Wal-Mart Stores, Inc. v. David Webb
Claim Number: FA0709001076222
Complainant is Wal-Mart
Stores, Inc. (“Complainant”), represented by Uleses C. Henderson, of Foley & Lardner LLP, 2029 Century
Park East,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <walmatr.com>, <samscub.com>, <walmsrt.com>, <walmarty.com>, and <asmsclub.com>, registered with Enom, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 12, 2007; the National Arbitration Forum received a hard copy of the Complaint on September 17, 2007.
On September 13, 2007, Enom, Inc., confirmed by e-mail to the National Arbitration Forum that the <walmatr.com>, <samscub.com>, <walmsrt.com>, <walmarty.com>, and <asmsclub.com> domain names are registered with Enom, Inc., and that Respondent is the current registrant of the names. 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 September 20, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 10, 2007 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@walmatr.com, postmaster@samscub.com, postmaster@walmsrt.com, postmaster@walmarty.com, and postmaster@asmsclub.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 17, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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." 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <walmatr.com>, <walmsrt.com> and <walmarty.com> domain names are confusingly similar to Complainant’s WAL-MART and Respondent’s <samscub.com> and <asmsclub.com> domain names are confusingly similar to Complainant’s SAM’S CLUB marks.
2. Respondent does not have any rights or legitimate interests in the <walmatr.com>, <samscub.com>, <walmsrt.com>, <walmarty.com>, and <asmsclub.com> domain names.
3. Respondent registered and used the <walmatr.com>, <samscub.com>, <walmsrt.com>, <walmarty.com>, and <asmsclub.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Wal-Mart Stores, Inc., holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for both the WAL-MART and SAM’S CLUB marks (Reg. No. 1,783,039 issued July 20, 1993 and Reg. No. 2,036,770 issued February 11, 1997, respectively). Complainant also holds numerous trademark registrations in several countries worldwide for both the WAL-MART (i.e., Reg. No. 502,605 issued October 21, 1998 by the Canadian Intellectual Property Office (“CIPO”) and Reg. No. 2,038,080/9 issued August 5, 1997 by the Spanish Patent Office) and the SAM’S CLUB marks (i.e., Reg. No. 577,557 issued May 27, 1998 by the Mexican Patent Office and Reg. No. 591,750 issued October 7, 2003 by the CIPO). Complainant is using both the WAL-MART and SAM’S CLUB marks in connection with the sale of a variety of goods worldwide, including electronics, computers, toys, furniture, sports and fitness equipment, automotive accessories, apparel, and food in addition to a variety of services as well. Complainant operates over 3,300 stores world wide under the WAL-MART mark and 585 stores under the SAM’S CLUB mark. Complainant has registered several domain names in connection with the sale of its consumer goods, including but not limited to the <walmart.com> and <samsclub.com> domain names.
Respondent registered the <samscub.com> domain name on August 22, 2004, the <walmsrt.com> domain name on November 24, 2004, the <walmarty.com> domain name on December 25, 2004, <walmatr.com> domain name on October 3, 2004, and the <asmsclub.com> domain name on March 12, 2006. Respondent is not currently displaying any content on the <walmatr.com> and <asmsclub.com> domain names. Respondent is, however, displaying links to third-party websites that compete with Complainant’s goods and services under the WAL-MART and SAM’S CLUB marks at the <samscub.com>, <walmsrt.com>, and <walmarty.com> domain names. Complainant also offers evidence to indicate that Respondent has been the respondent in several prior decisions regarding domain names which were transferred to Complainant for infringing marks, including Mead Johnson & Co. v. David Webb, D2007-0571 (WIPO June 7, 2007), Gerber Childrenswear Inc. v. David Webb, D2007-0317 (WIPO Apr. 24, 2007), and Borsig Process Heat Exchanger GmbH f/k/a Borsig GmbH v. David Webb, FA766319 (Nat. Arb. Forum Sept. 19, 2006).
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 has established rights in the WAL-MART and SAM’S
CLUB marks under Policy ¶ 4(a)(i) through registration
of the marks with the USPTO and CIPO, as well as other trademark
authorities. See
UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May
17, 2007) (holding that where the complainant had several trademark
registrations with the USPTO, “[t]he Panel had no difficulty in finding that
Complainant has established rights in the marks for purposes of Policy ¶ 4(a)(i).”);
see also Symbol Techs.
