WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wal-Mart Stores, Inc. v. Lynda's/Lynda Hickman
Case No. D2003-0719
1. The Parties
The Complainant is Wal-Mart Stores, Inc., Bentonville, AR, United States of America, represented by Venable, Baetjer, Howard & Civiletti, LLP, Washington, D.C., United States of America.
The Respondent is Lynda's/Lynda Hickman, Fort Smith, AR, United States of America.
2. The Domain Names and Registrar
The disputed domain names:
are registered with Network Solutions, Inc. of Dulles, Virginia, United States of America.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 12, 2003. On September 15, 2003, the Center transmitted by email to Network Solutions, Inc. a request for registrar verification in connection with the disputed domain names. On September 17, 2003, Network Solutions, Inc. transmitted by email 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 this proceeding began on September 18, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was October 8, 2003. The Response was filed with the Center on October 9, 2003. The Panel has decided to consider the Response despite its lateness.
The Center appointed Dennis A. Foster as the sole panelist in this matter on November 21, 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
The Complainant is probably the worldís largest retail store company.
The Respondent is an individual who registered all four disputed domain names on either March 1 or 2, 1999. There has been some correspondence between the parties in which the Respondent has alluded to the resources she has devoted to the disputed domain names.
5. Partiesí Contentions
- Complainant objects to Respondentís domain name registrations because they are likely to be confused with Complainantís distinctive service marks WAL-MART/WAL-MART SUPERCENTER, SAMíS CLUB/SAMíS WHOLESALE CLUB and WAL-MART NEIGHBORHOOD MARKET/NEIGHBORHOOD MARKET.
- Complainantís rights in its service marks are expansive and predate Respondentís registration of the domain names <walmartsupercenter.com>, <samswholesaleclub.com>, <samswholesale.com> and <neighborhoodmarket.com>.
- Complainant owns its famous service marks for retail services in a large number of countries including the United States. Today, Complainant owns and operates four major retail chains: Wal-Mart (Discount Store), (Wal-Mart) Supercenter, Samís Club, and (Wal-Mart) Neighborhood Market (grocery store).
- There is a Wal-Mart, three Wal-Mart Supercenter Stores, a Samís Club and a Neighborhood Market within seven miles of Respondent in Fort Smith, Arkansas (Complaint Attachment H).
- The warehouse stores that now operate under the trade name SAMíS CLUB (1990 to present), were once known as SAMíS WHOLESALE CLUB 1983 to 1990). Respondent has admitted that customers still know SAMíS CLUB as SAMíS WHOLESALE CLUB (Complaint Annex J).
Additionally, SAMíS WHOLESALE is just a foreshortened version of SAMíS WHOLESALE CLUB registered by the same person who registered the full version of the name. (Booz Allen Hamilton Inc. v. Human Works Inc., WIPO Case No. D2002-0656 (September 23, 2002)óthe panel ordered transfer of <booz.com> to Booz Allen Hamilton, Inc.)
- Wal-Mart stores are referred to as Wal-Mart Supercenters and Wal-Martís grocery stores are referred to as Neighborhood Markets (Complaint Annex F).
- The domain names are similar or identical to Wal-Martís service marks in their entirety as to appearance, sound, connotation and commercial impression.
- NEIGHBORHOOD MARKET connotes and is merely a shortened version of the service mark WAL-Mart NEIGHBORHOOD MARKET. Respondent has attempted to capitalize on consumersí association of SAMíS WHOLESALE CLUB and SAMíS WHOLESALE with SAMíS CLUB and NEIGHBORHOOD MARKET with WAL-MART NEIGHBORHOOD MARKET by registering these names at the .com top level.
- The SERVICE MARKS are famous, which enhances the likelihood of confusion. The WAL-MART mark has been in continuous use since at least 1962. The SAMíS WHOLESALE CLUB/SAMíS CLUB mark has been in continuous use since at least 1983. The WAL-MART NEIGHBORHOOD MARKET mark has been in continuous use since at least 1983. (Complaint Annexes B-E)
- 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.
- The Complainantís service marks are likewise famous because Complainant makes extensive use of the marks. The fame of Complainantís service marks is also shown through Complainantís advertising.
- In light of the significant fame associated with Complainantís service marks, consumers are likely to believe that any domain name incorporating them is associated with Complainant.
- Respondent has no rights or legitimate interests in respect of the disputed domain names.
- Respondent is clearly accumulating, collecting and hoarding numerous domain names which clearly connote or denote Wal-Martís service marks. She lacks any plausible legitimate, actual or contemplated active use of the disputed domain names.
- On August 4, 2003, Respondent emailed Complainantís attorneys. Respondent declared her willingness to transfer the disputed domain names if it would benefit her, revealed that she registered the disputed domain names to "seize an opportunity", and invited the president of Wal-Mart to negotiate with her (Complaint Annex K).
