WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Wal-mart Stores, Inc. v. Yongsoo Hwang, NO-WALMART and NO-WALMART.COM

Case No. D2000-0838

 

1. The Parties

The complainant is Wal-Mart Stores, Inc. of 702 Southwest Eighth Street, Bentonville, Arkansas 72716, United States of America. The respondents are Yongsoo Hwang, no-walmart and no-walmart.com, all of Hyundai Apt. 104-606, Yonghyeon-dong, Uijeongbu-si, Gyeonggi-do, 480-050, Republic of Korea.

 

2. The Domain Names and Registrar

The disputed domain names are wal-martkorea.com, walmartkorea.com and no-walmart.com. The registrar with which the domain names wal-martkorea.com and no-walmart.com are registered is Network Solutions Inc., of Herndon, Virginia, USA. The registrar with which the domain name walmartkorea.com is registered is Tucows.com, Inc., of Toronto, Ontario, Canada.

 

3. Procedural History

This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, in accordance with the Rules for the Policy, approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules for the Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").

The original complaint was initiated against the first respondent only and concerned the domain name wal-martkorea.com. It was received by the Center by email on July 20, 2000 and in hard copy on July 24, 2000. Receipt was acknowledged on July 26, 2000. On July 27, 2000, registration details in relation to that domain name were sought from Network Solutions. On August 20, 2000, registration details were confirmed by Network Solutions, which stated that its Service Agreement version 4.0 applied. On August 21, 2000 and again on August 28, 2000 the Center asked the complainant to amend the complaint so as to include a submission to the jurisdiction of the domain-holder, as required under that version of the Service Agreement.

On September 1, 2000 the complainant filed an amended complaint by email and in hardcopy, which named the first respondent and No-walmart.com as respondents and sought relief in relation to all three disputed domain names. It also submitted to the jurisdiction of the Republic of Korea in relation to the domain name wal-martkorea.com (as the Center had requested) and in relation to the newly added domain name walmartkorea.com. The complainant also submitted to the jurisdiction of the Province of Ontario, Canada, in relation to the newly added domain name no-walmart.com, being the jurisdiction to which the complainant asserted the registrant had submitted in its registration agreement with Tucows.com, Inc.

Also on September 1, 2000 Network Solutions corrected the information it had previously provided to the Center, stating its 5.0 version Service Agreement applied to the domain name wal-martkorea.com. In consequence, the complainant filed a second amended complaint by email on September 6, 2000 and in hardcopy on September 8, 2000, in which, in relation to the domain names wal-martkorea.com and walmartkorea.com it submitted to the jurisdiction of The United States District Court for the Eastern District of Virginia, USA.

On September 15, 2000 the Center requested registration verification of the domain name walmartkorea.com from Network Solutions and of the domain name no-walmart.com from Tucows.com, Inc. On September 18, 2000 Network Solutions informed the Center that the domain name walmartkorea.com had been transferred to Tucows.com as registrar on August 7, 2000. Also on September 18, 2000 Tucows.com informed the Center that the domain name no-walmart.com was not registered with it and appeared to be registered with Network Solutions.

On September 29, 2000 the Center drew these matters to the attention of the complainant and requested a curative filing of the complaint identifying the correct registrar for each of the disputed domain names and amending the paragraph concerning submission to mutual jurisdiction accordingly.

The complainant filed a third amended complaint by email on October 3, 2000 and in hard copy on October 4, 2000, correctly identifying the registrars of the three disputed domain names.

On October 4, 2000 the Center sought confirmation of registration details of the domain names wal-martkorea.com and no-walmart.com from Network Solutions and of the domain name walmartkorea.com from Tucows.com.

On October 5, 2000 Network Solutions stated:

- the registrant of the domain name wal-martkorea.com is Hwang Yongsoo; and

- the registrant of the domain name no-walmart.com is No-walmart.

On October 5, 2000 Tucows.com stated:

- the registrant of the domain name walmartkorea.com is no-walmart.com.

The Center notified the complainant of this information on October 5, 2000 and sought a correction of the third amended complaint to accommodate the different registrants. It also sought correction of a discrepancy between the mutual jurisdiction paragraphs of the email and hard copy versions of the third amended complaint. The complainant had on October 3, 2000 remedied that discrepancy by sending a version of the hardcopy third amended complaint with the corrected mutual jurisdiction paragraph to the Center, the respondent and the registrars.

