Wal-Mart Stores, Inc. v. Private Whois mywalmartcom.com
Claim Number: FA1108001402076
Complainant is Wal-Mart Stores, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Private Whois mywalmartcom.com (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mywalmartcom.com>, registered with Internet.bs Corp.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 5, 2011; the National Arbitration Forum received payment on August 9, 2011.
On August 12, 2011, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <mywalmartcom.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. registration agreement and has thereby agreed to resolve domain disputes brought by third-parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 12, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 1, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@mywalmartcom.com. Also on August 12, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 6, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <mywalmartcom.com> domain name is confusingly similar to Complainant’s WALMART mark.
2. Respondent does not have any rights or legitimate interests in the <mywalmartcom.com> domain name.
3. Respondent registered and used the <mywalmartcom.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Wal-Mart Stores, Inc., operates discount department stores and warehouse stores. Complainant owns the WALMART mark which it uses for the advertising, marketing, and operation of its retail stores and related services. Complainant holds a number of trademark registrations for its WALMART mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,612,345 registered April 28, 2009).
Respondent, Private Whois mywalmartcom.com, registered the <mywalmartcom.com> domain name on July 16, 2010. The disputed domain name resolves to a fake review page with third-party links unrelated to Complainant’s retail store business.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant contends that it has rights in the WALMART mark. A complainant can prove rights in a mark by registration with a trademark authority. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Metropolitan Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). It is unnecessary for a complainant to register its mark within the country of respondent as long as trademark rights have been established in some jurisdiction. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Here, Complainant has a number of trademark registrations for its WALMART mark with the USPTO (e.g., Reg. No. 3,612,345 registered April 28, 2009). Therefore, the Panel concludes that Complainant has established rights in the WALMART mark, according to Policy ¶ 4(a)(i), through its USPTO registration.
Complainant also maintains that Respondent’s <mywalmartcom.com> domain name is confusingly similar to its WALMART mark. The disputed domain name incorporates the WALMART mark entirely and adds the generic terms “my” and “com,” which the Panel decides do not sufficiently alter the disputed domain name to avoid a finding of confusing similarity. See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity); see also America Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to the complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to the complainant’s mark). The disputed domain name also adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the affixation of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Jerry Damson, Inc. v. Texas Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel holds that Respondent’s <mywalmartcom.com> domain name is confusingly similar to Complainant’s WALMART mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that the elements of Policy ¶ 4(a)(i) are satisfied.
Complainant asserts that Respondent lacks rights and legitimate interests in the disputed domain name. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel stated, “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.” Complainant has made a prima facie case in the instant proceeding. Due to Respondent’s failure to respond to the allegations in the Complaint, the Panel may assume that Respondent has no rights or legitimate interests in the <mywalmartcom.com> domain name under Policy ¶ 4(a)(ii). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). However, the Panel will examine the record to determine whether Respondent does have rights or legitimate interests pursuant to Policy ¶ 4(c).
Complainant maintains that Respondent is not commonly known by the disputed domain name. The WHOIS information identifies Respondent as “Private Whois mywalmartcom.com.” Even though Respondent lists itself as “mywalmartcom.com” in the registrant information, it provides no affirmative evidence that it is commonly known by the <mywalmartcom.com> domain name. Complainant also claims, and Respondent has offered no evidence to the contrary, that Respondent does not operate a business or other organization under the disputed domain name and has no trademark rights within the disputed domain name. Given these findings, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”).
Respondent’s <mywalmartcom.com> domain name resolves to a website pretending to be a review site of Complainant and purporting to offer discounts and information about Complainant’s retail services. The resolving website includes third-party links to commercial sites unrelated to Complainant which likely generate click-through fees for Respondent. The Panel holds that Respondent’s use of the disputed domain name to host a website pretending to be associated with Complainant and using Complainant’s WALMART mark in order to divert Internet users is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See American Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).
The Panel finds that the elements of Policy ¶ 4(a)(ii) are satisfied.
Respondent likely collects click-through fees from the third-party links at the disputed domain name. Internet users searching for Complainant online may find Respondent’s website due to the confusingly similar disputed domain name and become confused as to Complainant’s affiliation with, or sponsorship of, the domain name and featured content. Respondent presumably attempts to profit from this confusion through the receipt of click-through fees. The Panel concludes that registration and use of the <mywalmartcom.com> domain name for this purpose constitutes bad faith under Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Respondent’s disputed domain name resolves to a website that presents as a review page for Complainant’s business. The website displays Complainant’s WALMART mark in numerous places, as well as a similar color scheme as Complainant’s retail store brand. Respondent’s attempt to use a confusingly similar disputed domain name to pass itself off as an official website of Complainant is evidence of bad faith under Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).
The Panel finds that the elements of Policy ¶ 4(a)(iii) are satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mywalmartcom.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 13, 2011
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