Respondent’s <walmatr.com>, <walmsrt.com> and <walmarty.com>
domain names are confusingly similar to Complainant’s WAL-MART mark as they are
simple misspellings and typos an Internet user would make when typing in
Complainant’s <walmart.com> domain name.
Respondent’s <samscub.com> and <asmsclub.com> domain names are also confusingly
similar to Complainant’s SAM’S CLUB mark as they too are common misspellings of
Complainant’s <samsclub.com> domain name incorporating Complainant’s
marks. The Panel finds that these common misspellings and typos of Complainant’s
marks does not sufficiently distinguish the disputed domain names from
Complainant’s marks under Policy ¶ 4(a)(i). See Guinness
UDV N. Am., Inc. v. Dallas Internet Servs.,
D2001-1055 (WIPO Dec. 12, 2001) (finding the <smirnof.com> domain name
confusingly similar to the complainant’s SMIRNOFF mark because merely removing
the letter “f” from the mark was insignificant); see also Marriott Int'l,
Inc. v. Seocho, FA 149187 (Nat. Arb. Forum Apr. 28, 2003) (finding that the
respondent's <marrriott.com> domain name was confusingly similar
to the complainant's MARRIOTT mark).
The Panel further
finds that Respondent’s omission of the apostrophe from Complainant’s SAM’S
CLUB mark and the omission of the hyphen from Complainant’s WAL-MART mark in
the disputed domain name also does not sufficiently
distinguish the domain names from the mark to avoid a finding of confusing
similarity. See Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000)
(holding that the domain name <cspan.net>, which omitted the hyphen from
the trademark spelling, C-SPAN, is confusingly similar to the complainant's
mark); see also LOreal USA Creative Inc v. Syncopate.com –
Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding
that the omission of an apostrophe did not significantly distinguish the domain
name from the mark).
Finally, the Panel finds that the addition of the generic top-level domain (“gTLD”) “.com” to the marks is irrelevant to the determination of whether they are confusingly similar under Policy ¶ 4(a)(i). See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is … without legal significance since use of a gTLD is required of domain name registrants…."); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant contends that Respondent does not have rights or legitimate interests in the <walmatr.com>, <samscub.com>, <walmsrt.com>, <walmarty.com>, and <asmsclub.com> domain names. Complainant’s submission establishes a prima facie case, which shifts the burden to Respondent to show that it has rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”); see also Washington CeaseFire v. Private Registration, FA 985159 (Nat. Arb. Forum June 27, 2007) (“Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
The Panel may assume here that Respondent does not have rights or legitimate interests in the disputed domain names as Respondent failed to respond to the Complaint. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also 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 consider all available evidence before determining whether Respondent has rights or legitimate interests in the domain names pursuant to Policy ¶ 4(c).
Complainant argues that Respondent is not currently
displaying any content on the <walmatr.com> and <asmsclub.com> domain names. The Panel finds that Respondent’s failure to
use the <walmatr.com> and <asmsclub.com>
domain names for any purpose is evidence that Respondent lacks rights and
legitimate interests in those domain names as Respondent fails to show a use in
connection with a bona fide offering of goods or services under Policy ¶
4(c)(i), or a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii). See Melbourne IT Ltd. v. Stafford,
D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in
the domain name where there is no proof that the respondent made preparations
to use the domain name or one like it in connection with a bona fide
offering of goods and services before notice of the domain name dispute, the
domain name did not resolve to a website, and the respondent is not commonly
known by the domain name); see also Nike,
Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights
or legitimate interests where the respondent made no use of the infringing
domain names).
Further, Complainant contends that Respondent is using the <samscub.com>, <walmsrt.com>, and <walmarty.com> domain names to display links to third-party websites that compete with Complainant’s goods and services under the WAL-MART and SAM’S CLUB marks. The Panel finds that such use by Respondent of these disputed domain names is not a use in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); 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).
