WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wal-Mart Stores, Inc. v. Kenneth E. Crews
Case No. D2000-0580
1. The Parties
The Complainant is Wal-Mart Stores, Inc., with place of business in Bentonville, Arkansas, United States of America.
The Respondent is Kenneth E. Crews, with address in Oakland, Maryland, United States of America.
2. The Domain Name and Registrar
The disputed domain name is "superwal-mart.com".
The registrar of the disputed domain name is Register.com, Inc., with business address in New York, New York, United States of America.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
a) Complainant initiated the proceeding by the filing of a complaint by courier mail received in hardcopy by the WIPO Arbitration and Mediation Center ("WIPO") on June 13, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. An amendment to the complaint to correct a technical deficiency was received by WIPO on June 15, 2000. On June 15, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, Register.com. On June 15, 2000, WIPO completed its formal filing compliance requirements checklist.
b) On July 18, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail and courier mail.
c) On August 8, 2000, WIPO transmitted notification to Respondent of its default in responding to the complaint via e-mail.
d) On August 14, 2000, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On August 14, 2000, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.
e) On August 16, 2000, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by August 30, 2000. On August 16, 2000, the Panel received an electronic file in this matter by e-mail from WIPO. The Panel subsequently received a hard copy of the file in this matter by courier mail from WIPO.
The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of Respondentís default in responding to the complaint). The proceedings have been conducted in English.
4. Factual Background
In recent administrative proceedings conducted under the Policy, panels (including this sole panelist) have determined that Complainant has rights in the trademark "WAL-MART", and that such mark is well-known.
In Wal-Mart Stores, Inc. v. Walmarket Canada, Case No. D2000-0150, dated May 2, 2000, the panelist noted as part of the factual record:
"The Complainant operates stores throughout the United States, employing some 600,000 workers. It also has 144 stores in Canada and lesser numbers in Puerto Rico, Mexico, Brazil, Argentina, China, United Kingdom, Korea, Indonesia and Germany. Its stores are discount retail stores, grocery stores, pharmacies, membership warehouse clubs and deep discount warehouse outlets.
The Complainant holds registrations for the mark "WAL-MART" for use in retail department stores in the United States and Canada. The registration is on the basis that the mark was known in Canada as early as 1965. It also holds registrations for the mark "WAL-MART" in 46 countries, including Thailand, the United Kingdom and the Peopleís Republic of China. The Thailand registration is Number SM3711, registered November 24, 1995, and is for retail department store services. The "WAL-MART" mark has been in continuous use in the United States since 1962 and is used in the Complainantís extensive advertising of its services and merchandise on television, websites, etc. For example, amongst its Internet addresses are "http:\\www.walmart.com", "http:\\www.wal-mart.com" and "http:\\walmartstores.com"."
See also Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, Case No. D2000-0477, dated July 20, 2000. In the absence of argument or evidence to the contrary from Respondent, and in the interests of administrative efficiency, this Panel adopts the findings of these recent panels regarding Complainantís rights in the "Wal-Mart" trademark.
Registrar.comís WHOIS database query response (Registrar.comís July 14, 2000, response to WIPO verification request) indicates that "Kenneth E. Crews", with Administrative Contact at "Kenneth E. Crews", is registrant of the domain name "SUPERWAL-MART.COM". The record of this registration was created on January 23, 2000, and was last updated on June 2, 2000 (id.).
There is no evidence on the record of this proceeding to indicate that Respondent has used the disputed domain name in connection with the establishment of a website.
The disputed domain name, "superwal-mart.com", has been offered for sale to the public on a website identified as "GreatDomains.com", at address "www.greatdomains.com". The "Asking Price" is listed as "Make Offer". GreatDomains.comís offer form states "Offers clearly below market value will not be forwarded to the domain name owner. The Minimum offer amount is US$300. If you have any questions regarding the value of a particular domain name, or to determine whether your offer is appropriate, please read our Valuation Guidelines. Listing prices and availability are subject to change at any time." (Printout of GreatDomains.com web page of April 4, 2000, Complaint, Annex G)
The Registration Agreement in effect between Respondent and Register.com subjects Respondent to Registrar.comís dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, para. 4(a)). Respondent has not contested that it is properly before this Administrative Panel.
