WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Wal-Mart Stores, Inc. v. Lars Stork

Case No. D2000-0628

 

  1. The Parties

The Complainant is Wal-Mart Stores, Inc., a United States corporation with its headquarters in Bentonville, Arkansas.

The Respondent is Lars Stork of 19 chemin des Fenasses, Corsier, Geneva 1246, Switzerland.

 

2. The Domain Name and Registrar

The domain name at issue is <WAL-MART-EUROPE.COM>. The domain name is registered with Network Solutions, Inc. of 505 Huntmar Park Drive, Herndon, Virginia 20170, USA ("NSI").

 

3. Procedural History

The Complaint submitted by Wal-Mart Stores, Inc. was received on June 26, 2000 (electronic version) and June 19, 2000 (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").

On June 26, 2000 a request for Registrar verification was transmitted by WIPO Center to NSI, requesting it to:

(a) Confirm that a copy of the Complaint had been sent to it by the Complainant as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy, paragraph 4(b).

(b) Confirm that the domain name at issue is registered with NSI.

(c) Confirm that the person identified as the Respondent is the current registrant of the domain name.

(d) Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrarís WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact for the domain name.

(e) Confirm that the Uniform Domain Name Dispute Resolution Policy was in effect.

(f) Indicate the current status of the domain name.

By email dated July 3, 2000, NSI advised WIPO Center as follows:

(a) NSI had received a copy of the Complaint from the Complainant.

(b) NSI is the Registrar of the domain name registration <WAL-MART-EUROPE.COM>.

(c) Lars Stork is the current registrant of the said domain name. His relevant WHOIS information is shown as follows:

Registrant, Administrative Contact, Billing Contact:
Stork, Lars
19 chemin des Fenasses
Corsier, Geneva 1246
Switzerland.

Technical and Zone Contact:
WorldNIC Name Host (HOST-ORG)
Network Solutions Inc.
505 Huntmar Park Drive
Herndon, VA 20170, USA
Phone: 1-888-642-6675

(d) NSIís 4.0 Service Agreement is in effect.

(e) The domain name registration <WAL-MART-EUROPE.COM> is in "Active" status.

NSI has adopted the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").

The Respondent has never requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate his agreement with NSI. The Respondent is accordingly bound by the provisions of the Domain Name Dispute Resolution Policy, i.e., the ICANN policy.

Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, WIPO Center, on July 7, 2000, transmitted by post/courier and email a notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was emailed to NSI and ICANN.

The Complainant elected to have its Complaint resolved by a single panel member: it has duly paid the amount required of it to WIPO Center.

The Respondent was advised that a Response to the Complaint was required within 20 calendar days (i.e., by July 26, 2000). He was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email.

The Respondent filed no Response. A Notification of Respondent Default was sent by post/courier and email on July 28, 2000.

On August 4, 2000, WIPO Center invited the Honourable Sir Ian Barker QC of Auckland, New Zealand, to serve as sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.

On August 4, 2000, the Honourable Sir Ian Barker QC advised his acceptance and forwarded to WIPO Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplementary Rules.

On August 4, 2000, WIPO Center forwarded to the Honourable Sir Ian Barker QC by courier the relevant submissions and the record. These were received by him on August 7, 2000. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by August 17, 2000.

The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").

The language of the administrative proceeding is English, being the language of the registration agreement.

 

4. Factual Background

The Complainant operates 1,782 stores and 765 supercentres. Although it was founded in and operates extensively in the United States, it has 1,019 retailing units in other countries, i.e., Mexico, Puerto Rico, Canada, Argentina, Brazil, China, Korea, Germany and the United Kingdom. All its trading operations, advertisements and promotions feature the expression "Wal-Mart". The expression "Wal-Mart" has been in continuous use since 1962. It 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>. Its stores are discount retail stores, grocery stores, pharmacies, membership warehouse clubs and deep discount warehouse outlets.

The Complainant holds a registration for the service mark "Wal-Mart" in the United States. The registration is dated July 20, 1993 and records the date of first use of the mark as July 1, 1962. The Complainant holds registrations in:

(a) Switzerland (Number 425,857 registered April 10, 1996) for numerous retail products and services;

(b) the United Kingdom (Numbers 1570716-17 and 157719-721 registered April 30, 1994) for classes 21, 24, 28, 30 and 32;

(c) Denmark (Number 01.3251993, registered February 12, 1993) for retail department store services.

The Respondent has no rights granted by the Complainant in any of the marks involving the word "Wal-Mart".

The Respondent registered the domain name <WAL-MART-EUROPE.COM> on December 1, 1999. The website remains under construction.

The Respondent subsequent to December 1, 1999 offered the domain name in issue for sale through Greatdomains.com with an asking price of $500,000.

 

5. Partiesí Contentions

The Complainant submits that its mark is well-known throughout the United States and all those other countries in which it trades. Because of the Complainantís operations in the United Kingdom and Germany, the mark is known in Europe. The mark would also be known to persons worldwide, not necessarily from the above countries, who may have shopped at a Wal-Mart store when visiting one of the countries where Wal-Mart stores are established. It submits that the Respondent has no legitimate rights to use the name <WAL-MART-EUROPE.COM>, which is confusingly similar to its "Wal-Mart" marks Ė including the one registered in Switzerland where the Respondent resides.