The complainant filed amendments to the third amended complaint on October 5, 2000 by email and on October 9, 2000 in hardcopy. These amendments named as respondents Yongsoo Hwang and No-walmart. Following a telephone call between the Centerís Case Officer and the complainantís counsel, the complainant by email on October 18, 2000 and in hardcopy on October 20, 2000 filed its second (and, as it happened, last) amendment to its third amended complaint, naming as respondents Yongsoo Hwang, no-walmart and no-walmart.com, thus bringing into the proceeding as respondents the registrants of the three domain names in dispute.

On October 24, 2000 the Center satisfied itself that the complainant had complied with all formal requirements, including payment of the prescribed fee; printed out copies of the disputed web pages and formally notified the respondents by post/courier, fax and email of the complaint and of the commencement of this administrative proceeding and sent copies to the complainant, the registrars and ICANN.

The last day specified in the notice for a response was November 12, 2000. On October 31, 2000 the Center received a request by email for a translation of the Notification of Complaint and Commencement of Administrative Proceeding, signed "Sincerely, Hwang Yong soo No-walmart.com". On November 1, 2000 the Center replied it was unable to provide this. On November 16, 2000 the Center notified the respondent that it was in default and that the Center would proceed to appoint an administrative panel.

On November 22, 2000, the Center invited Alan L. Limbury to serve as panelist. That day, Mr. Limbury accepted the appointment and submitted a Statement of Acceptance and Declaration of Impartiality and Independence. On November 23, 2000 the Center transmitted the case file to the panel and notified the parties of the projected decision date of December 6, 2000.

The language of the proceeding was English.

The panel is satisfied that the third amended complaint, as amended the second time, was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the panel agrees with the Centerís assessment concerning the complaintís compliance with the formal requirements; the complaint was properly notified in accordance with paragraph 2(a) of the Rules; no response was filed and the administrative panel was properly constituted.

 

4. Factual Background (uncontested facts)

The complainant operates 144 retail stores throughout the United States and also has stores in Canada, Puerto Rico, Mexico, Brazil, Argentina, China, United Kingdom, Indonesia, Germany and Korea.

The 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, based on first use as early as July 1, 1962.

The complainant holds registrations for the WAL-MART mark in 46 countries. The complainantís rights in each of these 46 countries predate the respondentís registration of the disputed domain names.

The 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.

The 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 the complainant. It 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 its corporate online identity and brand.

The first respondent registered the domain names wal-martkorea.com and walmartkorea.com with Network Solutions on October 4, 1999.

On June 28, 2000, the complainant sent the first respondent a cease and desist letter by email and by mail. He did not respond. On June 30, 2000, the first respondent registered the domain name no-walmart.com with Network Solutions in the name of no-walmart. On August 7, 2000, after the first respondent had received from the complainant a copy of the original complaint (concerning the domain name wal-martkorea.com), he arranged for the registrar of the domain name walmartkorea.com to be changed from Network Solutions to Tucows.com and for that domain name to be registered in the name of No-walmart.com.

 

5. Partiesí Contentions

A. Complainant

Identity or confusing similarity

The complainantís rights in its WAL-MART mark are expansive and predate the respondentís registrations of the disputed domain names, which are identical or confusingly similar to the 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 names "WAL-MARTKOREA" and "WALMARTKOREA" are a combination of two words, "WAL-MART" (or "WALMART") and "KOREA". The first word "WAL-MART" is identical to Complainantís mark WAL-MART. Similarly, "WALMART" is almost identical in appearance, and identical in sound, to Complainantís mark WAL-MART. Respondent merely adds the geographic designation KOREA, thus forming the domain names wal-martkorea.com and walmart korea.com. Similarly, the second level domain name "NO-WALMART" is also a combination of two words, "NO" and "WALMART." The second word, "WALMART," is almost identical in appearance and identical in sound to Complainantís mark WAL-MART. The Respondent merely adds the negative noun "NO" before it, thus forming the domain name "no-walmart.com".

Second, the disputed domain names are confusingly similar to the complainantís WAL-MART mark, because the WAL-MART mark is famous throughout the world. The complainantís "WAL-MART" mark is, in fact, so famous that buyers would be likely to think that any site connected with the disputed domain names originates with the complainant.

The WAL-MART mark is famous:

- because it has been in continuous use since at least 1962;

- because of the sheer number of retail store locations the complainant operates;

- because the complainant makes extensive use of the mark; and

- because the complainant advertises the mark extensively.

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 is associated with the complainant. The respondentís domain names are likely to confuse customers and cause them to believe mistakenly that the disputed domain names are associated with Wal-Mart stores and specifically, the Wal-Mart family of stores in Korea.