5. Partiesí Contentions
In its own words, Complainant in this proceeding states:
"The factual and legal grounds for this Complaint are:
(1) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Complainant objects to Respondentís domain name registration because this registration is likely to be confused with Complainantís distinctive WAL-MART trademark. Complainantís rights in its WAL-MART mark are expansive and predate Respondentís registration of the domain name SUPERWAL-MART.COM. In the United States, Complainant owns, among other trademarks, United States Registration Number 1,783,039, registered July 20, 1993, for the mark WAL-MART for use in retail department store services (U.S. 101). See [attachment]. Registration No. 1,783,039 is based on first use of the mark as early as July 1, 1962.
Complainant holds registrations for the WAL-MART mark in 46 countries. Complainantís rights in each of these 46 countries predate Respondentís registration of the SUPERWAL-MART.COM domain name.
The domain name SUPERWAL-MART.COM is identical or confusingly similar to Complainantís WAL-MART trademark. First, there is clear similarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. The second level domain name "SUPERWAL-MART" is a combination of two words, "SUPER" and "WAL-MART." The second word "WAL-MART" is identical to Complainantís mark WAL-MART. Respondent merely tacks on the word SUPER to the beginning, thus forming the domain name SUPERWAL-MART.COM.
Second, the domain name SUPERWAL-MART.COM is confusingly similar to Complainantís WAL-MART mark, because Complainant owns a number of Wal-Mart "Supercenters" or super stores. This particular type of Wal-Mart store offers additional products, such as groceries, to those offered at a typical Wal-Mart store. This may further confuse buyers who may think that a site connected with the domain name SUPERWAL-MART.COM, has an affiliation with Complainantís Supercenters. Third, the domain name is confusingly similar to the Wal-Mart mark, because the WAL-MART mark is famous throughout the world. Complainantís "WAL-MART" mark is, in fact, so famous that buyers would be likely to think that any commercial site connected with the domain name SUPERWAL-MART.COM, particularly a site selling consumer products, originates with Complainant.
The WAL-MART mark is famous in part, because the mark has been in continuous use since at least 1962. The mark is also famous because of the sheer number of retail store locations Complainant operates. Wal-Mart currently operates 1,782 stores and 765 Supercenters, among others, throughout the United States. See [attachment]. Complainant is also the worldís number one retailer with stores in the United States, Canada, Puerto Rico, Mexico, Brazil, Argentina, China, United Kingdom, Korea, Indonesia and Germany. See [attachment] and http://www.walmartstores.com.
The WAL-MART mark is likewise famous, because Complainant makes extensive use of the mark. Complainant uses its WAL-MART mark on its discount retail stores, grocery stores, membership warehouse clubs, pharmacies, deep discount warehouse outlets, in advertising throughout the world, on its websites, its scholarship programs, telethons for childrenís hospitals, industrial development grants, environmental programs and a variety of community support programs. See [attachment].
The fame of Complainantís WAL-MART mark is also shown through Complainantís advertising. Complainant engages in extensive advertising of its services and merchandise, and uses the WAL-MART mark in this regard. The Internet is a significant vehicle for Complainant. Complainant has websites located at, among other Internet addresses, http://www.walmart.com, http://www.wal-mart.com, and http://www.walmartstores.com. These websites are an important part of Complainantís corporate online identity and brand.
In light of the significant fame associated with the WAL-MART mark, consumers are likely to believe that any domain name incorporating the Wal-Mart name (or a close approximation thereof) is associated with Complainant. Respondentís domain name is likely to confuse customers and cause them to believe mistakenly that the domain name SUPERWAL-MART.COM is associated with Wal-Mart stores. Complainant did not authorize Respondentís use of a domain name that is likely to be confused with Complainantís WAL-MART mark.
(2) Respondent has no rights or legitimate interests in respect of the domain name
Respondent has no rights or legitimate interests in respect of the domain name SUPERWAL-MART.COM. First, Respondent is not currently using the domain name in connection with any ongoing business. Indeed, Respondentís only activity with respect to the domain name has been to offer it for sale.
Second, to the best of Complainantís knowledge, Respondent has no rights to any trademark consisting of the terms "WAL-MART" or "SUPERWAL-MART" in any country. Complainant has been unable to find any evidence of Respondentís actual use of, or demonstrable preparations to use the mark "SUPERWAL-MART" with a bona fide offering of any goods and services. To the contrary, Respondentís only demonstrable business activity has been to offer the domain name for sale through Greatdomains.com.
