WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wal-Mart Stores, Inc. v. mike flynn
Case No. D2002-1020
1. The Parties
The complainant is Wal-Mart Stores, Inc. ("Complainant"), whose address is C/O Blake Clardy, Senior Divisional Counsel, 702 Southwest Eighth Street, Bentonville, Arkansas 72716, United States of America, represented by Venable, Baetjer, Howard & Civiletti, LLP of United States of America.
The respondent is mike flynn ("Respondent"), whose address is 235 W. 102 St, Apt. 14ff, New York City, NY 10025, United States of America. The Panel notes that the respondent in the original complaint filed by Complainant (as described below) was Domain Future, Arlington Avenue, Bronx, NY 10471, United States of America.
2. The Domain Name and Registrar
The domain name upon which this Complaint is based is <walmartpharmacy.com> (the "Domain Name"). The Registrar of the Domain Name is eNom, Inc., whose address is 16771 NE 80th Street, Suite #100, Redmond, Washington 98052, United States of America ("eNom or "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by e-mail on November 1, 2002, and in hardcopy on November 5, 2002. On November 4, 2002, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name. On November 7, 2002, eNom transmitted by email to the Center its verification response confirming that the Domain Name was in fact registered with eNom; however, eNom advised the Center that the registrant was someone other than the respondent as set forth in the original complaint. eNom provided the contact details for the administrative, billing, and technical contact of the registrant. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 19, 2002. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the 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 Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 25, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was December 15, 2002. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 16, 2002.
The Center appointed James H. Grossman as the sole panelist in this matter on January 14, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Except for the Complaint and amendment thereto referred to above, there have been no additional submissions by either party.
4. Factual Background
The following is asserted as fact by the Complainant and remains uncontested.
Complainant is the world's largest retailer. It operates 1,647 Wal-Mart stores and 1066 Wal-Mart Supercenters throughout the United States of America. Worldwide annual sales in fiscal 2002, were over $217 billion. Wal-mart provides pharmacy services within Wal-Mart Stores. Complainant owns registrations for the service mark "WAL-MART" (the "Mark") in 46 countries. For example, in the United States of America, 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. This registration is based on first use of the mark as early as July 1, 1962.
Accordingly, it is the contention of Complainant that the Mark is a famous and highly distinctive trademark.
On October 17, 2002, Counsel for Complainant sent an e-mail to the party which appeared at that time to be the registrant citing its rights to the Mark and demanding a transfer of the Domain Name. Counsel for Complainant received no response to that demand. Complainant contends that soon thereafter in early November the registrant and registrar were changed in an effort to avoid responsibility and the Respondent is still using bogus telephone contact information.
Accordingly, on November 19, 2002, Complainant amended its Complaint and qualified for this arbitration.
5. Parties' Contentions
Complainant argues that the Domain Name should be transferred to Complainant because all of the three elements required by Paragraph 4 (a) of the Policy are present, namely, (i) Respondent’s Domain Name is "identical or confusingly similar to a trademark…in which Complainant has rights"; (ii) Respondent has "no rights or legitimate interests in respect of the domain name"; and (iii) Respondent’s Domain Name has "been registered and is being used in bad faith."
Complainant states that the Domain Name includes the world famous Mark together with a generic term "pharmacy" which is being used to confuse consumers in that the site when visited on certain dates led the user to a site where sales of pharmacy products were offered. According to Complainant, the Internet is a significant vehicle for Complainant's identity and brand. Since Complainant provides pharmacy services within its stores, the confusion is only exacerbated. To the best of Complainant's knowledge, Respondent has no rights to any trademark consisting of the terms "Wal-Mart." According to Complainant, Respondent is using the Domain Name with the intent, for commercial gain, to misleadingly divert Complainant's consumers to its website and/or to disrupt Complainant's business. Complainant proffers a number of facts relating to the bad faith use of the Domain Name including i) the fact that the Domain Name resolved to other sites on which pharmacy products were offered, ii) the misleading contact information and iii) the transfer of the Domain Name to another registrar and another registrant subsequent to Complainant's demand letter of October 17, 2003.
Respondent failed to file any response to Complainant’s allegations.
6. Discussion and Findings
A. Identical or Confusingly Similar
With regard to the issue of whether the Domain Name is nearly identical or confusingly similar to Complainant’s trademarks, the Panel takes notice of the fact that the Domain Name incorporates in its entirety a distinctive trademark together with a generic word and as such creates sufficient similarity between the trademark and the domain name to render it confusingly similar. Wal-Mart Stores, Inc. v. Brad Tauer, (WIPO Case No. D2000-1076). A reasonable consumer is expecting the site to contain Wal-Mart pharmacy products. Although when one reaches the site there is no obvious attempt to pass off the products as those of Wal-Mart, a reasonable consumer is still confused and can quite reasonably assume the pharmacy products are those of Wal-Mart or some affiliate. An independent visit to the site by the Panel confirms that this is still the case. The Panel is of the view that Respondent was clearly relying on consumer confusion to increase the traffic on Respondent’s site. The Panel finds that the Complainant has proven Paragraph 4 a. (i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4 c. of the Policy explains how a Respondent can demonstrate its rights to and legitimate interests in the Domain Name. Respondent in this case has failed to make any response and thus the Panel has no evidence of any rightful or legitimate interests of Respondent in the Domain Name. Complainant has set forth persuasive arguments to the effect that Respondent certainly had constructive notice--if not actual notice--of Complainant's Mark and that Respondent was relying on confusing the consumer that he or she was dealing with the well known Wal-Mart stores. The Panel finds that the Complainant has proven Paragraph 4 a. (ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel agrees with Complainant's contention that the Respondent has registered and/or is using the Domain Name in bad faith based on Paragraph 4 b.(iv) in that Respondent has done everything possible to create confusion with regard to the Mark as to its source, sponsorship, or affiliation. The issue of bad faith is further clearly demonstrated to the Panel by the movement of the Domain Name's Registrar and change in name of the Registrant in an obvious attempt to avoid responsibility and continue its use of the Domain Name.
The Panel has found that all of the requirements of Paragraph 4 of the Policy have been proven by the Complainant. The Panel has also taken notice that Respondent failed to respond to the Complaint and is thus in default. Accordingly, in accordance with the remedy provided in Paragraph 4 i. of the Policy, the Panel requires that the domain name <walmartpharmacy.com> be transferred by Respondent to the Complainant.
James H. Grossman
Date: January 28, 2003