WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Wal-Mart Stores, Inc. v. Instant Ads, LLC

Case No. D2001-0323

 

1. The Parties

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

1.2 The Respondent is Instant Ads, LLC, a limited liability company having a place of business in Grapevine, Texas, USA.

 

2. The Domain Name and Registrar

2.1 The disputed domain name is "wal-mart-realty.com".

2.2 The registrar of the disputed domain name is Namesecure.com with a business address in Concord, California, USA.

 

3. Procedural History

3.1 Complainant initiated the proceeding by filing a complaint, received by the WIPO Arbitration and Mediation Center ("WIPO") on March 5, 2001.

3.2 On March 8, 2001, all formal requirements for the establishment of the complaint were checked by WIPO and found to be in compliance with the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel accepts the WIPO checklist as evidence of proper compliance with the Policy, Rules, and Supplemental Rules.

3.3 On March 15, 2001, WIPO transmitted notification of the complaint and commencement of the proceedings to Respondent.

3.4 On April 9, 2001, WIPO transmitted notification to Respondent of its default in responding to the complaint.

3.5 On April 11, 2001, 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 April 11, 2001, the undersigned transmitted by facsimile the executed Statement and Declaration to WIPO.

3.6 On April 12, 2001, 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 April 26, 2001.

The Panel has not received any further 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. The proceedings have been conducted in English.

 

4. Factual Background

4.1 Complainant Wal-Mart Stores, Inc. owns the service mark WAL-MART for "retail department store services," in international class 42, which was registered July 20, 1993, with a claimed first use as early as July 1, 1962.

4.2 Complainant Wal-Mart Stores, Inc. also registered the domain name "wal-martrealty.com" on December 10, 1999. The domain name is used to host a website for Wal-Mart Realty, a division of Wal-Mart Stores, Inc. The mark WAL-MART REALTY is displayed prominently on the website.

4.3 At least as early as August 28, 2000, the Respondent operated a website located at "wal-mart-realty.com" to advertise and list real estate. Respondent's website is no longer active.

 

5. Partiesí Contentions

A. Complaint

Complainant states:

"Complainant objects to Respondentís domain name registration because this registration is likely to be confused with Complainantís distinctive service marks WAL-MART and WAL-MART REALTY. Complainantís rights in its WAL-MART mark are expansive and predate Respondentís registration of the domain name "wal-mart-realty.com."

"Complainant owns the famous service mark WAL-MART for retail services in a number of countries. Complainant operates retail stores in several countries and owns registrations for the mark in 46 countries. Complainantís rights in each of these 46 countries predate Respondentís registration of the "wal-mart-realty.com" domain name. For example, 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 B (hard copy format). Registration No. 1,783,039 is based on first use of the mark as early as July 1, 1962."

"Complainant operates a real estate company, known as Wal-Mart Realty Company. In connection with its real estate company, Complainant owns the domain name "wal-martrealty.com". See attached Annex D (hard copy format). Complainant also owns a fully operational website located at "wal-martrealty.com". See attached Annex E (hard copy format). Therefore, Wal-Mart also bases this complaint on its common law rights in the service marks WAL-MART REALTY."

"The domain name "wal-mart-realty.com" is identical or confusingly similar to Complainantís WAL-MART trademark. First, the domain name "wal-mart-realty.com" is confusingly similar to Complainantís WAL-MART mark. Consumers will think that a site connected with Respondentís domain name "wal-mart-realty.com" is affiliated with Complainantís Wal-Mart Realty Company and Complainantís "wal-martrealty.com" domain name and website which is located at "wal-martrealty.com"".

"Second, there is clear similarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. The second level domain name "WAL-MART-REALTY" is a combination of two words, "WAL-MART" and "REALTY." The first word "WAL-MART" is identical to Complainantís mark WAL-MART. The entire domain name is identical to Wal-Martís WAL-MART REALTY mark."

"The WAL-MART mark is famous which enhances the likelihood of confusion. The mark has been in continuous use since at least 1962. Wal-Mart currently operates 1,736 Wal-Mart stores and 888 Wal-Mart Supercenters, among others, throughout the United States. See attached Annex F (hard copy format). Complainant is the worldís largest retailer with stores in the United States, Argentina, Brazil, Canada, China, Germany, South Korea, Mexico, Puerto Rico and the United Kingdom. See attached Annex G (hard copy format) and "walmartstores.com". Worldwide annual sales in 2000, were over $160 billion."

"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, environmental programs and a variety of community support programs. See attached Annex H (hard copy format). As stated above, Complainant also uses its WAL-MART mark in connection with a real estate company known as Wal-Mart Realty Company. See attached Annex E (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 "walmart.com", "wal-mart.com", "walmartstores.com" and "wal-martrealty.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 "wal-mart-realty.com" is associated with Wal-Mart stores and/or with Wal-Mart Realty Company."

"Complainant did not authorize Respondentís use of a domain name that is likely to be confused with Complainantís WAL-MART mark."

"Respondent has no rights or legitimate interests in respect of the domain name "wal-mart-realty.com". To the best of Complainantís knowledge, Respondent has no rights to any trademark consisting of the terms "WAL-MART" or "WAL-MART-REALTY" in any country. Instead, Respondent is using the domain name "wal-mart-realty.com" with the intent, for commercial gain, to misleadingly divert Complainantís consumers to its website. Respondent does not have legitimate rights to the domain name "wal-mart-realty.com".

