WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wal-Mart Stores, Inc. v. James Cann and Save Family Businesses Panel
Case No. D2000-0830
1. The Parties
The Complainant is Wal-Mart Stores, Inc., with place of business in Bentonville, Arkansas, United States of America (USA).
The Respondents are James Cann, with address in Brampton, Ontario, Canada, and Save Family Businesses Panel with address in Seattle, Washington, USA.
2. The Domain Name and Registrar
The disputed domain name is "wallmartshopper.com".
The registrar of the disputed domain name is Tucows.com (Open Shared Registration System), with business address in Toronto, Ontario, Canada.
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 via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on July 19, 2000, and by courier mail received by WIPO on July 21, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. Complainant filed an amendment to its complaint by e-mail received by WIPO on July 25, 2000, and by courier mail received by WIPO on July 26, 2000.
(b) On August 11, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, Tucows.com. On August 11, the registrar responded to WIPO indicating that the party named as registrant in the initially-filed complaint (James Cann) was not the current registrant of the disputed domain name, but that the new and current registrant of record (Save Family Businesses Panel) was properly identified in Complainantís amendment to its complaint (as transmitted to the registrar). On August 21, 2000, WIPO completed its formal filing compliance requirements checklist.
(c) On August 21, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to each of the Respondents via e-mail and courier mail. On August 22, WIPO received an e-mail message (transmitted on August 21) from Respondent James Cann indicating that he had transferred the dispute domain name (see Factual Background, infra). Respondent James Cann also advised WIPO that as of August 31, 2000 he would no longer be at the mailing address previously known to WIPO and Complainant, and that he would no longer be using the e-mail address at which he was previously contacted. Respondent James Cann provided no new contact information, and recommended that WIPO in the future contact Respondent Save Family Businesses Panel.
(d) On September 22, 2000, WIPO transmitted notification to Respondent Save Family Businesses Panel of its default in responding to the complaint via e-mail. WIPO had no current contact information for Respondent James Cann.
(e) On September 26, 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 September 26, 2000, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.
(f) On September 28, 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 October 11, 2000. On September 28, 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 several 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 ĎWAL-MARTí 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 ĎWAL-MARTí 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 ĎWAL-MARTí 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 Ďhttp:\\www.walmart.comí, Ďhttp:\\www.wal-mart.comí and Ďhttp:\\walmartstores.comí."
See also Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, Case No. D2000-0477, dated July 20, 2000, and Wal-Mart Stores, Inc. v. Kenneth E. Crews, Case No. D2000-0580, dated August 30, 2000. In the absence of argument or evidence to the contrary from Respondents, and in the interests of administrative efficiency, this Panel adopts the findings of these recent panels regarding Complainantís rights in the "Wal-Mart" trademark.
Tucow.comís (Open SRS) WHOIS database query response of July 19, 2000 indicated that "NONE", with Administrative Contact at "CANN, JAMES", was registrant of the domain name "wallmartshopper.com". The record of this registration was created on March 17, 2000, and was last updated on April 14, 2000 (Complaint, Annex A).
According to Tucow.comís verification response to WIPO, dated August 11, 2000, "Save Family Businesses Panel" is the listed registrant of the domain name "wallmartshopper.com". The Administrative Contact is "Fowler, Kimsey" (WIPO Case File, item E). A Register.com WHOIS database query of July 24, 2000 provided the same information, and indicated that the record of registration was created on March 17, 2000, and that the record was last updated on July 24, 2000 (Amendment to Complaint, Annex K).
On July 13, 2000, Complainant (through its counsel) sent a cease and desist and transfer demand to Respondent James Cann (letter from Linda Zirkelbach to James Cann, id., Annex H). On July 16, 2000, Respondent transmitted an e-mail message to Complainantís counsel with the following text:
"Hello Ms. Zirkelbach.
Regarding the domain name wallmartshopper.com, I can argue with you until Iím blue in the face about domain name spelling and English pronunciation but the two are undoubtedly different.
I received your letter this afternoon as I have just returned from vacation. I read your letter and understand you are protecting your clientís interests but unfortunately the domain name will no longer belong to me in the next 48 hours, July 20th at 6pm to be exact.