Of course, even if Respondent has plans to develop some type of sales business, it does not follow that he has legitimate rights to the domain name SUPERWAL-MART.COM. Respondentís actions are an attempt to interfere with Complainantís online identity and brand rather than a legitimate business activity.
(3) The domain name was registered and is being used in bad faith.
Complainant believes the domain name SUPERWAL-MART.COM was registered in bad faith. On information and belief, Respondent registered the domain name SUPERWAL-MART.COM with knowledge that Complainant held rights in and to its WAL-MART mark. Respondent had constructive notice of Complainantís trademark rights by virtue of (a) Complainantís trademark registrations in the United States, as well as in many other countries; (b) Complainantís use of a trademark registration symbol when referencing the mark in print advertising and on its websites located at http://www.walmart.com, http://www.wal-mart.com, and http://www.walmartstores.com.
Respondent is not using the domain name with any ongoing, legitimate business. To the contrary, circumstances indicate that Respondent registered the domain name primarily for selling or otherwise transferring the domain name for an amount well in excess of the registration fees. The ICANN dispute procedures acknowledge such offers to sell as evidence of bad faith. See ICANN Domain Name Dispute Resolution Procedures Paragraph 4(b)(i).
Respondent registered the domain name SUPERWAL-MART.COM on January 23, 2000. See [attachment]. Complainant found the domain name SUPERWAL-MART.COM listed for sale on the Great Domains website, www.greatdomains.com. Respondent did not list an asking price, but instead requested that parties "make offer." See [attachment]. It is reasonable for the Panel to conclude that the phrase "make an offer" is intended to solicit offers to purchase the domain name for an amount in excess of fees paid by Respondent to register the domain name. Complainant did not solicit this offer to sell by Respondent. Thus, circumstances indicate that the domain name SUPERWAL-MART.COM was acquired primarily for the purpose of selling the domain name.
As Respondentís use of this domain name creates a strong likelihood of confusion in the marketplace, this panel should reject Respondentís bad faith registration." (Complaint)
Complainant requests that the Panel ask the Registrar to transfer the domain name "superwal-mart.com" from Respondent to it (id., para. 13).
Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. This sole panelist has in an earlier decision discussed the background of the administrative panel procedure, and the legal characteristics of domain names, and refers to this earlier decision for such discussion. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., para. 2(a), Rules).
In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by WIPO. There is ample evidence in the form of air courier receipts and confirmations of the sending of e-mail that Respondent was notified of the Complaint and commencement of the proceedings (see Procedural History, supra).
Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondentís domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Because the Respondent has defaulted in providing a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the complaint (Rules, para. 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of Complainantís undisputed representations (id., para. 15(a)).
Complainant is the holder of rights in the well-known "Wal-Mart" trademark (see Factual Background, supra). Based on the July 20, 1993 date of Complainantís U.S. registration of the trademark "WAL-MART" (the earliest of the registrations submitted in this proceeding by Complainant), and without prejudice to whether Complainant may hold earlier-arising rights in the mark, the Panel determines that Complainantís rights in the trademark arose prior to Respondentís registration, on January 23, 2000, of the disputed domain name "superwal-mart.com".
Respondent has registered the domain name "superwal-mart.com". This name is identical to Complainantís trademark "Wal-Mart", except that (1) the domain name adds the generic top-level domain name (gTLD) ".com" (2) the domain name employs lower case letters, while the trademark is generally used with initial capital letters "W" and "M", and (3) the domain name adds the word "super" preceding Complainantís mark, without a space between terms.
The 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, ".com" is one of only several such gTLDs, and ".com" does not serve to identify a specific enterprise as a source of goods or services. Insofar as domain names are not case sensitive, differences in the upper and lower case format that are used in the domain name and the mark are differences without legal significance from the standpoint of comparing "superwal-mart.com" to "Wal-Mart".
"Super" is a common descriptive term in the English language. It is used, inter alia, to suggest extraordinary or superlative characteristics, e.g., in the context of retail establishments to suggest greater than ordinary size and/or selection of merchandise.
Respondent has not, by adding a common descriptive term preceding Complainantís mark, created a new or different mark in which it has rights or legitimate interests.
