WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Wal-Mart Stores, Inc . v. Su Rong Ye

Case No. D2002-0771

 

1. The Parties

The Complainant in this administrative proceeding is Wal-Mart Stores, Inc., of 702 Southwest Eighth Street, Bentonville, Arkansas, 72716 in the United States of America.

The Respondent is Su Rong Ye, of 4F, No. 92 Ju-Kuang Road, Chung Cheng Dist. Taipei City Taipei 100, Taiwan, Province of ChinaAIWAN ROC.

 

2. The Domain Name(s) and Registrar(s)

The domain name in dispute is <walmartchina.com>.

The registrar of the disputed domain name is OnlineNIC, Inc.

 

3. Procedural History

The WIPO Arbitration and Mediation Center ("Center") received the Complaint via e--mail on August 16, 2002, and in hard copy on on August 20, 2002. The Complaint nominated determination by a single member Panel. The Complaint certifies that copies of the Complaint were sent to the Respondent by e-mail and courier on August 16, 2002.

The Center transmitted an Acknowledgement of Receipt of Complaint to the Complainant and the Respondent on August 20, 2002. It also forwarded by e-mail the Request for Registrar Verification to OnlineNIC, Inc. d/b/a China-Channel.com on that date.

On August 26, 2002, OnlineNIC, Inc. confirmed by e-mail to the Center that it had received a copy of the Complaint and that:

(a) the domain name was registered with it,

(b) Su Rong Ye was the current domain name holder and also the Administrative, Technical and Billing Contacts;

(c) the current contact details for Su Rong Ye (in each of these capacities) are those set out in Section 1 abovethe Complaint;

(d) the Uniform Domain Name Disputes Resolution Policy applied to the domain name; and

(e) the applicable language was English.

The Center verified that the Complaint complied with the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules") and that payment in the required amount had been received from the Complainant. Accordingly, the Center transmitted to the parties the Notification of Complaint and Commencement of Administrative Proceeding on August 29, 2002, specifying that date as the formal date of commencement. The notification, including a copy of the Complaint was transmitted to the Respondent both by e-mail and post/courier. The notification included a warning that the due date for any Response was September  18, 2002.

The Respondent did not file a Response by that date and on September 20, 2002, the Center forwarded to the parties a formal Notification of Respondent Default.

The Complainant, under protest, submitted a First Amendment to the Complaint on October 1, 2002. This amendment sought to amend the specification of the "Mutual Jurisdiction" from the US District Court for the Northern District of California to the courts of the Peopleís Republic of China ("PRC"). On October 2, 2002, however, under further protest, the Complainant submitted a Second Amendment substituting the Mutual Jurisdiction of the courts of Taiwan, Republic of China for those of the PRC.

Following provision of my Statement of Acceptance and Declaration of Impartiality, the Center appointed me as the Sole Panellist on October 3, 2002, and advised the parties that the decision was due on October 17, 2002. The Center also forwarded the Case File to me by e-mail and courier.

Subject to the question of Mutual Jurisdiction, the procedural requirements of the Policy, the Rules and the Supplementary Rules have been met. For the reasons I discuss below in section 5, I will accept the Second Amendment as properly made. Accordingly, I am satisfied that the procedural requirements of the Policy, the Rules and the Supplemental Rules have been complied with and that this Administrative Proceeding is properly constituted.

 

4. Factual Background

The Complainant states that it has registered WAL-MART as a trade marktrademark in 46 countries, including:

Country

Registration No

Registration date

Unites States of America

1,783,039

July 20, 1993

Taiwan

76054

June 16, 1995

Taiwan

78929

October 1, 1995

Taiwan

124394

June 1, 2000

PRC

837822

May 7, 1996

PRC

855807

July 14, 1996

PRC

146614

2000

PRC

148497

2000

The registrations cover a range of department stores services in International Class 42  and retail, advertising and business services in International Class 35.

The registration in the USA specifies first use as early July 1, 1962. It currently operates 1,647 Wal-Mart stores and 1,066 Wal-Mart Supercentres throughout the USA.

In addition, the Complaint states that the Complainant has 648 Wal-Mart stores and 455  Wal-Mart Supercenters outside the USA in Argentina, Brazil, Canada, China, Germany, South Korea, Mexico, Puerto Rico and the United Kingdom. Worldwide annual sales in fiscal 2002 were over US$217 billion, with $35 billion being derived from outside the USA.