- Complainant believes this is sufficient evidence that the disputed domain names were registered and used in bad faith. Respondent clearly had no intention of using the domain names, and Complainant believes she held on to them solely in hopes of one day entering into "negotiations" with the worldís largest retailer. "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 (July 28, 2000) citing World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001 (January 14, 2000).
- Additionally, while Respondent is not currently using the disputed domain names, nonuse has been considered by other panels as evidence of bad faith. In The World Bank v. Yoo Jin Sohn, the panel "was convinced that the fact that the Respondent held the disputed domain name comprising the Complainantís famous trademark for over three (3) years without making any use of the name that he could demonstrate to the Panel [was] further evidence of the Respondentís bad faith." International Bank for Reconstruction and Development d/b/a The World Bank v. Yoo Jin Sohn, WIPO Case No. D2002-0222 (May 7, 2002) citing Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000); and Nintendo of America, Inc. v. Garrett N. Holland et al., WIPO Case No. D2000-1483 (January 11, 2001).
- Respondent registered the disputed domain names with knowledge that Complainant held rights in and to the service marks. Respondent had constructive notice of Complainantís trademark rights by virtue of: (a) Complainantís trademark registration in the United States; (b) Complainantís operation of six stores within seven miles of Respondentís house; and (c) Complainantís use of a trademark registration symbol when referencing the mark in print advertising and on its web site located at <samsclub.com>, <walmartsotres.com>, and <samsclubcredit.com>, and Complainantís use of the mark in the United States.
- Further, Respondentís emails to Complainant expressly acknowledge her awareness of the rights and interest that Complainant holds in its trademarks (Complaint Annexes J and K).
- Circumstances clearly indicate, therefore, that the disputed domain names were acquired in bad faith presumably for the purpose of commercial gain or to disrupt Complainantís business.
- The disputed domain names should be transferred to the Complainant.
- With respect to <walmartsupercenter.com>, the undersigned would agree to voluntarily transfer registration of the domain name to the Complainant upon payment of the Respondentís costs associated with initially registering the disputed domain name and annual renewals thereof.
- With respect to the remaining disputed domain names, namely <samswholesaleclub.com>, <samswholesale.com>, and <neighborhoodmarket.com>, the Complainant is not entitled to any relief with respect to the domain names or to have the registration of the domain names transferred to the Complainant.
- With respect to <samswholesaleclub.com> and <samswholesale.com>, Complainant does not use the name Samís Wholesale Club. Complainant has abandoned the use of the name Samís Wholesale Club and has no right to the domain name <samswholesaleclub.com> or <samswholesale.com>.
- Neither <samswholesaleclub.com> nor <samswholesale.com> are being used in bad faith. As noted in the documentation filed by the Complainant, the Respondent has had the opportunity to sell the registration from <samswholesaleclub.com> to the Complainant but declined to do so. Therefore, the circumstances corroborate that the Respondent did not acquire the disputed domain names for the purpose of selling, renting or transferring them.
- Additionally, the Respondent did not register the disputed domain names in order to prevent the Complainant from reflecting its service mark with a corresponding domain name, especially in light of the fact that the service mark SAMíS WHOLESALE CLUB has not been used in many years. The additional criteria specified by the Policy as evidence of bad faith in paragraph 4(b) of the Policy are not present.
- With respect to <neighborhoodmarket.com>, the Respondent notes that the name is not confusingly similar to a trade mark or service mark in which the Complainant has rights. In this regard, the Complainant has rights in a service mark known as WAL-MART NEIGHBORHOOD MARKET, not Neighborhood Market.
- The Respondent did not register and has not used the domain name <neighborhoodmarket.com> in bad faith. None of the criteria specified in the Policy at paragraph 4(b) is present.
- The Respondent does have a legitimate interest in the disputed domain name <neighborhoodmarket.com> in light of the fact that she is engaged in retail sales and does desire to use such domain name in pursuing her own interests.
- The Complaint filed herein is nothing more than an attempt by the Complainant, Wal-Mart Stores, Inc., one of the largest in the world, to coerce the Respondent to give up valuable domain names. The Respondent has agreed to transfer the domain name <walmartsupercenter.com>.
- The disputed domain names should not be transferred to the Complainant.
6. Discussion and Findings
In order for the Complainant to prevail and have the disputed domain names transferred to it, the Complainant must prove the following (the Policy, paragraphs 4(a)(i-iii)):
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith
A. Identical or Confusingly Similar
The Complainant has exhibited copies of the following United States service mark registrations: WAL-MART service mark no. 1,783,039 registered on July 20, 1993 (Complaint Annex B); SAMíS WHOLESALE CLUB service mark no. 1,383,737 dated February 18, 1986 (Complaint Annex C); SAMíS CLUB service mark registration no. 2,036,770 registered on February 11, 1997 (Complaint Annex D). The Complainant has not yet obtained a registration for its service mark WAL-MART NEIGHBORHOOD MARKET but, in the Panelís view, the Complainantís extensive use of the service mark has given it rights in this name.
