”

That Respondent is operating websites at the disputed Domain Names that (1) direct the user to link farms that offer links to goods and services that are competitive with Complainant’s; or (2) redirect users to the Complainant’s website, which is located at “www.walmart.com”. As a result, Respondent is either receiving traffic to the link farm, or revenue each time users are directed to the Complainant’s website.

Respondent has a history of registering domain names that are confusingly similar to the marks of others, as evidenced by his more than 2,900 domain registrations and the multiple UDRP proceedings that have been decided against Respondent. Such a pattern of conduct constitutes per se bad faith registration and use under the Policy. Similarly, Respondent has engaged in typosquatting with respect to the disputed Domain Names, which also constitutes per se bad faith under the Policy.

B. Respondent

Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

The Respondent’s default does not automatically result in a decision in favor of Complainant. Complainant must establish each of the three elements required by paragraph 4(a) of the Policy. While a panel may draw negative inferences from the Respondent’s default, paragraph 4 of the Policy requires Complainant to support its assertions with actual evidence in order to succeed in a proceeding under the Policy. The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 (<vanguar.com>, Transfer); Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465 (<berlitzsucks.com>, Transfer); Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383 (<brookehogan.com>, Denied).

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and (iii) the Domain Names have been registered and are being used in bad faith. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

Given the existence of the above-identified United States trademark registrations for the mark WAL-MART, and Complainant’s alleged use of the mark since 1962, the Panel finds that Complainant has trademark rights in the WAL-MART trademark.

The Panel also finds that each of the five Domain Names, namely, <walmartf.com>, <swalmart.com>, <waljmart.com>, <walmzart.com> and <wwwwwalmart.com>, are confusingly similar to Complainant’s WAL-MART marks. “WAL-MART” is the dominant portion of Complainant’s registered marks and of the disputed Domain Names. The <walmartf.com>, <swalmart.com>, <waljmart.com>, and <walmzart.com> Domain Names differ from Complainant’s registered WAL-MART marks only in that they contain the “.com” gTLD and an extra letter as a result of typosquatting. The substitution of the letter “f” in <walmartf.com>, the letter “s” in <swalmart.com>, the letter “j” in <waljmartcom> and the letter “z” in <walmzart.com> represent typosquatting. This close misspelling renders the Domain Names confusingly similar to Complainant’s trademark. Alta Vista Co. v. Yomtobian, WIPO Case No. D2000-0937 (“domain names <altabista.com> and <altaista.com> are confusingly similar to trademark ALTA VISTA”). In addition, the “.com” gTLD is without legal significance. See Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127 (April 22, 2000) (“the addition of the generic top-level domain (gTLD) name ‘.com’ is … without legal significance since use of a gTLD is required of domain name registrants”).

The <wwwwwalmart.com> disputed Domain Name differs from Complainant’s registered WAL-MART marks only in that it contains the “.com” gTLD, and four (4) extra “w”s.

The use of four “w”s in a domain name does not prevent a finding of likelihood of confusion. See Dell Computer Corporation v. High Traffic Domains inc., and High TrafficPro-Life Domains Only $999/Pro-Life Domains RockBottom Prices, WIPO Case No. D2003-0282 (finding the <wwwwdell.com> domain name confusingly similar to the DELL mark).

The first requirement of paragraph 4(a) of the Policy is, therefore, satisfied.

B. Rights or Legitimate Interests

In order for the Respondent to demonstrate rights or legitimate interests in the Domain Names, it must show:

“(i) before any notice to you of the dispute, your 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; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

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, the 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 Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (<croatiaairlines.com>, Transfer); Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110 (<belupo.com>, Transfer).

The Panel finds that:

Respondent did not refute Complainant’s allegations that it has not authorized the Respondent to use its trademark WAL-MART or to incorporate the trademark into any domain name;

Complainant has never granted Respondent a license to use the WAL-MART marks;

Respondent has never been known by the Domain Names;

Respondent is not using the Domain Names in connection with a bona fide offering of goods or services. In fact, persons visiting the site are presented with what appear to be links related to Complainant as well as to its competitors; and

Respondent is not making a legitimate noncommercial or fair use of the Domain Names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel finds that Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the disputed Domain Names. Respondent has not refuted any of the Complainant’s allegations. Therefore, the second requirement of paragraph 4(a) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets forth four criteria for bad faith registration and use of domain names:

“(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 service mark 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 trademark or service mark 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.”

The Panel finds that the Complainant’s mark was widely known well in advance of the Respondent’s registration of the Domain Names and Respondent, therefore, must have known of Complainant’s mark at the time of the registration of the Domain Names. Further, the Panel finds, based on the unrefuted allegations, that Respondent’s contact information is false. Providing false contact information is an indication of bad faith registration. See Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362 (finding bad faith, in part, because respondent provided false contact details to Register.com, Inc.).

Thus, the Panel finds that the Domain Names were registered in bad faith.

The Panel finds that Respondent has also purposefully misspelled Complainant’s -trademark. Misspellings alone are “sufficient to prove bad faith under paragraph 4(b)(iv) of the Policy because Respondent has used these names intentionally to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark”. See AltaVista Co. v. Yomtobian, WIPO Case No. D2000-0937.

In addition to the above bad faith use, Respondent appears to have registered over 2,900 domain names, many of which incorporate the trademarks of others and has been the subject of at least three (3) previous UDRP complaints concerning thirty-six (36) different domain names.

The Panel notes that Complainant alleges that the disputed Domain Names <walmartf.com>, <swalmart.com>, <waljmart.com>, and <walmzart.com> redirect the user to the Complainant’s website, located at <walmart.com>. The Panel does not see from the exhibits provided by Complainant, that these four domain names redirect to Complainant’s website. Rather, at the time that this Complaint was filed and at the time of this decision, the Domain Names do not appear to redirect to any page. They each appear to resolve to a website by the same name as the disputed Domain Names, and each of the four websites, plus the website found at <wwwwwalmart.com>, are parked pages containing at least some links to competitor’s products.

Thus, the Panel concludes that the Domain Names are being used in bad faith pursuant to Policy, paragraph 4(b)(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.”

The third requirement of paragraph 4(a) of the Policy is, therefore, satisfied.

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 names, <swalmart.com>, <waljmart.com>, <walmartf.com>, <walmzart.com> and <wwwwwalmart.com>, be transferred to the Complainant.


Lawrence K. Nodine
Sole Panelist

Dated: April 19, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-0266.html

 

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