Additionally, Respondent has offered no evidence and no evidence is present in the record to indicate that Respondent is commonly known by the <walmatr.com>, <samscub.com>, <walmsrt.com>, <walmarty.com>, and <asmsclub.com> domain names. Respondent’s WHOIS information identifies Respondent as “David Webb.” Therefore, the Respondent has failed to offer any evidence to indicate it has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Complainant further contends that Respondent’s <walmatr.com>, <samscub.com>, <walmsrt.com>, <walmarty.com>, and <asmsclub.com> domain names simply take advantage of the common mistakes and typos made by Internet consumers who are attempting to enter Complainant’s domain names into their browser. The Panel finds that Respondent’s <walmatr.com>, <samscub.com>, <walmsrt.com>, <walmarty.com>, and <asmsclub.com> domain names constitute typosquatting, which is evidence in and of itself that Respondent lacks rights in the disputed domain names under Policy ¶ 4(a)(ii). See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent has registered but is failing to use the <walmatr.com> and <asmsclub.com>
domain names for any purpose. The Panel
finds that Respondent’s failure to use the disputed domain names for any
purpose is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp.,
D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s failure to use
the domain name satisfies the requirement of ¶ 4(a)(iii)
of the Policy); see also Caravan
Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the
respondent made no use of the domain name or website that connects with the
domain name, and that failure to use a domain name
permits an inference of registration and use in bad faith).
Additionally, Respondent has registered and is using the <samscub.com>, <walmsrt.com>, and <walmarty.com> domain names to redirect Internet users to Respondent’s website, which displays links to competing third-party websites. Respondent’s use of the disputed domain names to redirect Internet users to Complainant’s competitors constitutes a disruption of Complainant’s business, which is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that respondent’s use of the disputed domain name to display links to services in competition with Complainant constituted disruption under Policy ¶ 4(b)(iii)); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
Further, Respondent is using the <samscub.com>, <walmsrt.com>, and <walmarty.com>
domain names to display links to competing third-party websites for the assumed
profit of Respondent. The Panel finds
that Internet users seeking Complainant’s goods may become confused as to Complainant’s
affiliation with Respondent’s disputed domain names. Presumably, Respondent is profiting from this
confusion through the acquisition of click-through fees. Therefore, the Panel finds that Respondent’s
use of the disputed domain names to display links to competing websites for the
profit of Respondent is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iv).
See TM Acquisition Corp.
v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s
principal website is <century21.com>, many Internet users are likely to
use search engines to find Complainant’s website, only to be mislead to
Respondent’s website at the <century21realty.biz> domain name, which
features links for competing real estate websites. Therefore, it is likely that Internet users
seeking Complainant’s website, but who end up at Respondent’s website, will be
confused as to the source, sponsorship, affiliation or endorsement of
Respondent’s website.”); see also Associated
Newspapers Ltd. v. Domain Manager, FA
201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”).
Complainant further contends that Respondent has a history
of registering domain names that infringe on a third-party’s trademark. Complainant offers evidence of three
decisions held against Respondent, including Mead Johnson & Co. v. David
Webb, D2007-0571 (WIPO June 7, 2007), Gerber Childrenswear Inc. v. David
Webb, D2007-0317 (WIPO Apr. 24, 2007), and Borsig Process Heat Exchanger
GmbH f/k/a Borsig GmbH v. David Webb, FA766319 (Nat. Arb. Forum Sept. 19,
2006). The Panel finds that Respondent’s
history of registering infringing domain names is evidence of bad faith
registration and use under Policy ¶ 4(b)(ii). See Sony
Kabushiki Kaisha v. Anderson, FA 198809
(Nat. Arb. Forum Nov. 20, 2003) (finding a pattern of registering domain names
in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent previously
registered domain names incorporating well-known third party trademarks); see
also N.H. Sweepstakes Comm’n v. We Web Well, Inc., FA 197499 (Nat. Arb. Forum Nov.
3, 2003) (finding that the complainant’s submission of WHOIS evidence that
listed the respondent as the registrant of other domain names incorporating
third-party trademarks was sufficient to establish that the respondent had a
pattern of registering and using domain names in bad faith pursuant to Policy ¶
4(b)(ii)).
Finally, Complainant contends that Respondent’s <walmatr.com>, <samscub.com>, <walmsrt.com>, <walmarty.com>, and <asmsclub.com> domain names each take advantage of a common misspelling or typo for Complainant’s mark. The Panel finds that Respondent’s registration and use of typosquatted versions of Complainant’s mark is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶ (a)(iii)).
The Panel finds that Policy ¶ 4(a)(iii) has been 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 <walmatr.com>, <samscub.com>, <walmsrt.com>, <walmarty.com>, and <asmsclub.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 30, 2007
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