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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wal-Mart Stores Inc. v. Marketing Total S.A.
Case No. D2007-0419
1. The Parties
The Complainant is Wal-Mart Stores Inc., Bentonville, Arkansas, United States of America, represented by Haynes and Boone, LLP, United States of America.
The Respondent is Marketing Total S.A., Charlestown, West Indies, Saint Kitts and Nevis.
2. The Domain Names and Registrars
The disputed domain name <walmartcorporation.com> is registered with DomainDoorman.
The disputed domain name <walmartcredircard.com> is registered with CapitolDomains,
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2007, by email and a hard copy was received March 20, 2007.
On March 20, 23, and 24, 2007, the Center transmitted by email to CapitolDomains, LLC and DomainDoorman, LLC, a request for registrar verification in connection with the domain names at issue. On March 24, 2007, CapitolDomains and DomainDoorman transmitted by email to the Center their respective verification responses confirming that the Respondent is listed as the registrant and providing the contact details. 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 26, 2007. In accordance with the Rules, paragraph 5(a), the due date for the Response was April 15, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 16, 2007.
The Center appointed J. Christopher Thomas, Q.C. as
the sole panelist in this matter on April 24, 2007. 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.
The Panel finds that it was properly constituted.
4. Factual Background
The Complainant is the world’s largest retailer, and one of the fifteen largest companies in the world, with more than $340 billion in sales last fiscal year. It operates 3,443 stores under the WAL-MART mark throughout the United States and another 2,760 retail units outside of the United States.
The Complainant owns rights in the WAL-MART mark in several countries. It holds several registrations that evidence its rights in this mark, including, for example, United States Registration Number 1,322,750, registered on February 26, 1985, based on the use of this mark as early as July 1, 1962. This and the other registrations to which the Complainant has referred are presently live, valid and existing on the Principal Register.
The Complainant also offers credit card services under
the mark WAL-MART CREDIT CARD. It makes use of this mark in, for instance, the
domain name <walmartcreditcard.com>. This has been the subject of previous
WIPO domain name disputes.
The Complainant also employs the mark WAL-MART and variations thereof on the Internet, using such domain names as <walmart.com>, <wal-mart.com> and <walmartstores.com>.
On or about October 31, 2006, the Complainant became
aware that the Respondent had registered <walmartcorporation.com> and
formed the view that the content infringed upon the WAL-MART marks. The domain
name resolved to a “link farm” containing “Sponsored Links”.
“Related Links” and “Popular Categories”, incorporating
the WAL-MART marks into the “Related Categories”. The links resolve
to other link farms and third-party websites that advertise products and services
that are similar and competitive to those offered by the Complainant. The site
also triggered “pop-up” banners promoting third-party websites.
The Complainant has not authorized the Respondent to use any of the WAL-MART marks, nor has the Respondent ever sought its permission or authorization to use the marks as a trade or service mark or URL.
A cease and desist demand was made of the Respondent by means of a letter, dated November 2, 2006, sent by certified post to the Respondent. Confirmation of the letter’s delivery was subsequently given to the Complainant.
On November 20, 2006, the Complainant discovered that the Registrant had also registered the domain name <walmartcredircard.com>. This domain name resolved in the same fashion as that for <walmartcorporation.com> discussed above.
As of March 15, 2007, the date prior to the filing
of the Complaint, the Complainant had received no response to its cease and
desist letter of November 2, 2006.
5. Parties’ Contentions
The domain names are confusingly similar or identical to the Complainant’s well-known WAL-MART marks, Policy paragraph 4(a)(i)
The Complainant asserts that both contested domain names are confusingly similar or identical to the Complainants’ well-known WAL-MART marks: Policy paragraph 4(a)(i). This is based on the fact that both incorporate the Complainant’s well-known and distinctive mark WAL-MART. The addition of the words “corporation” and “credircard”, respectively, does not preclude a finding of confusing similarity. Nor does adding a TLD to a trademark preclude such a finding.
As for the misspelled “credircard”, this
likewise does not preclude a finding of confusingly similar to the Complainant’s
“www.walmartcreditcard.com”. This “typosquatting”, as
held in a previous WIPO decisions, is evidence that the typosquatted domain
name was intended to be confusing.