Complainantís "Wal-Mart" mark is well known. Its use in a domain name with the common descriptive term "super" is likely to cause consumers to associate the combination "superwal-mart.com" with Complainant as the source of products on or sponsor of a website identified by that name. Complainant uses the term "super" to identify certain of its own retail establishments, i.e., "Supercenters" (Complaint, Annex D), thereby increasing the prospect that consumers would draw a connection between it and the disputed domain name.
The Panel determines that the domain name "superwal-mart.com" is confusingly similar to Complainantís trademark "Wal-Mart" in the sense of paragraph 4(a)(i) of the Policy.
Complainant has met the burden of proving that Respondent is the registrant of a domain name that is identical or confusingly similar to a trademark in which the Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration.
There is no evidence on the record of this proceeding that would indicate that Respondent has any rights or legitimate interests in respect of the domain name "superwal-mart.com", other than that it has registered this domain name and has used it in a manner hereafter determined to be in bad faith. If mere registration of a domain name was sufficient to establish rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy, then all registrants would have such rights or interests, and no complainant could succeed on a claim of abusive registration. Construing the Policy so as to avoid an illogical result, the Panel concludes that mere registration does not establish rights or legitimate interests in the disputed domain name so as to avoid the application of paragraph 4(a)(ii) of the Policy. Similarly, bad faith registration and use of a domain name does not establish rights or legitimate interests in the name.
The Panel determines that Respondent has no rights or legitimate interests in the disputed domain name. Thus, the Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration.
The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, para. 4(b)). Among these circumstances are that the domain name has been registered or acquired by a respondent "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [respondentís] documented out-of-pocket costs directly related to the domain name" (id., para. 4(b)(i)).
Respondent has offered the disputed domain name for sale to the public on a commercial website (GreatDomains.com) in the business of auctioning domain names. There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, as the proprietor of the auction website used by Respondent advises its potential clients, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent.
In several earlier administrative proceedings conducted under the Policy, this sole panelist has determined that offers to sell to the public at large domain names that are identical or confusingly similar to marks of others may constitute bad faith within the meaning of paragraph 4(a)(iii) of the Policy. This is based on the nonexhaustive character of the express list of bad faith factors in paragraph 4(b) of the Policy, and the lack of a justification for awarding financial gain to persons for the mere act of registration of the marks of others.
In the instant proceeding, Respondent has sought to profit from the mere registration of a well-known trademark (preceded by a common descriptive term) as a domain name. There is no evidence on the record of this proceeding that persuades the Panel that Respondent had a purpose for registering the disputed domain name other than for the purpose of selling it for a price in excess of its out-of-pocket costs directly related to the name. The Panel determines such registration and use to be in bad faith.
Complainant has thus established the third and final element necessary for a finding that Respondent has engaged in abusive domain name registration.
The Panel will therefore request the registrar to transfer the domain name "superwal-mart.com" to the Complainant.
Based on its finding that the Respondent, Kenneth E. Crews, has engaged in abusive registration of the domain name "superwal-mart.com" within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name "superwal-mart.com" be transferred to the Complainant, Wal-Mart Stores, Inc.
Frederick M. Abbott
Dated: August 30, 2000
1. Great Domains.comís "Valuation Guidelines" state: "Names with potential trademark issues are generally worthless. People who spend good money on names that are the trademark of a company are wasting their time and money because these companies are going after these owners. They must do this under most countries' trademark rules or they risk losing their trademarks. Think about that before you register Coke.XXX in a new registry." (Visit by Panel to http://www.greatdomains.com of August 29, 2000)
2. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000.
3. See Sporty's Farm v. Sportsman's Market, 202 F.3d 489, 498, (2d Cir. 2000), citing Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036 (9th Cir. 1999). For purposes of its decision, the Panel need not address whether ".com" may be capable of acquiring secondary meaning in another context.
4. See Brookfield Communications, id.,174 F.3d 1036, 1055 (9th Cir. 1999).
5. See, e.g., Miriam-Webster Collegiate Dictionary (Online), listing "super", inter alia, as adjective with definitions: 1b: "of high grade or quality" and 2: "very large or powerful" (http://www.m-w.com/cgi-bin/dictionary).
6. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000; General Electric Company v. Online Sales.com, Inc., Case No. D2000-0343, decided June 19, 2000, and General Electric Company v. John Bakhit, Case No. D2000-0386, decided June 22, 2000