The Complainant further submits that the domain name <WAL-MART-EUROPE.COM> was registered and is used in bad faith. Improper use of the name is shown by the Respondentís attempt to sell the name through the Great Domains website for $500,000. <WAL-MART-EUROPE.COM> is confusingly similar to "Wal-Mart" and creates a strong likelihood of confusion in the market place. It claims the "Wal-Mart" name is so famous that potential customers would assume a connection between the domain name and the "Wal-Mart" mark.

The Respondent has not filed a Response.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the 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".

The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:

(a) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

(b) That the Respondent has no rights or legitimate interests in respect of the domain name.

(c) The domain name has been registered and used in bad faith.

In the Panelís view, the domain name <WAL-MART-EUROPE.COM> is confusingly similar to the Complainantís marks registered in the USA, Switzerland, the United Kingdom and other countries, i.e. "Wal-Mart". The Complainant has a wide international reputation for this name for a convenience store. This reputation is well-recognised in the United States particularly, but in many other countries also. The addition of the word "Europe" is an indication that the domain name is that of the US Wal-Martís operations in Europe.

Applying the usual tests under trademark law and passing-off law, the Panel decides that the domain name is confusingly similar. Persons dealing with, or even perusing the website of, <WAL-MART-EUROPE.COM> could easily conclude that the registrant of the domain name was associated with Wal-Martís operation in Europe. Nor is it any excuse to say that the Complainant does not trade in Switzerland. It owns a registered trademark in that country which it is entitled to use. It is entitled to the benefit of registration unless and until the Swiss authorities revoke the registration, which is not likely to occur until after a judicial hearing. It would be difficult to imagine that any Court would uphold the use of a name confusingly similar to a registered mark where that name had first been used many years after the registration of the mark.

Paragraph 4(c) of the Policy shows how a Respondent can demonstrate rights or interest in the domain name at issue. Whilst the overall onus of proof rests on a Complainant, nevertheless failure by a Respondent to demonstrate that he comes within paragraph 4(c) can assist the Panel in deciding whether on consideration of all the evidence a Complainant has discharged the onus of proof. The following circumstances in particular, but without limitation, if found by the Panel to be proved, demonstrate rights or legitimate interests in the domain name at issue.

"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

The Panel finds that there is no evidence that the Respondent, before receiving notice of the dispute, used or demonstrably prepared to use the domain name in connection with a bona fide offering of services.

Nor has the Respondent ever been commonly known by the disputed domain name. Nor is the Respondent making any legitimate non-commercial or fair use of the domain name without intent for commercial gain misleadingly to divert customers or to tarnish the mark at issue. The Respondentís conduct in purporting to sell the domain name on the Internet suggests otherwise.

The Respondent has no licence or other legal right in respect of the domain name, unless his usage is permitted at law. The Panel therefore decides that the Respondent has no rights or legitimate interests in respect of the domain name.

Paragraph 4(b)(iii) and (iv) of the ICANN policy document, on which the Complainant relies, states:

"the following circumstances Ö shall be evidence of the registration and use of the domain name in bad faith:

(iii) You have registered the domain name primarily for disrupting the business of a competitor.

(iv) By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line locations, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation or endorsement of your website or location or of a product or service on your website or location."

The Respondent did offer to sell this name on the Internet for $500,000. The fact of soliciting the sale and placing the domain name on the Internet for sale has been regarded in a number of WIPO cases as being evidence of abuse and bad faith.

The Internet is a worldwide institution and persons accessing any website can come from any country. It must be assumed that some hits on the Respondentís website could come from persons living in those many countries where there is a registered Wal-Mart mark. These persons could easily have had dealings with the Complainantís stores or have used the Complainantís websites for on-line shopping. They could easily conclude that the domain site had something to do with the Complainantís United States, German and United Kingdom operations. Geographical destinations can be irrelevant to users of the Internet.

The Panel accordingly determines that the Respondent has registered and used the Complainantís mark in bad faith.

 

7. Principles of Law Applicable

It is legitimate under paragraph 15(a) of the Rules that the Panel should look at principles of law deemed applicable. Since the Respondent appears to be domiciled in Switzerland, any legal action would have to be taken against him in that country. The Panel has not had cited to it decisions of Superior Courts in Switzerland. Principles of law set out in decisions of Courts in the United States and the United Kingdom in similar cases could easily be of assistance to Swiss courts. The law protecting intellectual property, whilst admitting of local differences, is often quite similar, given the various international treaties on intellectual property.

The legal position in England on domain names of confusingly similar wording to registered trademarks was discussed by the Court of Appeal in British Telecommunications Plc and Others v One in a Million Ltd and Others [1999] 1 WLR 903. The Court there was dealing with domain names identical or confusingly similar to registered trademarks where the domain name holders had tried to sell the names to the trademark owners. This is the situation envisaged by paragraph 4(a)(i) of the Rules.

The English position is similar to that taken in other common law jurisdictions. In the United States there are cases noted by Panelists in other WIPO Center decisions, such as Panavision International LP v Toeppen 141 F.3d. 1315 (9th Cir. 1998).

The Panel has determined that, under the Policy, the Complainant has proved its case. Accordingly, the Complainant is entitled to the limited relief which this Panel is empowered to give. The Panelís decision is based on the terms of the Policy cited earlier.

 

8. Decision

For the foregoing reasons, the Panel decides:

(a) that the domain name registered by the Respondent is identical or confusingly similar to the trademark to which the Complainant has rights;

(b) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(c) the Respondentís domain name has been registered and is being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <WAL-MART-EUROPE.COM> be transferred to the Complainant.

 


 

Hon Sir Ian Barker QC
Presiding Panelist

Date: August 11, 2000