A private auction with a highest bid of $4,785 has been placed on Sunday past.
I took the opportunity to visit www.venable.com and was given the option to view the lawyers directory. The search engine produced a most attractive picture, your accomplishments and skills are most commendable as you are obviously a successful women.
I will make an exception in your case because I respect professionalism and the highest bidder happens to own an anti-wal-mart organization.
If you were to send me a certified/cashiers check for $5,000 dollars via same day courier the domain name is yours all bids stop and no questions asked.
Iím sorry if this disappoints you Ms. Zirkelbach. Iíd much rather hand the domain name over to you but business in business.
James Cann (e-mail from James Cann to Linda Zirkelbach, id. Annex I)
On August 22, 2000, WIPO received an e-mail message with the following text from Respondent James Cann:
"Sorry, I no longer have any ownership of that domain name. As a matter of fact it was released to a different organization before I received any legal documents via courier.
Thereís nothing I can do to help you. I will be moving August 31st and will no longer be using this e-mail address.
As for my postal address, it has been temporarily changed until I get a new address. If you have sent anything courier it will not be received by me, sorry for the inconvenience.
I suggest you deal with email@example.com [sic: in registration, e-mail address is firstname.lastname@example.org] for any further information." (WIPO Case File, Item G)
There is no evidence on the record of this proceeding of any use of the disputed domain name by either of the Respondents other than the alleged offer for sale and sale by Respondent James Cann.
The Registration Agreement in effect between Respondent and Tucows.com (Open SRS) subjects Respondent to Tucow.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)).
5. Partiesí Contentions
Complainant states in its own words as follows:
"V. Factual and Legal Grounds
"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 Respondentsí 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 Respondentsí registration of the domain name wallmartshopper.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 attached Annex [hereto] (hard copy format). Registration No. 1,783,039 is based on first use of the mark as early as July 1, 1962. In Canada, Complainant owns, among other trademarks, Canadian Registration Number TMA502,605, registered October 21, 1998, for the mark WAL-MART, for use in retail department store services. See attached Annex [hereto] (hard copy format).
"Complainant holds registrations for the WAL-MART mark in 46 countries. Complainantís rights in each of these 46 countries predate Respondentís registration of the wallmartshopper.com domain name.
"The domain name wallmartshopper.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. Second, the domain name is confusingly similar to the Wal-Mart mark, because the WAL-MART mark is famous throughout the world. Complainantís ĎWAL-MARTí mark is, in fact, so famous that buyers would be likely to think that any commercial site connected with the domain name wallmartshopper.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 attached Annex [hereto] (hard copy format). 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 attached Annex [hereto] (hard copy format) 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 attached Annex [hereto] (hard copy format).
"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. Respondentsí domain name is likely to confuse customers and cause them to believe mistakenly that the domain name wallmartshopper.com is associated with Wal-Mart stores. Complainant did not authorize Respondentsí 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.
"Neither Respondent has or had any rights or legitimate interests with respect to the domain name wallmartshopper.com. First, neither Respondent is currently using the domain name in connection with any ongoing business. Indeed, Respondent James Cannís only activity with respect to the domain name has been to offer it for sale.
"Second, to the best of Complainantís knowledge, Respondents have no rights to any trademark consisting of the terms ĎWAL-MARTí or ĎWALLMARTSHOPPERí in any country. Complainant has been unable to find any evidence of either Respondentsí actual use of, or demonstrable preparations to use the mark ĎWALLMARTSHOPPERí with a bona fide offering of any goods and services. To the contrary, Respondent James Cannís only demonstrable business activity has been to offer the domain name for sale through private auction and to threaten to sell it to a third party unless Complainant agreed to buy the domain name for $5,000. On information and belief, Respondent James Cann sold the wallmartshopper.com domain name to Respondent Save Family Businesses Panel after Complainant filed the original complaint in this matter.
"Of course, even if either Respondents have or had plans to develop some type of sales business, it does not follow that either has legitimate rights to the domain name wallmartshopper.com. Respondentsí actions are an attempt to interfere with Complainantís online identity and brand rather than a legitimate business activity. Respondentsí actions are also designed to keep Complainant from owning the domain name.