The Respondent has no rights or legitimate interests in respect of either of the domain names, Policy paragraph 4(a)(ii)
It is contended further that where a website at a contested domain includes a collection of generic words linking to online stores offering products competitive to the Complainant’s products, the website does not constitute a bona fide offering of goods or services. The contested websites do precisely that. Similarly, a domain name that resolves to a link farm is also not a bona fide offering of goods or services capable to giving rise to a right or legitimate interest in the domain name.
There is no evidence that the Respondent ever had any bona fide interest in establishing any legitimate business or activities under the domain names or any variant thereof, nor to the Complainant’s knowledge has it ever used the domain names for any bona fide, non-commercial use.
Nor has the Complainant ever consented to the Respondent’s use of the WAL-MART marks and the Respondent has never responded to the Complainant’s demand that it desist from using the marks.
The Respondent registered the domain names and is using them in bad faith, Policy paragraph 4(a)(iii)
The Complainant makes a number of arguments in support of this contention. Most importantly, it asserts that the Respondent has used the two domain names to provide links to websites that sell competitive products and services to consumers who are likely to become confused as to whether the Respondent is affiliated in any way with the Complainant. In this respect, the Respondent has received a financial benefit from the diversion of potential customers of the Complainant who have been diverted to its websites. It is seeking to capitalize on the goodwill associated with the Complainant’s marks. This is acting in bad faith.
There is additional evidence of bad faith in that the Respondent knowingly violated its registration agreements with the Registrars by infringing the Complainant’s marks, it has a history of cybersquatting, and it has failed to respond to the Complainant’s communications.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
In order for the Panel to decide to grant the remedy requested by the Complainant under the Policy, it is necessary that the Complainant prove, as required by paragraph 4(a) of the Policy, in respect of each of the contested domain names, that:
(i) the contested domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has 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.
In the present case the Panel is of the view that the record contains abundant evidence of each of the three requisite elements.
First, the Complainant claims and the Panel has verified to its satisfaction that the Complainant is the owner of trademarks worldwide for the marks WAL-MART and WAL-MART CREDIT CARD. The Panel also verified that the Complainant operates websites at “www.walmart.com” and “www.walmartcreditcard.com”.
The domain names in dispute, <walmartcorporation.com> and <walmartcredircard.com>, are confusingly similar to the Complainant’s trademarks. They differ from the Complainant’s marks only in that one includes the generic word “corporation” and the other contains the misspelled “credircard”. The combination of “Wal-mart” and both of these words creates composite words that are confusingly similar to the WAL-MART and WAL-MART CREDIT CARD marks, respectively.
The contested domain names are thus confusingly similar to marks in which the Complainant has rights. The Complainant has plainly fulfilled the requirements of Paragraph 4(a)(i) of the Policy.
Second, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the domain names.
The Complainant has proven this. There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services.
The Respondent has no apparent connection with Wal-mart, nor has it been licensed or authorized by Wal-mart to use the disputed domain names. To the contrary, the Complainant has instructed it to cease and desist using the WAL-MART mark.
The disputed domain names are avidently not the Respondent’s name, and there is no evidence that the Respondent is commonly known by either of these two disputed domain names.
Nor is the Respondent making a legitimate non-commercial or fair use of the disputed domain names.
The Panel agrees with the Complainant therefore that the Respondent has no rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.
Third, it must be shown that the domain names at issue have been registered and are being used in bad faith.
The Respondent’s domain names serve to divert users to websites containing sponsored links. By adding the word “corporation” and exploiting a misspelling of “credit card” by selecting a contiguous letter on the commonly used English “qwerty” keyboard, the Respondent has misled consumers by diverting Internet traffic away from Wal-mart’s websites in an attempt to generate business by luring potential customers to the Respondent’s own websites. In sum, a clear case of “typosquatting”.
In the circumstances, the Panel has no doubt in concluding that the domain
names were registered and used in bad faith.
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 <walmartcorporation.com> and <walmartcredircard.com> be transferred to the Complainant.
J. Christopher Thomas, Q.C.
Dated: May 8, 2007