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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Wal-Mart Stores, Inc. v. Larus H. List

Case No. D2008-0193

 

1. The Parties

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

The Respondent is Larus H List, of Iceland, represented by Graham Ross, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

The disputed domain name <wa1mart.com> is registered with Tucows.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2008. Between February 7, 2008 and between February 13, 2008, the Center transmitted by email to Tucows requests for registrar verification in connection with the domain name at issue. On February 13, 2008, Tucows transmitted by email to the Center its verification response 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 February 14, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 5, 2008. The Response was filed with the Center on March 5, 2008.

The Center appointed Desmond J. Ryan as the sole panelist in this matter on March 27, 2008. 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 March 31, 2008, Complainant made a supplemental filing with a request that it be considered. The Panel, having considered the filing and objections raised by Respondent, decided to receive the filing on the terms of the attached Procedural Order of April 10, 2008. By that Order the Panel allowed Respondent until April 17, 2008 for the filing of a reply and extended the time for decision until April 24, 2008. Respondent’s reply was filed on April 17, 2008.

 

4. Factual Background

Complainant operates a supermarket chain and commenced operation in 1962 and claims to operate over 3,000 stores and centers throughout the United States, and a further 2,700 in 14 overseas countries. It owns a number of US registered trademarks consisting of or including word “Wal-Mart” dating from 1985 and claiming first use in commence in 1962. Complainant is the registrant of the domain name <walmart.com> and operates a website at that domain name.

Respondent is an artist resident in Iceland. Respondent registered the disputed domain name on March 26, 2005 and is also the registrant of the domain name <larushlist.com>.

On May 23, 2007, Complainant’s lawyers sent a letter of demand to Respondent demanding, inter alia, transfer of the domain name.

Respondent replied on May 25, 2007 in the following terms:

“Dear Mr. Winterfeldt,

I resive your lether to day 25 may 2007 and see you ar representing Wal-Mart, and teling my of the simular to my domain. Wa1mART.com ART WORK.

Please tel Wal-mArt.com of my Wa1mART.com art work, and you can see on my home page, som of my art, I am a fineart artist.

Is Wal-mART.com buying fine art? ART

I am an arthist and showing and seling my Art and painthings and using the WW.net, Please tel my how you can see other ten the Art in this? I am seling My art Like Wa1mART.com as your (Campbells Soup) of your fine Pop arthist 1928-1987 Andy Warhol. You tenk Mr. Andy Wahol he have own the Campbells Soup company?

Please, if Wal-mART.com have intrest in buying? I am wiling to sell. “

The Complaint was filed on February 6, 2008.

 

5. Parties’ Contentions

A. Complainant

In the Complaint as filed Complainant contends that the disputed domain name is nearly identical to Complainant’s <walmart.com> domain name and its WAL-MART trademarks which are well-known and in which it has established rights. Complainant contends that the one character difference, the substitution of the numeral “1” for the letter “l” does not sufficiently distinguish the domain name to avoid confusing similarity. Complainant cites Telstra Corporation Limited v. Norman Fry, WIPO Case No. D2001-0757.

Complainant contends that Respondent has no rights or legitimate interests with respect to the disputed domain name and has never been licensed or authorized by Complainant to use the domain name, that the domain name does not reflect a name by which Respondent is commonly known and that the domain name redirects to a commercial website offering goods in direct competition with Complainant.

Complainant also contends that the last sentence of Respondent’s letter of May 25, 2007 represented an offer to sell the domain name.

Complainant further contends that the domain name was registered and is being used in bad faith and in particular that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. Complainant asserts that as of May 17, 2007, the disputed domain name was redirected to “www.overstock.com”, an online merchandising site offering a range of goods including homeware, sportswear, jewellery, watches, electronics, clothing, books, music, movies and games as well as other items. Complainant includes in the Complaint screen shots and printouts from the “www.overstock.com” site in support of its contention.