"(3) The domain name was registered and is being used in bad faith.
"Complainant believes the domain name wallmartshopper.com was registered in bad faith. On information and belief, both Respondents registered the domain name wallmartshopper.com with knowledge that Complainant held rights in and to its WAL-MART mark. Respondents 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.
"Neither Respondent has used or is using the domain name with any ongoing, legitimate business. To the contrary, circumstances indicate that Respondent James Cann 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).
a. "Respondent James Cann
"Respondent James Cann registered the domain name wallmartshopper.com on March 17, 2000. See attached Annex [hereto] (hard copy format). Respondent James Cann has clearly tried to sell the domain name and to extort money from Complainant. Counsel for Complainant sent Respondent James Cann a cease and desist letter dated July 13, 2000, explaining that Complainant believed Respondent James Cannís use of the domain name wallmartshopper.com infringed and diluted Complainantís trademark rights and asking that Respondent James Cann transfer ownership of the domain name to Complainant. See attached Annex [hereto] (hard copy format). Respondent James Cann replied with an electronic mail message to Complainantís counsel requesting $5,000 to transfer the domain name to Complainant, otherwise Respondent James Cann would sell the domain name, within 48 hours, to the highest bidder for a sum of $4,785. See attached Annex [hereto] (hard copy format). Respondent James Cann clearly attempted to sell the domain name and/or extort money from Complainant. On information and belief, after Complainant filed the original complaint in this matter, Respondent James Cann transferred the domain name to Respondent Save Family Businesses Panel. Thus, circumstances indicate that the domain name wallmartshopper.com was acquired primarily for the purpose of selling the domain name.
b. "Respondent Save Family Businesses Panel
"On information and belief, Respondent Save Family Businesses Panel registered the domain name wallmartshopper.com after Complainant filed the original Complaint in this matter. see attached Annex [hereto] (hard copy format). Respondent Save Family Businesses Panel, based on the fame, wide recognition and goodwill of Complainantís mark should have known that Complainantís mark was famous and that consumers would associate the domain name wallmartshopper.com with Complainant.
"Respondent Save Family Businesses Panel has no legitimate purpose behind the registration of the domain name wallmartshopper.com. Rather, this Respondent registered the domain name primarily for the purpose of disrupting the business of Complainant, a competitor. Furthermore, as the domain name wallmartshopper.com is confusingly similar to Complainantís well recognized marks, Respondent Save Family Businesses Panel registered the domain name in an intentional effort to attempt to attract, for commercial gain, internet users to its Website by creating a likelihood of confusion between Complainant and the domain name wallmartshopper.com registered by Respondent Save Family Businesses Panel. The ICANN dispute procedures acknowledge such actions as evidence of bad faith. See ICANN Domain Name Dispute Resolution Procedures paragraph 4(b)(iii) and (iv).
"As Respondents use of this domain name creates a strong likelihood of confusion in the marketplace, this panel should reject Respondents bad faith registrations.
XIII. "Fraudulent Transfer
"Respondent James Cann owned the domain name wallmartshopper.com at the time the original Complaint was filed in this matter, on Wednesday, July 19, 2000. Complainant has electronic confirmation that Respondent James Cann received the original Complaint by electronic service means. See attached Annex [hereto] (hard copy format). After Respondent James Cann was served with the original Complaint, he sold the domain name to Respondent Save Family Businesses Panel.
"Complainant alleges that the domain name was traded in order to avoid Complainantís attempt to initiate proper dispute resolution procedures. As Respondent James Cann transferred the domain name wallmartshopper.com while this proceeding was pending, Complainant alleges that this transfer should be determined null and void in light of the circumstances." (Complaint, as amended)
Complainant requests that the Panel transfer the disputed domain name to it (Complaint, para. 13), and that the Panel determine that the transfer from Respondent James Cann to Respondent Save Family Businesses Panel is null and void.
Respondents did not reply to 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 1. 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 Respondents of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondents 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 Respondents were notified of the complaint and commencement of the proceedings (see Procedural History, supra).