"Complainant believes the domain name "wal-mart-realty.com" was registered in bad faith. On information and belief, Respondent registered the domain name "wal-mart-realty.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; and (b) Complainantís use of a trademark registration symbol when referencing the mark in print advertising and on its websites located at "walmart.com", "wal-mart.com", and "walmartstores.com".

"Moreover, Complainant owns and operates a Wal-Mart store less than two miles from Respondentís place of business and three other stores within fifteen miles of the Respondentís place of business, all of which were open at least as early as 1998, see attached Annex I (hard copy format). The presence of these stores in the immediate vicinity of Respondentís place of business is a clear indication that Respondent was aware of Complainant and its trademark rights prior to registering the domain name."

"Not only does Complainant have significant rights in the "Wal-Mart" mark, but Complainant also owns a real estate company known as Wal-Mart Realty Company and a website in connection with this company which is located at "wal-martrealty.com".

"Respondent once used the domain name and the corresponding website to advertise and list real estate. See attached Annex J (hard copy format). By using the domain name "wal-mart-realty.com", and the corresponding website which is located at "wal-mart-realty.com", Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainantís mark as to the source, sponsorship, affiliation, or endorsement of Respondentís website or location or of a product or service on Respondentís website or location."

"Although there is no currently active website associated with Respondentís domain name, past activity demonstrates that there has been a website offering similar services, see attached Annex K (hard copy format). Respondent still owns the domain name and could re-activate the website and continue its business at any time."

"Circumstances indicate that the domain name "wal-mart-realty.com" was acquired, in bad faith, primarily for the purpose of diverting Complainantís customers to Respondentís site. As Respondentís use of this domain name creates a strong likelihood of confusion in the marketplace, this panel should reject Respondentís bad faith registration."

B. Response

Respondent did not file a response to the complaint.

 

6. Discussion and Findings

6.1 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. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

6.2 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., paragraph 2(a) of the Rules).

6.3 WIPO forwarded notification of the complaint to the Respondent and his separate administrative and technical contacts via post/courier and email in accordance with the contact details found in the appropriate WHOIS database. Currently the "wal-mart-realty.com" domain name resolves to a default screen operated by Namesecure.com, the technical contact and registrar with which the domain name is registered. WIPO also forwarded notification of default to the Respondent and its administrative and technical contacts via email.

6.4 Based on the methods employed to provide the Respondent with notice of the complaint and default, including the subsequent use of a default screen by the Respondent's technical contact, who was also notified of the complaint and default, 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. The Panel also finds that the failure of the Respondent to furnish a reply is not due to any omission by WIPO.

6.5 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.

In the administrative proceeding, the complainant must prove that each of these three elements are present.

6.6 Complainant asserts that the domain name "wal-mart-realty.com" is likely to be confused with Complainant's service marks WAL-MART and WAL-MART REALTY.

6.7 As the Respondent has failed to submit a response to the complaint, the Panel may accept as true all of the allegations of the complaint. Talk City, Inc. v. Michael Robertson, D2000-0009, February 29, 2000.

6.8 The Panel finds the "wal-mart-realty.com" domain name is identical and confusingly similar to the WAL-MART REALTY common law mark, and that the Complainant has established it has rights in the mark WAL-MART REALTY, pursuant to paragraph 4(a)(i) of the Policy. Use of hyphens in Respondent's domain name is of no consequence. SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs, WIPO Case No. D2000-0131, April 13, 2000.

6.9 Based upon the continuous use and fame of the WAL-MART service mark, the Panel also finds that the "wal-mart-realty.com" domain name is confusingly similar to the Complainant's registered WAL-MART service mark.

6.10 Paragraph 4(c) of the Policy lists several circumstances, without limitation, that if found by the Panel shall demonstrate the Respondent's rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii). In particular, paragraph 4(c) states:

(i) before any notice to you [Respondent] 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.

6.11 The length of time the mark has been used, the amount of advertising conducted and the popularity of Complaint's services offered under the registered WAL-MART mark leads to the conclusion that Respondent was or certainly should have been aware of the mark prior to registering the domain name. Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137, April 18, 2000.

6.12 There is no evidence in the record that would indicate that Respondent has any rights or legitimate interests in respect of the domain name "wal-mart-realty.com".

6.13 The Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name "wal-mart-realty.com", pursuant to paragraph 4(a)(ii) of the Policy.

6.14 Paragraph 4(b) of the Policy lists several factors, without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In particular, paragraph 4(b)(iv) states:

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's 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.

6.15 The Panel previously found that the Respondent had constructive knowledge of the Complainant's service mark at the time it registered the domain name "wal-mart-realty.com". This finding is bolstered by the proximity of the Respondent's place of business to one of the Complainant's Wal-Mart stores.

6.16 In the absence of contrary evidence, constructive knowledge of the Complainant's marks coupled with Respondent's prior use of the domain name to resolve to a website advertising competing services, i.e., real estate listings, is evidence of registration and use in bad faith.

6.17 The Panel finds that the Respondent used "wal-mart-realty.com" to intentionally misdirect Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant's marks. Therefore, the Panel finds the Complainant has established that the Respondent registered and used the domain name "wal-mart-realty.com" in bad faith, pursuant to paragraph 4(b)(iv) of the Policy.

 

7. Decision

As the Complainant, Wal-Mart Stores, Inc., has established that the Respondent, Instant Ads, LLC, has engaged in abusive registration of the domain name "wal-mart-realty.com" within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name "wal-mart-realty.com" be transferred to the Complainant.

 


 

R. Eric Gaum
Sole Panelist

Dated: April 26, 2001