Walmart Apollo, LLC v. SAMUEL COHEN
Claim Number: FA2304002041909
Complainant is Walmart Apollo, LLC (“Complainant”), represented by Erica Goven, Nebraska, USA. Respondent is SAMUEL COHEN (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <walmartconsultingexperts.com> (“Domain Name”), registered with GoDaddy.com, LLC.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to Forum electronically on April 26, 2023; Forum received payment on April 26, 2023.
On April 27, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <walmartconsultingexperts.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 April 27, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 17, 2023 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@walmartconsultingexperts.com. Also on April 27, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On March 22, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
Complainant is the world’s largest merchandise and grocery retailer. Complainant asserts rights in the WALMART mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,322,750, registered February 26,1985). The <walmartconsultingexperts.com> domain name is identical or confusingly similar to the WALMART mark because the Domain Name incorporates the WALMART mark in its entirety and adds the generic terms “consulting” and “experts”, as well as the generic top level domain (“gTLD”) “.com”.
Respondent does not have rights or legitimate interests in the <walmartconsultingexperts.com> domain name. Respondent is not licensed or authorized to use the WALMART mark and is not commonly known by the Domain Name. Respondent also does not use the Domain Name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent is deceiving internet users into believing Respondent is affiliated with Complainant at the website the Domain Name resolves to (“Respondent’s Website”).
Respondent registered and uses the <walmartconsultingexperts.com> domain name in bad faith. Respondent has attempted to attract internet users for commercial gain by creating a likelihood of confusion as to the source of Respondent’s Website. Respondent is diverting internet users to the Respondent’s Website to offer competing services and commercially benefit. Respondent has failed to respond to a cease and desist letter. Additionally, Respondent had actual knowledge of Complainant’s rights in the WALMART mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the WALMART mark. The Domain Name is confusingly similar to Complainant’s WALMART mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and has used the Domain Name in bad faith.
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."
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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the WALMART mark under Policy ¶ 4(a)(i) through the registration of the mark with the USPTO (Reg. No. 1,322,750, registered February 26,1985). Registration with the USPTO can sufficiently establish rights in a mark under Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a national trademark authority).
The Panel finds that the Domain Name is confusingly similar to the WALMART mark as it incorporates the entire WALMART mark while adding the “.com” gTLD and the additional terms “consulting experts”. Domain names which incorporate an entire mark are usually considered confusingly similar, while adding a generic term and a gTLD is generally insufficient to create a distinction between a complainant’s mark and a disputed domain name under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the WALMART mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS information of record lists “SAMUEL COHEN” as the registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name is presently inactive but prior to the commencement of the proceeding resolved to the Respondent’s Website which purported to offer consulting services to individuals and businesses seeking to use the Complainant’s Wal-Mart marketplace. In the absence of any Response it is difficult, from the content of the evidence itself, to determine if the Respondent’s Website was a scam (in which case Respondent would lack rights or legitimate interests) or an actual website offering consulting services for the Wal-Mart marketplace under the name “Walmart Consulting Experts”. In the event that it is the latter, it is necessary to consider the question of fair use.
The doctrine of nominative fair use was articulated by the Ninth Circuit Court of Appeals decisions in New Kids on the Block v. News American Publishing, Inc., 971 F.2d. 302 (9th Cr. 1992), and Toyota Motor Sales, U.S.A., Inc .v. Tabari, 610 F.3d. 1171 (9th Cir. 2010). In Tabari, the plaintiffs were auto brokers who registered and used the domain names <buy-a-lexus.com> and <buyorleaselexus.com.> The court in this case held that “momentary uncertainty” does not preclude the nominative use of another’s mark in a domain name, provided that a truthful use is being made to describe the domain name registrant’s business.” 610 F.2. at 1179.
These principles have been applied by UDRP panels. The leading decision is Oki-Data, in which the respondent was a reseller of the complainant’s OKIDATA products. The respondent registered and used the domain name <okidataparts.com> in connection with that business. The panel in that case concluded that this use could be a bona fide offering of goods or services within the meaning of the Policy if the following conditions were satisfied:
The respondent must actually be offering the goods or services at issue,
The respondent must use the site to sell only the trademarked goods (otherwise there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods),
The site itself must accurately disclose the respondent’s relationship with the trademark owner, and
The respondent must not try to ‘corner the market’ in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
Other panels have concluded that applying the nominative fair use doctrine could also be appropriate in cases other than those involving a reseller of branded parts, provided that the respondent operated a business genuinely revolving around the trademark owner’s goods or services, see National Association for Stock Car Auto Racing, Inc. v. Racing Connection/The Racin’ Connection, Inc., D2007-1524 (WIPO January 28, 2008) and YETI Coolers, LLC v. Ryley Lyon / Ditec Solutions LLC. FA 1675141 (Forum July 11, 2016). The Oki Data test has also been applied for registrants offering repair services, see General Motors LLC v. Flashcraft, Inc DBA Cad Company D2011-2117 (WIPO January 30, 2012)
In the present case, the Panel is not satisfied by the evidence before it, that the Respondent is making a bona fide offering of goods and services or a fair use of the Domain Name and hence Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. In the absence of a Response, it is not clear that the Respondent’s Website actually offers consulting services as purported. Moreover, the Respondent’s Website does not accurately disclose the Respondent’s relationship (in this case a complete absence of a relationship) with the Complainant – rather both the Domain Name and Respondent’s Website imply that the consulting services are being offered by Complainant (noting that Complainant does offer consulting services with respect to its marketplace and hence Respondent’s Website purports to offer services in competition with Complainant) or an entity associated with Complainant, which is not the case. As such, notwithstanding that Respondent may offer consulting services relevant to Complainant’s marketplace from the Respondent’s Website, this is not 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 General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Therefore, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that, at the time of registration of the Domain Name, May 10, 2021, Respondent had actual knowledge of Complainant’s WALMART mark since the Respondent’s Website purports consulting services in respect of the Wal-Mart marketplace in direct competition with Complainant’s consulting services, and hence makes repeated references to Complainant. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith under Policy ¶ 4(b)(iv) to create confusion with Complainant’s WALMART Mark for commercial gain by using the confusingly similar Domain Name to resolve to a website that offers services in competition with Complainant and seeks to mislead consumers by asserting that the Respondent’s Website is in some way connected to Complainant. The use of a disputed domain name to mislead users and redirect them to a competing website may indicate bad faith per Policy ¶¶ 4(b)(iii) and (iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). Accordingly, the Panel finds that Respondent registered and uses the Domain Name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <walmartconsultingexperts.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: May 23, 2023
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