As a threshold matter in this administrative proceeding, the Panel considers it appropriate to include both Respondent James Cann and Respondent Save Family Businesses Panel as parties. Complainant initiated this proceeding with the filing of its complaint by e-mail to WIPO on July 19, 2000. Such complaint was transmitted by Complainant at the same time to Respondent James Cann in accordance with paragraph 3(b)(xii) of the Rules. The Policy provides as follows:
"8. Transfers During a Dispute.
(a) Transfers of a Domain Name to a New Holder. You may not transfer your domain name registration to another holder (i) during a pending administrative proceeding brought pursuant to Paragraph 4Ö"
The Rules provide that "any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these rules to any Provider approved by ICANN" (Rules, para. 3(a)), also Policy, para. 4(e)). The Rules distinguish the "commencement of the administrative proceeding" that occurs when the Provider (e.g., WIPO) forwards the complaint to a respondent (Rules, para. 4(c)), from the "initiation" of the proceeding that occurs upon a complainantís filing of a complaint.
In this proceeding, Respondent James Cann transferred the disputed domain name to Respondent Save Family Businesses Panel after he had received the initial complaint from Complainant on July 19, 2000, but prior to formal transmittal by WIPO to him of the complaint on August 21, 2000. The delay between WIPOís receipt of the initial complaint and its transmittal of the complaint to both Respondents was in significant measure accounted for by Respondent Cannís notification to Complainant, following his receipt of a cease and desist demand, that he intended to transfer registration of the disputed domain name on or about July 20, 2000. The Panel considers that Respondent James Cannís transfer of the disputed domain name to Respondent Save Family Businesses Panel took place "during a pending administrative proceeding" within the meaning of paragraph 8(a) of the Policy since it occurred after the proceeding was "initiated".
The powers of a Panel are limited to requiring cancellation or transfer of the registration of a disputed domain name 2. A Panel is not authorized to direct the cancellation or annulment of the prior transfer of a name. The Panelís decision in this proceeding (regarding disposition of the disputed domain name) must therefore be directed against the current registrant; namely Save Family Businesses Panel. However, the registrar or a judicial authority may wish to consult this decision in a subsequent evaluation of the prior transfer by and from Respondent Cann to Respondent Save Family Businesses Panel. The Panel considers it appropriate to maintain Respondent James Cann as a party to this proceeding, and to render a determination as to him.
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 Respondents have 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 Respondent James Cannís registration, on March 17, 2000 of the disputed domain name "wallmartshopper.com", and also arose prior to Respondent Save Family Businessís substitution as named registrant on or before July 24, 2000.
Respondents have registered the domain name "wallmartshopper.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", (3) the domain name adds the word "shopper" following "wallmart", without a space between terms, and (4) the domain name drops the hyphen between "Wal" and "Mart" and adds an "l" to "Wal" (i.e., "Wall").
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 3. 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 "wallmartshopper.com" to "Wal-Mart". 4
The "Wal-Mart" mark is distinctive and well known. The terms "wallmart" and "Wal-mart" are very similar in appearance, and would be given the same pronunciation in English. The Panel determines that "wallmart" and "Wal-Mart" are confusingly similar in overall impression.
Respondents have added the term "shopper" to the confusing equivalent ("wallmart") of Complainantís "Wal-Mart" mark. "Shopper" is a common descriptive term referring to persons who "examine goods or services with intent to buy" 5. Respondents have not, by adding a common descriptive term after Complainantís mark, created a new or different mark in which they have rights or legitimate interests.
Complainantís "Wal-Mart" mark is well known. Its use in a domain name with the common descriptive term "shopper" is likely to cause consumers to associate the combination "wallmartshopper.com" with Complainant as the source of products on or sponsor of a website identified by that name. Retail stores commonly use the term "shopper" following their name to refer to customers in advertisement and promotion, and this increases the prospect that consumers would draw a connection between Complainant and the disputed domain name.
The Panel determines that the domain name "wallmartshopper.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 Respondents are 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 Respondents have engaged in abusive domain name registration.
The second element of a claim of abusive domain registration is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, para. 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii)
(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." (Policy, para. 4(c)).
There is no evidence on the record of this proceeding to suggest that either Respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services (prior to notice of a dispute), or that either Respondent has been commonly known by the domain name.