Complainant exhibits what it asserts is a screen shot of the website at the disputed domain name on May 17, 2007 showing the home page of overstock.com.

B. Respondent

Respondent contends that the disputed domain name is not identical or confusingly similar to Complainant’s WAL-MART trademark. Respondent contends that as the numeral “1” and the letter “l” are at almost the opposite ends of a standard keyboard, inadvertent typing of the disputed domain name instead of Complainant’s “Walmart” domain name would be highly unlikely to occur. Respondent contends that save for the one decision in the Telstra Case (supra) all other domain name cases in which the transfer has been ordered have been cases in which either the substituted letters have been in close proximity on the standard keyboard or there has been intentional use of a likely misspelling of the domain name. Respondent distinguishes the Telstra Case on the basis that it was undefended and the Panel found for Telstra, not on the basis that there would be an inadvertent mistyping but rather that the disputed domain name had potential for confusing use as a hyperlink.

Respondent claims that he has rights or legitimate interests in respect of the domain name based on one of his paintings named “Wa1m-ART” which depicts the Mona Lisa as a man and is “a commentary about what he sees as a cultural hegemony of the United States and commercial greed which dominance is best reflected in the business policies and practices of the Complainant” and includes “comment on the US approach to war, seen as a device to protect capitalism, hence the play on words of “War” and “Art”.

Respondent contends that Complainant has misconstrued the last sentence of Respondent’s letter of May 25, 2007, “Please if Wal-mART have interest in buying / I am willing to sell” and that the sentence evidenced Respondent’s willingness to sell his art, not his domain name. Respondent further contends that no items are offered for sale on the website, and even if they were, they are not items that can be purchased from Complainant.

With regard to Complainant’s claim that the domain name redirected to a website at “www.overstock.com”, Respondent states that he is not aware of any such redirection, did not set it up and only became aware of it on receipt of Complainant’s lawyer’s letter of demand. Respondent further asserts that he has not used the domain name other than in respect of his artwork and that he has not received income from it and does not intend to do so. He further contends that the number of hits on the domain name is very low and produces a printout from “www.domaindirect.com” as evidence. Respondent attributes the relatively higher number of hits in January and February 2008 to publicity associated with these proceedings.

Respondent submits a signed, unsworn, statement reading:

“Statement:

I Larus H List artist, and owner of the domain Wa1mArt.com make this statement with my signature.

I have not used this domain name Wa1mART in other then with my, this special Artwork, as shown, ther have not ben no trafick or hits to this domain Wa1mART.com, un til now when Wal-Mart start this, and it went in the news, and I have not register on the net for interest of making money from it on the net, and I never have net incom of money from this domain. And it is not my plan or intrest to have internet incom of money from this domain and I wil not do so.

Akureyri Iceland 01 Mars 2008 “

Finally, Respondent refers to the registrations of the domain name <wa1mart.com> in other domains which, he says, are not objected to by Complainant, and he attributes Complainant’s attack on his domain name to the critical comments on his website.

Respondent alleges reverse domain name high jacking.

 

6. The Further Filings

A. Complainant

In its reply to the Response (hereinafter called Complainant’s “further filing”), Complainant contends as follows:

- There is no evidence that the painting on which Respondent bases his claim to right or legitimate interest is in fact called Wa1m-Art. The printouts to which Respondent refers merely quote Respondent’s own assertions and his account of these proceedings. Further Complainant asserts that in the images provided there is no indication that at either the site of the domain name or Respondent’s own site, the painting or any commentary on it was ever displayed. Complainant exhibits screen shots of the Respondent’s website at July 18, 2007 which do not show the painting. Complainant asserts that the website was redesigned between February 2008 and March 12, 2008 to include the painting.