The complainant did not authorize the respondentís use of any domain name that is likely to be confused with the complainantís WAL-MART mark.

Illegitimacy

The respondent has no rights or legitimate interests in respect of the disputed domain names.

First, the respondent is not currently using the domain names wal-martkorea.com and walmartkorea.com in connection with any ongoing business. Its only activity with respect to those domain names has been to use them as hyper-links to the third domain name at issue, no-walmart.com. Nor is the respondent using the domain name no-walmart.com in connection with any ongoing business. Its only activity with regard to that domain name has been to offer it for sale on the website greatdomains.com.

Second, the complainant has searched for but not found any evidence that the respondent holds trademark rights to the marks "WAL-MARTKOREA," "WALMARTKOREA," or "NO-WALMART" anywhere in the world.

Bad faith

The disputed domain names were registered in bad faith. Again, the respondent is not using the domain names with any ongoing, legitimate business. The domain names wal-martkorea.com and walmartkorea.com are merely hyperlinks to the no-walmart.com website. Upon information and belief, the no-walmart.com website contains information related only to this proceeding, including a copy of the cease and desist letter, the complaint, and an e-mail acknowledging receipt of the complaint.

Because this information was posted to the website only after the complainant began to pursue its rights, the domain name no-walmart.com was not used prior to that for any legitimate business purposes. Moreover, circumstances indicate that the respondent registered the domain names wal-martkorea.com and no-walmart.com primarily for selling or otherwise transferring them 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 Policy paragraph 4(b)(i).

The complainant found the domain names wal-martkorea.com and no-walmart.com listed for sale on the Great Domains website, www.greatdomains.com. The respondentís asking price was "make offer." While this is not a specific dollar amount, Great Domains will not forward any offer below three hundred dollars ($300). This offer is well in excess of the respondentís registration fee. The complainant did not solicit these offers to sell by the respondent.

On June 30, 2000, two days after receiving the complainantís cease and desist letter, the respondent registered the domain name no-walmart.com.

These circumstances indicate that the disputed domain names were acquired primarily for the purpose of selling the domain names to the complainant, owner of the WAL-MART mark. The asking price of at least three hundred dollars ($300) for the wal-martkorea.com and the no-walmart.com domain names is certainly in excess of the respondentís out-of-pocket costs directly related to the domain names.

On information and belief, the respondent registered the disputed domain names with knowledge that the complainant held rights in and to its WAL-MART mark. The respondent had constructive notice of the complainantís trademark rights by virtue of (a) the complainantís trademark registrations in the United States and Korea, as well as in many other countries; (b) the 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. The respondent logically also had notice of Complainantís registration for the domain name wal-mart.com by reason of: (a) Network Solutionís easy to use WHOIS directory, and (b) the fact that a business registrant would, at least initially, seek registration of the .com version of a proposed domain name.

B. Respondent

There was no response from the respondent.

 

6. Discussion and Findings

To qualify for cancellation or transfer, a complainant must prove each element of paragraph 4(a) of the Policy, namely:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and,

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

Numerous cases under the Policy have adopted and applied the principle that a respondentís failure to dispute the allegations of the complainant permits the inferences that the complainantís allegations are true and that the respondent knows its website is misleading. See, for example, Hewlett-Packard Company v. Full System (Case FA 0094637); David G. Cook v. This Domain is For Sale (Case FA0094957) and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge (Case FA0094925).

A somewhat broader statement of principle is contained in Reuters Limited v. Global Net 2000, Inc. (Case D2000-0441):

"The Panel draws two inferences where the Respondent has failed to submit a response: (a)"the Respondent does not deny the facts which the Complainant asserts" and (b) "the Respondent does not deny the conclusions which the Complainant asserts can be drawn from those facts"."

Identity or confusing similarity

Each of the domain names walmartkorea.com, wal-martkorea.com and no-walmart.com incorporates the whole of and is virtually identical to the complainantís registered trade mark WAL-MART. Neither the absence of the hyphen, the suffix "korea" nor the suffix ".com" detract from the overall impression of the dominant part of the name in each case, namely the trademark WAL-MART, recognizable in at least 46 countries, including Korea, as denoting the retail stores of the complainant.

