WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wal-Mart Stores, Inc. v. Michael Horton
Case No. D2003-0631
1. The Parties
The Complainant is Wal-Mart Stores, Inc. of Bentonville, Arkansas, United States of America, represented by Venable, Baetjer, Howard & Civiletti, LLP, United States of America.
The Respondent is Michael Horton, Boogy Pop Communications of Altus, Oklahoma, United States of America.
2. The Domain Name and Registrar
The disputed domain name <shopwal-mart.com> is registered with 1stDomain.Net a division of G+D International LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 13, 2003. On August 14, 2003, the Center transmitted by e-mail to 1stDomain.Net a division of G+D International LLC a request for registrar verification in connection with the domain name at issue. On August 25, 2003, 1stDomain.Net a division of G+D International LLC transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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 August 26, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was September 15, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on September 17, 2003.
The Center appointed Andrew Mansfield as the sole panelist in this matter on October 13, 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.
4. Factual Background
This complaint is based on Complainantís service mark, WAL-MART, and trade name WAL-MART. Wal-Martís WAL-MART service mark was registered on July 20, 1993 in the United States, Registration Number 1,783,039.
Respondent registered the domain name on June 23, 2003. On June 26, 2003, Respondent sent an e-mail to Complainant stating that the domain name would be auctioned to the highest bidder.
5. Partiesí Contentions
Complainant is the worldís largest retailer. Complainant owns the famous service mark WAL-MART for retail services in a large number of countries including the 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).
Complainant asserts that the domain name should be transferred to Complainant because the domain name is confusingly similar to its WAL-MART mark. Complainant also asserts that Respondent has no rights or legitimate interests in the domain name, and the domain name was registered and is being used in bad faith. To support its claim of bad faith registration and use, Complainant points to the rapidity with which Respondent registered the domain name and then affirmatively notified Complainant that the domain name was for sale by auction.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
Complainant must establish all of the elements required for obtaining the requested domain name transfer under Paragraph 4(a) of the Policy. Those elements are:
(a) The Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(b) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(c) The Domain Name has been registered and is being used in bad faith.
Each of these elements will be examined below.
A. Identical or Confusingly Similar
The domain name is not identical to the mark WAL-MART. Complainant need not, however, demonstrate that the domain name is identical to one of its trademarks. The domain name need only be confusingly similar to a mark held by Complainant. Two lines of authority provide support for the finding by this Panel that the domain name is confusingly similar to WAL-MART.
First, it is well-established by previous UDRP Panel decisions that a domain name incorporating a distinctive trademark in its entirety creates sufficient similarity between the mark and the domain name as to render it confusingly similar (See, e.g., Minnesota Mining & Manufacturing v. JonLR, WIPO Case No. D2001-0428, <3mcare.com> and Microsoft Corporation v. S.L., Mediaweb, WIPO Case No. D2003-0538, <msnporno.com>). Complainant also properly points out that the word "shop" is closely associated with what occurs at Complainantís stores, making the confusion more acute.
Second, prior Panels have addressed the issue of the combination of a generic term with a distinctive trademark, as occurred here. The determinative factor in such cases is an analysis of whether an average Internet user might expect the holder of the distinctive mark to offer the goods suggested by the generic term. See, e.g., Microsoft Corporation v Momm Amed Ia, WIPO Case No. D2001-1454, <msnmember.com>, or Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409. Other Panels have even addressed the addition of a generic word to the WAL-MART mark. See, e.g., Wal-Mart Stores, Inc. v. Brad Tauer, WIPO Case No. D2000-1076; Wal-Mart Stores, Inc. v. Kenneth E. Crews, WIPO Case No. D2000-0580.
The domain name is held by the Panel to be confusingly similar to the trademarks of the Complainant. The Complainant has thus met the burden of proof as established by subparagraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant alleges that Respondent has no rights or legitimate interests in the domain name. Respondent provided no response. The Panel finds that Respondent has no such rights or legitimate interests.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the ICANN Policy provides the following non-exclusive examples of registration and use in bad faith:
"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(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 Complainantís 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."
The Panel finds that the Respondentís conduct indicates that Respondent acquired the domain name primarily for the purpose of selling it to Complainant for more than its out-of-pocket costs. Respondent registered the domain name and then, three days later, offered to sell it to the highest bidder. In addition, by the transmission of an e-mail to Complainant, Respondent ensured that Complainant knew the domain name was to be placed for sale by auction. Other Panels have found such conduct to indicate bad faith registration and use.
"Registering a domain name with the intent to sell it to the rightful trademark owner has previously been recognized by a WIPO Administrative Panel as evidence of bad faith registration and use under the Policy." Burlington Coat Factory Warehouse Corporation v. Naiyer Imam, WIPO Case No. D2000-0485 (citing World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D99-0001).
In addition, Respondent apparently provided false contact information to the Registrar in the registration of the domain name. Such conduct is further evidence of Respondentís bad faith. Numerous Panels have found false or misleading registration information to be such an indicator. See, e.g., Action Instruments, Inc v. Technology Associates, WIPO Case No. D2003-0024; Royal Bank of Scotland Group v. Stealth Commerce, WIPO Case No. D2002-0155; Home Director, Inc. v. HomeDirector, WIPO Case No. D2000-0111; and Chanel v. 1, WIPO Case No. D2003-0218.
Complainant has met its burden of proving that Respondent registered and used the domain name in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Dated: October 14, 2003