Outside the USA, the Complainant has operated retail stores in the PRC since 1996. It now has 20 outlets there and employs 8,000 people in the PRC. The stores are conducted under the name Wal-Mart China.

The Complainant does not have retail stores in Taiwan. As noted above, however, it does have trade marktrademark registrations there.

In addition to web sitewebsites maintained at "http://www.walmartstores.com", "http://www.walmart.com" and "http://www.wal-mart.com", the Complainant also operates a web sitewebsite at "<http://www.wal-martchina.com">.

The Respondent would appear to have registered the domain name, <walmartchina.com> on March 29, 2002. The domain name did not resolve to an active web- site during the period when this decision was being prepared.

 

5. Discussion and Findings

Preliminary matters

As noted above, the Center has served a copy of the Complaint on the Respondent by both e-mail and post/courier to the address details provided by the Respondent to the relevant registrar (and which that registrar has confirmed are current). Rule 5(e) and 14(a) of the Rules direct the Panel, in the absence of exceptional circumstances, to decide the dispute on the basis of the Complaint where the Respondent does not submit a Response. This is not a simple "rubber stamping", however, as rule 15(a) directs the Panel to decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and principles of law that the Panel deems applicable.

The next issue is the question of the Complainantís proposed amendments. The First Amendment to the Complaint states that the US District Court for the Northern District of California was specified as the Mutual Jurisdiction in the Complaint as originally filed because OnlineNIC, Inc. provided a San Francisco address to ICANN in connection with its appointment as a registrar. OnlineNIC, Inc. also asserts that it is a California corporation in its downloadable OnlineNIC-Member Joint Agreement. OnlineNIC, Inc. had not responded to an e-mail request for identification of its "principal place of business". WIPO subsequently informed the Complainant that OnlineNIC, Inc.ís principal place of business was in the PRC, not the USA. Hence, the proposed First Amendment. OnlineNIC, Inc., however, has advised that the registrant did not accede to jurisdiction in the registrarís principal place of business. Therefore, only a court having jurisdiction at the registrantís address as shown in OnlineNIC, Inc.ís Whois database will satisfy thesatisfy the definition of "Mutual Jurisdiction" in paragraph 1 of the Rules. Hence, the proposed Second Amendment.

I propose to allow the amendments, or at least the Second Amendment. The information about OnlineNIC, Inc.ís principal place of business and whether or not the Respondent had submitted in his or her registration agreement to the jurisdiction of the courts in that place is information which is peculiarly in the possession of OnlineNIC, Inc. and the Rrespondent. It is not something that the Complainant could reasonably be expected to know and, on the basis of the statements in the case file, it is clear that the Complainant has made a good faith election within the Rules. Moreover, the proposed Second Amendment can hardly be detrimental to the Respondent since it would make his or her local courts the relevant jurisdiction, thus avoiding the potentially heavy expense of litigating in foreign courts in, possibly, a foreign language.

Substantive matters

Under paragraph 4(a) of the Policy the Complainant has the burden of proof in respect of the following three elements:-

(i) The domain name is identical or confusingly similar to a trade marktrademark 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 domain name has been registered and is being used in bad faith.

I deal with each of these elements in turn.

Confusing similarity to Complainantís trade marktrademark rights.

There are two issues here: whether or not the Complainant has trade marktrademark rights and, secondly, whether or not the domain name is confusingly similar to that (or those) trade marktrademarks. This is a different test to that involved in trade marktrademark law where questions of the goods or services covered by the trade marktrademark rights can be relevant to the likelihood of confusion: see for example Disney Enterprises, Inc. v. John Zuccarini, Cupcakekae City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank. AG v Bob Larkin, WIPO Case No. D2002-0420. The question of the goods or services covered by the Complainantís trade marktrademark rights may of course be relevant to the issues under paragraphs 4(b) and 4(c).

Here, the domain name is virtually identical to the Complainantís registered trade marktrademark rights in, in particular, Taiwan. The only differences are the omission of the hyphen between "Wal" and "Mart", the addition of the geographical descriptor "China" and, of course, ".com". Such differences are irrelevant. There are many decisions on each of these points, but see e.g. in addition to Disney Enterprises, Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046, for the addition of a plain geographical description; Ticketmaster Corporation v. Discover Net Inc., WIPO Case No. D2001-0252; Williams-Sonoma d/b/a Pottery Barn vBarn v. John Zuccarini, WIPO Case No.  D2002--0582 for the inclusion of a gTLD.