- Complainant filed, as evidence of Respondent’s knowledge of the framing of the “www.overstock.com” website at the disputed domain name, a duly sworn declaration by Jeff Boyce who states on oath that he is an Associate General Counsel of Overstock.com.Inc (“Overstock”) and that to his personal knowledge Respondent was a registered participant in his company’s “Affiliate Network” program and that Respondent received revenue from his participation in the program. Mr Boyce further declares that Overstock recently became aware that Respondent engaged in the practice of “framing” on several domain names registered in his name, including the disputed domain name. He declares that the practice of framing is prohibited by his company’s terms and conditions and that in consequence of the framing activities of Respondent, the Respondent’s affiliate status has been terminated.

- Complainant produces WhoIs printouts as evidence of Respondent’s ownership of nine domain names, including the disputed domain name and asserts that until termination of Respondent’s Affiliate status by Overstock, five of the nine names either framed or redirected to Overstock’s website. Complainant further asserts that since March 2008 five of Respondent’s domain names have redirected to “www.medifocus.com” which has an affiliate pay-out program similar to, and administered by the same company as Overstock’s network affiliate program. Complainant exhibits screen shots of Respondent’s <bonusstock.com> and <80offretail.com> domain names framing Overstock’s homepage.

- Complainant cites and exhibits the decision in Overstock.com, Inc. v. Larus H. List, WIPO Case No. D2004-0215, in which Respondent was ordered to transfer to Overstock.com, Inc the domain name <0verstock.com>, in which the numeral “0” had been substituted for the letter “O”.

A. Respondent

- In his reply (hereinafter called his “reply”), Respondent purports to withdraw the agreement set out in Part VIII of the Response in view of the Center’s refusal to appoint an alternative panelist and invites the Panel to withdraw. Respondent asserts that its further objection is based not on prejudice but on conflict. Respondent states:

“Given that no complaint of prejudice (over the final Ruling on the Complaint) can exist if the Filing is accepted, that fact alone creates a conflict of interest between the interests of the UDRP process in a fair and correct outcome and the interest of the Panelist/WIPO in avoiding criticism and a potential claim for allowing an unfair process. How can the Respondent have trust and confidence that the latter interest will not influence the decision of the Panelist, particularly as we have withdrawn Section VIII waiver of liability?”

- Respondent denies that the disputed domain originally framed a page of Overstock.com and submits a signed, but not sworn, statement reading:

“From Larus H List 14 April 2008.

I Larus H List have seen this filling and is not rigt at all.

I have not used my properity Wa1mArt.com domain to direkt to

Overstock.com”.

I have also not framed my site to display Overstock.com” and have not

sold eny goods from this side Wa1mART.com and have only told tru

of all be for.

I use this domain only for this artwork and this is a name of it –

Wa1mART.com.

Larus H List artist.”

- Respondent contends that Complainant has produced no probative evidence of his framing of the Overstock website and that the evidence of Mr Boyce is hearsay. He further contends that the screen shots put in evidence by Complainant are not evidence that Respondent used the domain name to frame the Overstock website because it is possible for the address bar to display a name which has no connection with the content of the main browser window. Respondent exhibits screen shots taken by Respondent’s counsel purporting to show that the disputed domain name can be made to appear to frame the “www.overstock.com” webpage if “overstock” is typed into “the Google window within the browser header”. Respondent’s counsel states that “I do not know how this came about and do know that this process does not always occur...”.

- Respondent contends that he never denied any affiliation with Overstock, merely that he denied any link between the disputed domain name and Overstock. Respondent further contends that there is no evidence that he received any money from Overstock for the use of the domain name.

 

7. Discussion and Findings

Respondent has requested the Center to appoint an alternative Panel and has invited the Panel to withdraw. The Center has declined that request and the Panel likewise declines. The Panel has, in accepting its appointment, made a declaration of independence and impartiality as required by Rule 7 of the Rules.

Respondent asserts in his reply that his objection to this Panel is based not on prejudice but on a conflict of interest between “the interests of the UDRP process in a fair and correct outcome and the interest of the Panelist/WIPO in avoiding criticism and a potential for allowing an unfair process”. The Panel can find no basis on which such conflict can reasonably be seen to exist.