In e-mail correspondence to Complainant prior to transferring the disputed domain name, Respondent Cann asserted that the prospective purchaser of the name in a "private auction" for "$4,785" was an "anti-wal-mart organization". This assertion was in the context of an offer to sell the disputed domain name to Complainant for "$5,000" in response to a cease and desist and transfer demand. The name of the new registrant and second Respondent is "Save Family Businesses Panel".
Respondent Save Family Businesses Panel has not submitted a response in this proceeding. The address in its domain name registration is a post office box in Seattle, Washington. Upon transferring the disputed domain name to this entity, Respondent James Cann advised WIPO that he was moving from his current residence, and terminating his current e-mail contact address.
Paragraph 4(c)(iii) of the Policy expressly requires that fair use allowances be based on the active "making" of use of a mark, and neither Respondent is actively making use of Complainantís mark in this case. However, this sole panelist has previously observed that some circumstances might justify allowing a reasonable time period between registration and active "making" of fair use in order prevent a complainant from acting to stifle potential critical commentary 6.
In this proceeding, there is no evidence beyond the mere assertion by Respondent Cann that Respondent Save Family Businesses Panel may be an "anti-wal-mart organization", and the name of the second Respondent, to imply some theoretical fair use interest on the part of the second Respondent. The evidence in this proceeding includes too many suspect elements to warrant a determination that Respondent Save Family Businesses Panel is exercising fair use rights regarding Complainantís mark on what would essentially be the Panelís own initiative. The chain of events involving Respondent Cann suggests the substantial possibility that transfer of the disputed domain name was a sham transaction intended to avoid the consequences of a finding of abusive domain name registration. In the absence of meaningful evidence to the contrary, the Panel will not self-generate a right or legitimate interest for Respondent Save Family Businesses Panel.
The Panel determines that Respondents have 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 Respondents have 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 (1) 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)); (2) that a respondent has registered the domain name "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct" (id., para. 4(b)(ii)), and (3) that a respondent "by using the domain name, Ö [has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of [respondentís] web site or location of a product or service on [its] web site or location" (id., para. 4(b)(iv)).
Respondent Cann purports to have offered the disputed domain name for sale in a private auction, and he offered to sell the name to Complainant for $5,000 (and to cancel the auction). 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, 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.
Respondent Cannís self-described private auctioning of the disputed domain name (that is confusingly similar to Complainantís mark), combined with his direct offer of sale to Complainant, for a price substantially in excess of reasonable out-of-pocket expenses connected with registration of the name, constitutes 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.
The disputed domain name was transferred to Respondent Save Family Businesses Panel immediately following Respondent Cannís receipt of a cease and desist and transfer demand and initiation of this administrative proceeding. Respondent Cann should not have transferred the name to Save Family Businesses Panel because the transfer was precluded by paragraph 8(a) of the Policy. This was a bad faith transfer. There is no meaningful evidence on the record of this proceeding that the second Respondent has a legitimate interest in the disputed domain name, and there is substantial reason to doubt that the second Respondent took the disputed domain name as part of a bona fide transaction. Under these circumstances, the Panel finds that Respondent Save Family Businesses Panel acquired and used the disputed domain name in bad faith.
Complainant has thus established the third and final element necessary for a finding that Respondents have engaged in abusive domain name registration.
The Panel will therefore request the registrar to transfer the domain name "wallmartshopper.com" to the Complainant.
Based on its finding that the Respondents, James Cann and Save Family Businesses Panel, have engaged in abusive registration of the domain name "wallmartshopper.com" within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name "wallmartshopper.com" be transferred to the Complainant, Wal-Mart Stores, Inc.
Frederick M. Abbott
Dated: October 11, 2000
1 See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000.
2 Paragraph 4(i) of the Policy provides:
"Remedies. The remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the cancellation of your domain name or the transfer of your domain name registration to the complainant."
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 Miriam-Webster Collegiate Dictionary (Online), defines the noun "shopper" as "1 : one that shops", and defines the verb "shop" as "1 a : to examine goods or services with intent to buy" (http://www.m-w.com/cgi-bin/dictionary).
6 See Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, Case No. D2000-0477, dated July 20, 2000