The domain name <walmartchina.com> is therefore confusingly similar to the Complainantís registered trade marktrademarks.

No rights or legitimate interests

The Complaint rather baldly states that "To the best of Complainantís knowledge, Respondent has no rights to any trademark consisting of the terms "WAL-MART" in any country."

It is of course extremely difficult, if not impossible, to disprove a negative. That is especially the case in a situation like this. For example, the conduct which may provide a justification for the registration given in the examples set out in paragraph 4(c) of the Policy will very often depend on information which is peculiarly in the hands of a Rrespondent and which, except in cases warranting a finding of reverse domain name hijacking, a Complainant can hardly be expected to prove or disprove conclusively. For this reason, Panels have often recognized that this issue can be closely bound up in the finding of registration and use in bad faith at least to the extent that, where a Ccomplainant establishes a prima facie case, the onus shifts to the Rrespondent to provide material which rebuts the finding.

In this case, as I discuss below, I am satisfied that there is at least a prima facie case of registration and use in bad faith. Moreover, the Respondent has not made any attempt at all to justify his or her claim to the registration. I am mindful that the Complainant has the burden of establishing all elements of the case. However, the Respondent has notice of the claim against him or her, has been given an opportunity to provide information in support of the registration of the domain name and has failed to do so. In these circumstances and bearing in mind how well known the Complainantís trade marktrademark is, it is reasonable in a civil dispute such as this to draw the inference that the Respondent could not advance any information in rebuttal of the Complainantís claim. Accordingly, I find that the Complainant has established this requirement of the Policy.

Registration and use in bad faith

The Complaint asserts a number of matters on this aspect of the case. There is a general assertion of "information and belief" that the Respondent registered the domain name with knowledge of the Complainantís rights. In addition, the Complaint argues that the Respondent had constructive notice of the Complainantís rights by virtue of (a)  the Complainantís trade marktrademark registrations in the USA, Taiwan, and the PRC as well as many other countries and (b) the Complainantís use of the ® symbol.

Before the Complaint was initiated, the Complainant sent a letter of demand through Taiwanese attorneys to the Respondentís physical address given in the Whois data. The letter was returned by the post office with advice that no-one received or claimed it. The Complainant therefore submits that the Respondent has not provided accurate contact information or is deliberately refusing correspondence.

Finally, the Complainant argues that the circumstances indicate that the domain name was acquired primarily for the purpose of diverting Complainantís customers to the Respondentís web- sitewebsite or of disrupting the Complainantís business by preventing it from using the domain name in its own business.

It is well settled that the Complainant must show that the domain name has been both registered and used in bad faith. The Policy sets out in paragraph 4(b) four illustrative circumstances which may satisfy that requirement. The examples, however, are expressed to be "without limitation" and, as Panels have repeatedly found, other circumstances may satisfy the third requirement of paragraph 4(a).

The requirement for registration and use in circumstances where (so far as anyone could establish) the Respondent had made no active commercial use of the domain name was considered in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO  Case No D2000-0003. At paragraphs 7.9 Ė 7.10, the learned Panellist said:

"7.9 Öthe relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. . The significance of the distinction is that the concept of a domain name "being used in bad faith" is not limited to positive action; inaction is within the concept. . That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.

7.10 This understanding of paragraph 4(a)(iii) is supported by the actual provisions of the Uniform Policy. . Paragraph 4(b) of the Uniform Policy identifies, without limitation, circumstances that "shall be evidence of the registration and use of a domain name in bad faith", for the purposes of paragraph 4(a)(iii). . Only one of these circumstances (paragraph 4(b)(iv)), by necessity, involves a positive action post-registration undertaken in relation to the domain name (using the name to attract custom to a web sitewebsite or other on-line location). . The other three circumstances contemplate either a positive action or inaction in relation to the domain name. . That is to say, the circumstances identified in paragraphs 4(b)(i), (ii) and (iii) can be found in a situation involving a passive holding of the domain name registration. . Of course, these three paragraphs require additional facts (an intention to sell, rent or transfer the registration, for paragraph 4(b)(i); a pattern of conduct preventing a trade marktrademark ownerís use of the registration, for paragraph 4(b)(ii); the primary purpose of disrupting the business of a competitor, for paragraph 4(b)(iii)). . Nevertheless, the point is that paragraph 4(b) recognises that inaction (eg. passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith. . Furthermore, it must be recalled that the circumstances identified in paragraph 4(b) are "without limitation" - that is, paragraph 4(b) expressly recognises that other circumstances can be evidence that a domain name was registered and is being used in bad faith."