Contrary to Respondent’s assertion, it is common practice, both in the courts and in arbitral proceedings, for adjudicators to read and to make interlocutory rulings on the admissibility of evidence before proceeding to hear the substantive case. This is almost invariably the case where the court is required to decide whether or not a document is entitled to privilege, see, by way of example only, Kennedy v. Wallace, [2004] FCA 332. The mere fact that Panel has, in accordance with its powers under Rule 10 of the Rules, read and decided to admit a further filing cannot of itself give reasonable apprehension of prejudice, bias or conflict of interest. As stated by the learned Panelist David H. Bernstein in Britannia Building Fund v. Britannia Fraud Prevention, WIPO Case No. D2001-0505, “…. a party challenging a panelist’s appointment must present specific evidence showing that a panelist may be biased. Moreover, it is not sufficient if such evidence creates some hint, insinuation or innuendo of doubt; rather the evidence must show “justifiable doubt” – that is that a reasonable, objective person would be justified in doubting the panelist’s impartiality […]”.

The Panel is independent and impartial and finds nothing in the evidence or assertions of Respondent to raise justifiable doubt as to its independence or impartiality or as to the existence of any conflict of interest. Whilst it would be wrong for the Panel to proceed in the face of substantial objection it is equally wrong to yield to a frivolous or tenuous objection. See Locabail (UK) Ltd v Bayfield Properties Ltd, [2000] QB 451. The object of the Policy is to provide a speedy and efficient process for the resolution of domain name disputes. The Panel should not allow this process to be frustrated or attenuated by objections as to competence unless there is a clear and reasonable basis for “justifiable doubt”. No such basis has been demonstrated here.

The Panel therefore declines to withdraw and proceeds to its Decision.

In order to succeed Complainant must establish

(i) that the domain name is identical or confusingly similar to a name, trade mark or service mark in which Complainant has rights;

(ii) that 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.

The onus in each case is on the Complainant.

A. Identical or Confusingly Similar

Visually, the domain name is substantially identical to the word “walmart” and confusingly similar to Complainant’s WAL-MART trademark registrations. Respondent submits however, that regard must be had to the fact that the numeral “1” and the letter “l” are at almost opposite ends of a standard keyboard. Accordingly, Respondent contends, the possibility of inadvertently typing the one for the other is very small. This is not therefore, Respondent argues, a case of “typo squatting”. The Panel does not find this argument convincing. First, not all Internet users are touch typists. Many may operate on the “hunt and peck” system whereby the relevant key is sought out visually before being struck. Secondly, not all Internet access is by a full size standard keyboard. It may be via a hand-held device with a small keypad and that keypad will not necessarily be “QWERTY”. The objective similarity of the domain name to Complainant’s trademarks is therefore not negatived by the keyboard location of the “l” and the “1”.

In any event, the Panel on a direct comparison finds that the domain name is confusingly similar to Complainant’s WAL-MART trademark.

The Complainant has satisfied the first requirement of the Policy.

B. Rights or Legitimate Interests

Respondent claims a legitimate interest in the domain name on the basis that in 2005 he produced a painting which he named “Wa1m-ART” depicting the Mona Lisa as a man. Respondent says the painting is a commentary on commercial greed and the cultural hegemony of the United States and that the title is a play on the words “War” and “Art”.

By its further filing Complainant says as to this:

- Respondent produces no evidence to support his claim that his painting was called Wa1m-ART; the exhibited printout of the painting does not show the name of the painting or of the artist whilst the online newspaper printouts refer to the name only in the context of these proceedings and based on Respondent’s own statements.

- the domain name is not “Wa1m-art”, the alleged name of the painting, but “wa1mart”.

- the website at the domain name did not previously show the painting or any other commentary regarding Complainant. Complainant produces printouts from Respondent’s website on July 18, 2007 which does not show or refer to the painting, and March 16, 2008, which does show the painting and refers to it by name.