See Minnesota Mining & Mfg. Co. v. Taylor, 21 F. Supp. 2d 1003, 1005 (D. Minn. 1998) (finding "post-it.com" and "Post-It" to be the same); Interstellar Starship Servs. Ltd. v. Epix, Inc., 983 F. Supp. 1331, 1335 (D. Or. 1997) ("In the context of Internet use, [Ďepix.comí] is the same mark as [ĎEPIXí]"); Planned Parenthood Federation of America, Inc. v. Bucci, 1997 U.S. Dist. LEXIS 3338, No. 97-0629 (S.D.N.Y. Mar. 24, 1997) (concluding that "planned-parenthood.com" and "Planned Parenthood" were essentially identical), affíd, 152 F.3d 920 (2d Cir. 1998), cert. denied, 119 S. Ct. 90 (1998).

Virtual or essential identity is sufficient for the purposes of paragraph 4(a)(i) of the Policy. The panel finds the complainants have established both sufficient identity and confusing similarity.

Illegitimacy

Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish the registrantís rights or legitimate interests to the disputed domain name. The respondent has made no attempt to demonstrate any of these or any other circumstances of legitimacy and the panel may draw appropriate inferences from this.

Nevertheless, the complainants have the onus of proof on all issues.

In State Farm Mutual Automobile Insurance Company v. Rocky E. Faw (Case FA94971) the respondent was found to have no legitimate interests in respect of the domain name where he had neither used nor developed the domain name for a legitimate noncommercial or fair purpose and was not using the domain name in connection with a bona fide offering of goods or services. See also Leland Stanford Junior University v. Zedlar Transcription & Translation (Case FA94970).

Here there has been no use other than to offer two of the disputed domain names for sale to the highest bidder and to link the three sites together to provide information about this complaint. As mentioned below in relation to the topic of bad faith, it is likely the respondent knew of the complainantsí trademark at the time of registration of the disputed domain names.

Under these circumstances, the panel finds the complainant to have established that the respondent has no rights or legitimate interests in any of the disputed domain names.

Bad faith

It is clear the first respondent is the mind and will behind each of the disputed domain names. He is the registrant of wal-martkorea.com, was the registrant of walmartkorea.com, which he arranged to transfer to another registrar in the name of a different registrant after becoming aware of the original complaint (about wal-martkorea.com), and is the relevant contact in the case of all the disputed domain names. The registrants of walmartkorea.com and no-walmart.com are not legal persons. It was the first respondent who corresponded with the Center, seeking a translation of the Notification. He had knowledge of the original complaint as early as July 20, 2000, had received copies of all the amendments as they were made yet failed to respond to the amended third amended complaint by mid-November, having been formally put on notice by the Center of the deadline for a response. Accordingly, the question of bad faith in relation to all three disputed domain names is to be decided by reference to the actions and intent of the first respondent.

The domain names wal-martkorea.com and no-walmart.com have been offered for sale by auction through greatdomains.com (for at least $US300 each, being the lowest bid accepted by greatdomains.com). The site at no-walmart.com displays details of this complaint, including the cease and desist letter, both in English and in Korean (an indication that the first respondent is able to arrange translation from English to Korean when he wishes to do so). Internet users seeking access to wal-martkorea.com and walmartkorea.com are redirected to the homepage of no-walmart.com, where details of this complaint are displayed.

In SportSoft Golf, Inc. v. Hale Irwinís Golfersí Passport (Case FA94956) a finding of bad faith was made where the respondent "knew or should have known" of the registration and use of the trade mark prior to registering the domain name. Likewise Marriott International, Inc. v. John Marriot (Case FA94737); Canada Inc. v. Sandro Ursino (Case AF-0211) and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com (Case FA95037).

The panel finds it likely that the first respondent knew of the registration and use of the trademark WAL-MART when he registered the disputed domain names. The panel finds that the first respondent registered the names wal-martkorea.com and no-walmart.com primarily for the purpose of selling them to the complainant or to a competitor of the complainant for a price exceeding the costs of registration. The registration of the domain name walmartkorea.com simultaneously with the registration of wal-martkorea.com and the transfer of walmartkorea.com to another registrar upon the original complaint being made is a further basis on which the panel finds that the first respondentís registration of that name was in bad faith. In each case the use to which the domain names have been put, namely to provide information about this complaint, amounts to bad faith use.

Accordingly, the complainant has established that the disputed domain names were registered and are being used in bad faith, within the meaning of paragraph 4(b)(i) of the Policy and generally within paragraph 4(b).

 

7. Decision

Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the panel requires the domain names wal-martkorea.com, walmartkorea.com and no-walmart.com to be transferred to the complainant.

 

 


 

 

Alan L. Limbury
Sole Panelist

Dated: December 3, 2000