The Complainant also contends it uses the phrase "neighborhood market" standing alone and has acquired rights in it. The Respondent counters that the Complainant only has rights in the service mark WAL-MART NEIGHBORHOOD MARKET. The Respondent also contends that the Complainant has dropped the WHOLESALE from SAMíS WHOLESALE CLUB and now only uses SAMíS CLUB.
The Panel finds the disputed domain name <walmartsupercenter.com> is based on the name of the Complainantís large stores and is confusingly similar to the Complainantís WAL-MART service mark. The term "supercenter" is merely a logical, descriptive add-on to the Complainantís service mark. (see Wal-Mart Stores, Inc. v. Kenneth E. Crews, WIPO Case No. D2000-0580 (August 30, 2000), where the panel found that adding "super" to the service mark WAL-MART did not create "a new or different mark" because super was used as "a common descriptive term".)
Similarly, the Panel finds the disputed domain names <samswholesaleclub.com> and <samswholesale.com> are confusingly similar to the Complainantís SAMíS CLUB service mark. This is because, in the context of the Complainantís business and former use of SAMíS WHOLESALE CLUB as a store name service mark, the word "wholesale" added or removed is merely descriptive.
However, as to the disputed domain name <neighborhoodmarket.com>, the Panel agrees with the Respondent. It has not been established that the Complainantís WAL-MART NEIGHBORHOOD MARKET service mark gives the Complainant trademark rights in the term "neighborhood market". A neighborhood market is a generic expression for a store or market in a neighborhood.
The Panel thus finds the Complainant has carried its burden of proof under 4(a)(i) of the Policy to prove that the disputed domain names <walmartsupercenter.com>, <samswholesaleclub.com>, and <samswholesale.com> are confusingly similar to service marks in which the Complainant has rights. But the Panel finds the Complainant has failed to show it has trade or service mark rights in the disputed domain name <neighborhoodmarket.com>.
The Policy requires that the Complainant prevail under paragraphs 4(a)(i-iii) inclusively for each disputed domain name. Therefore, the Panel need not include the disputed domain name <neighborhoodmarket.com> in the discussions of Rights and Legitimate Interests and Bad Faith under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy.
B. Rights or Legitimate Interests
The Complainant contends the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent admits this for the disputed domain name <walmartsupercenter.com>, and in fact the Respondent offers to turn this domain name over to the Complainant. However, even for the remaining two disputed domain names that the Respondent has not offered to turn over to the Complainant, i.e., <samswholesaleclub.com> and <samswholesale.com>, the Respondent does not attempt to show any rights or legitimate interests. The Panel thus finds the Complainant has carried its burden of proof under 4(a)(ii).
It is now well-settled under the Policy that, where the Complainant contends the Respondent has no rights or legitimate interests in a disputed domain name, the burden of proof shifts to the Respondent to come forward with proof to the contrary. (for a discussion of the Respondentís task once confronted with the Complainantís proof on this issue, see e.g. Pivotal Corporation v. Discovery Street Trading Co. Ltd., WIPO Case No. D2000-0648 (August 14, 2000); and Unibanco-Uniao de Bancos Brasileiros S.A. v. Vendo Domain Sale, WIPO Case No. D2000-0671 (August 31, 2000).
C. Registered and Used in Bad Faith
The Complainant contends the Respondent registered the disputed domain names in violation of the Policy at paragraph 4(b)(i), i.e., the Respondent registered the disputed domain names with the intention of selling them back to the Complainant for more than the Respondentís out-of-pocket expenses. The Complainant bases this on the Respondentís letters to the Complainant in which the Respondent claimed to have invested a lot of money in the disputed domain names and that she would not give them up easily. In the Panelís view, this is the Respondentís code talk for letting the Complainant know she wanted significant money for the disputed domain names (Complaint Annexes I and J).
The Panel also agrees with the Complainant that the Respondentís passive holding of some of the most well-known service marks in world retailing for over four (4) years is tantamount to bad faith based on the cases the Complainant cites (see primarily Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000). Although the Respondent claims to have devoted resources to the disputed domain names, there is no evidence the Respondent has done anything other than hold the disputed domain names. Although passive holding is not one of the enumerated, non-exhaustive bad faith grounds in the Policy at paragraphs 4(b)(i-iv), paragraph 15(a) of the Rules gives the Panel the latitude to find additional grounds for bad faith where appropriate.
The Panel finds the Complainant has proved the Respondent registered and is using the disputed domain names in bad faith per paragraph 4(a)(iii) of the Policy.
For all the above reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <walmartsupercenter.com>, <samswholesaleclub.com>, and <samswholesale.com> be transferred to the Complainant.
However, since the Panel finds the Complainant has not demonstrated trademark rights in the disputed domain name, <neighborhoodmarket.com>, the Complaint is denied for this domain name, and it is to remain registered to the Respondent.
Dennis A. Foster
Dated: December 7, 2003