Respondent does not refer to these issues in his reply save that in paragraph 17 of the reply, dealing with Complainant’s reason for its further filing, he asserts that the reference in his letter of May 25, 2007 to “Is Wal-Mart buying fine art?” estops Complainant from pleading that it did not know that Respondent “claimed (sic) the domain name after his work of art”. The Panel is unable to draw such inference.

The Panel finds no hard, compelling evidence of Respondent’s use of the word Wa1m-ART prior to these proceedings.

In any event, whether or not Respondent calls his painting Walm-ART (whether it be with the letter “I”, or the number “1”, or otherwise) is not determinative of whether he has rights or legitimate interests in the domain name. It no more gives him rights or legitimate interests in a domain name which imitates Complainant’s mark than would the fact that he is an admirer of Andy Warhol give him rights or legitimate interests in “Campbells Soup”.

There is no compelling evidence that prior to the Complaint he was making legitimate non-commercial use of the domain name or that he was commonly known by it. Nor is there any evidence that prior to notice to him of the dispute he was using or preparing to use the domain name in connection with a bona fide offering of goods or services. In fact he denies this, stating that “No items, not even the works of art, are offered for sale on the site”.

The Panel finds that Respondent has no rights or legitimate interest in the domain name.

C. Registration and Use in Bad Faith

Complainant’s allegation of bad faith use and registration is based first on its contention that Respondent’s e-mail of May 25, 2007 evidences an intent to sell the domain name to Complainant or a competitor. Respondent disputes this interpretation of the letter, contending that it asked whether Complainant wanted to buy his art, not his domain name. The letter is ambiguous in this regard but on balance the Panel concludes that the circumstances exemplified in paragraph 4(b)(i) of the Policy have not been proven.

Complainant further relies on the circumstance set out in paragraph 4(b)(iv) of the Policy, namely that: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location”.

In support of this ground Complainant relies principally on a screen shot taken on May 17, 2007, showing the domain name “framing” the website of Overstock, an online seller of goods competing with those of Complainant, and the sworn evidence of Jeff Boyce, Associate General Counsel of Overstock as to Respondent’s participation in its Affiliate Program.

The provenance and probative value of this evidence is hotly contested on the grounds set out above. Respondent denies that he is responsible for using the domain name to frame the Overstock site. He says he does not know how it occurred and he denies receiving any money in respect of it. His counsel purports to have conducted an experiment showing how the appearance of framing can be caused by third parties. He says he does not know how this happens and that he knows that it does not occur every time his stated procedure is followed.

On the other hand, Complainant produces evidence that Respondent is the owner of several domain names and shows screen shots of two of them framing the Overstock webpage. The sworn evidence from Mr. Boyce shows that Respondent was a member of Overstock’s Affiliate Program and received payment for participation in that program. Respondent does not deny this but denies that any money was received in respect of the disputed domain name. Mr Boyce further declares, on oath, that Respondent’s participation in Overstock’s Affiliate Program was terminated by Overstock due to breach of its terms and conditions by framing of Overstock’s website.

The burden of proof in the proceedings in on Complainant and the standard of proof is the civil standard, i.e. “the balance of probability”. Faced with documentary and sworn evidence from Complainant and recently constructed, unsworn allegations and speculative and inconclusive hypotheses from Respondent, the Panel finds Complainant’s evidence credible and persuasive.

The Panel therefore finds that Respondent has intentionally used the domain name to attract users for commercial gain by creating confusion with Complainant and the requirement of paragraph 4(a)(iii) of the Policy is satisfied.

The Panel finds that, the domain name is confusingly similar to Complainant’s trademarks, Respondent has no rights or legitimate interests in the domain name and that he registered and is using the domain name in bad faith.

 

8. 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 <wa1mart.com> be transferred to the Complainant.

---

Desmond J. Ryan AM
Sole Panelist

Dated: April 23, 2008