In paragraph 7.11, the learned Panellist considered that it would not be possible to decide in the abstract whether a domain name was being used in bad faith. He then went on to identify the factors in that case which he considered led to a conclusion of registration and use in bad faith:

"7.12 The Administrative Panel has considered whether, in the circumstances of this particular Complaint, the passive holding of the domain name by the Respondent amounts to the Respondent acting in bad faith. . It concludes that it does. . The particular circumstances of this case which lead to this conclusion are:

(i) the Complainantís trademark has a strong reputation and is widely known, as evidenced by its substantial use in Australia and in other countries,

(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,

(iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,

(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and

(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainantís rights under trademark law."

In contrast, a number of cases have refused to find bad faith registration and use on the grounds of "passive use". For example, recently in Bernardaud Porcelaines de Limoges SA and Bernardaud N.A. Inc. v. Chapman Capital LLC, WIPO Case No. D2001-0247, the learned Panellist distinguished the Nuclear Marshmallows case on the grounds that:

"in Telstra the complainant was one of the largest and most well-known companies in the country where the respondent resided and had numerous trademark registrations both domestically and internationally. . That is not the case of the BERNARDAUD trademark which, although well-known in France, does not appear on the basis of the Complainants' evidence to be well-known and widely used in the United States or internationally except in the area of porcelain. . Indeed the first U.S. registration for the trademark was in 1989. . That is prior to the date of registration of the domain name in question. . However, it hardly supports the argument that BERNARDAUD is a famous trademark that should have been recognized as such by the Respondent when it registered the domain name."

The learned Panellist then went on to find that there was insufficient evidence to support a conclusion of bad faith registration and use once the Respondentís explanation of its activities and the timing of the registrations was taken into account.

In this case, unlike Bernardaud, the Respondent has not provided any explanation or justification of his or her registration of the domain name and the Complainantís trade marktrademark has a very strong reputation and, it appears, is likely to be well known in Taiwan.

I am reluctant to proceed on the basis of "constructive notice" of the Complainantís registered trade marktrademarks in various countries. Here, the allegation is not just of constructive notice of a trade marktrademark registration in another country Ė there are registrations in Taiwan. Not all countries deem the public to have constructive notice of trade marktrademarks entered on the Register, however, and there is no indication in the record that Taiwan law does in fact impose such a deeming. Nonetheless, as recounted in section 4 above, it is clear that the Complainantís trade marktrademark WAL-MART is very well known indeed. The Complainant does not have trading activities in Taiwan itself and does not directly state that the Taiwanese public uses its web- sites. The Complaint does point out that there are close, and increasingly closer, ties between Taiwan, Province of China, and the PRC. In support of this, the Complaint also includes a number of press articles reporting official estimates that over three million Taiwanese visited the PRC in 2000 for holidays, business and family related activites and almost 40% of Taiwanese overseas travelers in 2001 went to the PRC.

These differences to Bernardaud are the first two points relied on in Telstra v. Nuclear Marshmallows. Further, the return of the Complainantís letter of demand referred to above has similarities to the third and fourth points although, in this case, it is not clear if the Respondent has given a false address or simply refused to pick up the letter. The Respondentís name does not naturally suggest any connection or association with "Wal" or "Walmart". There is here no evidence of a pattern of conduct by the Respondent as required to establish the example given in Rule 4(b)(ii) of the Policy. That is, however, an illustration only. The Complainant here operates a number of web sitewebsites using either "wal-mart" or "walmart" in addition to its registration and use of <wal-martchina.com>. There is therefore a clear inference that the Respondent has opportunistically seized on the domain name <walmartchina.com> to prevent the Complainant from registering it. Finally, it is very difficult to imagine how the Respondent might use the domain name in a way which would not attract users to his or her site in the mistaken belief that it was associated with the Complainant. Accordingly, I find that this requirement is met.

 

7. Decision

The Panel decides that:

(i) the Domain Name is identical or confusingly similar to a trade marktrademark 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 Domain Name has been registered and is being used in bad faith by the Respondent.

Accordingly, the Panel decides that the Complainant has proven each of the elements in paragraph 4(a) of the Policy and orders that the Domain Name <walmartchina.com> be transferred to the Complainant., Wal-Mart Stores, Inc.

 


 

Rothnie, Warwick, A.
Sole Panelist

Dated: October 17, 2002