National Arbitration Forum

 

DECISION

 

Wal-Mart Stores, Inc. v. Power of Choice Holding Co.

Claim Number: FA0601000621292

 

PARTIES

Complainant is Wal-Mart Stores, Inc. (“Complainant”), represented by Uleses C. Henderson, of Foley & Lardner LLP, 2029 Century Park East, 35th Floor, Los Angeles, CA 90067.  Respondent is Power of Choice Holding Co. (“Respondent”), 11735 S. Laflin Ave, Suite 220, Chicago, IL 60643-3055.

 

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <wallmartwholesale1.com>, <wallmartwholesale2.com> and <wallmartwholesale3.com>, registered with Enom, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 9, 2006; the National Arbitration Forum received a hard copy of the Complaint on January 9, 2006.

 

On January 10, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <wallmartwholesale1.com>, <wallmartwholesale2.com> and <wallmartwholesale3.com> domain names are registered with Enom, Inc. and that the Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On January 10, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 30, 2006 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@wallmartwholesale1.com, postmaster@wallmartwholesale2.com and postmaster@wallmartwholesale3.com> by e-mail.

 

A Response was received after the deadline for response on January 31, 2006, and not in hard copy thus, the Forum does not consider the Response to be in compliance with ICANN Rule #5(a).  However, the Panel has determined it will consider the Response.  See Bd. of Governors of the Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) (finding that a panel may consider a response which was one day late, and received before a panelist was appointed and any consideration made); see also Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (“[R]uling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process. . .").

 

On February 3, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.

 

RELIEF SOUGHT

 

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

A. Complainant

            1.         Respondent’s <wallmartwholesale1.com>, <wallmartwholesale2.com> and <wallmartwholesale3.com> domain names are confusingly similar to Complainant’s Wal-Mart mark.

 

            2.         Respondent does not have any rights or legitimate interests in the <wallmartwholesale1.com>, <wallmartwholesale2.com> and <wallmartwholesale3.com> names.

 

            3.         Respondent registered the <wallmartwholesale1.com>, <wallmartwholesale2.com> and <wallmartwholesale3.com> domain names in bad faith.

 

B. Respondent

 

            1.         There is no trademark violation with the subject domain names.

 

            2.         There is no “confusion” because the name is spelled differently, and the Complainant does not sell anything wholesale.

 

            3.         Respondent created the names used on the websites, therefore has all rights to use them.  There is a “fair” usage of the names for commercial purposes.

 

            4.         Registration is necessary for Internet commerce; however, the names were not used in “bad faith.”

 

FINDINGS

Complainant has established a prima facie case establishing all three elements required under the ICANN Policy.  Respondent has failed to adequately rebut any of the allegations; hence, the panel has determined that the requested relief should be granted.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

 

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the 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.

 

Identical and/or Confusingly Similar

 

Complainant established rights in the WAL-MART mark by registering it with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,783,039 issued July 20, 1993).  See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the USPTO creates a presumption of rights in a mark); see also Innomed Tech., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).

 

The <wallmartwholesale1.com>, <wallmartwholesale2.com> and <wallmartwholesale3.com> domain names are confusingly similar to Complainant’s WAL-MART mark because the domain names incorporate Complainant’s mark in its entirety and add the term “wholesale,” the letter “l,” the numbers “1,” “2,” and “3,” and the generic top-level domain “.com.”  The Panel finds that such minor additions to Complainant’s registered mark are insufficient to negate the confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 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 Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the mark ICQ and is therefore confusingly similar); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).

 

Rights or Legitimate Interests

 

Once Complainant makes a prima facie case for Policy ¶ 4(a)(ii), the burden shifts to Respondent to establish rights or legitimate interests in the disputed domain names.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that the respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once the complainant asserts that the respondent does not have rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

 

Respondent is not authorized or licensed to register or use domain names that incorporate Complainant’s mark.  Moreover, Respondent is not commonly known by the <wallmartwholesale1.com>, <wallmartwholesale2.com> or <wallmartwholesale3.com> domain name.  The Panel finds that Respondent is not commonly known by the <wallmartwholesale1.com>, <wallmartwholesale2.com> and <wallmartwholesale3.com> domain names and concludes that Respondent does not have rights or legitimate interests in the domain names pursuant to Policy ¶ 4(c)(ii).  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where a respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the mark precede the respondent’s registration; and (3) the respondent is not commonly known by the domain name in question).

 

Furthermore, Respondent is using the <wallmartwholesale1.com>, <wallmartwholesale2.com> and <wallmartwholesale3.com> domain names to redirect Internet users interested in Complainant’s WAL-MART services to Respondent’s websites that feature products and services that compete with Complainant.  The Panel finds that Respondent’s use of domain names that are confusingly similar to Complainant’s WAL-MART mark to redirect Internet users interested in Complainant’s products and services to Respondent’s websites is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the respondent's sole purpose in selecting the domain names was to cause confusion with the complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use).

 

Registration and Use in Bad Faith

 

The Panel finds that Respondent is using the <wallmartwholesale1.com>, <wallmartwholesale2.com> and <wallmartwholesale3.com> domain names for Respondent’s commercial gain by diverting Internet users interested in Complainant’s WAL-MART products and services to Respondent’s websites featuring products and services that compete with Complainant.  The Panel finds that Respondent’s use of domain names that are confusingly similar to Complainant’s mark to attract Internet users to Respondent’s websites for commercial gain by creating a likelihood of confusion with Complainant’s mark is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); 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); see also eBay, Inc v. Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where the respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to the respondent’s site).

 

 

 

Furthermore, the Panel finds that Respondent registered the confusingly similar domain names in order to promote products and services that compete with Complainant.  The Panel finds that Respondent registered the domain names primarily for the purpose of disrupting the business of a competitor, which evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competed with the complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also Gorstew Ltd. v. Satin Leaf, Inc., FA 95414 (Nat. Arb. Forum Oct. 4, 2000) (transferring <sandalsagency.com> and <sandalsagent.com> from the respondent travel agency to the complainants, who operated Sandals hotels and resorts).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <wallmartwholesale1.com>, <wallmartwholesale2.com> and <wallmartwholesale3.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

                                                                       

                                                                        John J. Upchurch, Panelist

                                                                        Dated:  February 16, 2006