WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wal-Mart Stores, Inc. v. Steve Powers
Case No. D2003-10`511
1. The Parties
The Complainant in this proceeding is Wal-Mart Stores, Inc. of Bentonville, Arkansas, United States of America ("Complainant").
The Respondent is Steve Powers of Wichita, Kansas, United States of America ("Respondent").
2. The Domain Name and Registrar
The domain name in issue is <1-800-walmart.com> ("Domain Name") and is registered with Intercosmos Media Group d/b/a directNIC.com. ("Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 31, 2003, by e-mail with hard copies received by the Center on January 6, 2004. On January 6, 2004, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On January 7, 2004, the Registrar transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant for the Domain Name. On January 13, 2004, the Center sent a further e-mail to the Registrar noting that the Domain Name was set to expire prior to the conclusion of this proceeding (i.e., January 28, 2004) and requested confirmation that the Domain Name would be placed on registrar lock until the proceeding was concluded. On January 13, 2004, the Registrar responded to the Centerís email indicating that the Domain Name would only remain on registrar lock for 40 days after the expiration of the Domain Name, if no one renewed the Domain Name registration. The Registrar further indicated that they themselves were unable to renew the registration and that the current owner would have to renew it. If after 40 days, no one renewed the Domain Name, it would then be released into the redemption period for expired domain names. On January 14, 2004, the Center informed the parties that the Registrar had advised the Center that the Domain Name would expire on January 28, 2004, that the parties should contact the Registrar if they had questions concerning the expiration or renewal of the Domain Name registration and that the Center would continue the proceeding unless the Center received instructions otherwise from the parties. On January 14, 2004, 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), and having received no notice from the parties that the proceeding should not continue, the Center formally notified the Respondent of the Complaint and the commencement of the proceeding on January 14, 2004. In accordance with the Rules, paragraph 5(a), the due date for submitting a Response was February 3, 2004. The Respondent failed to submit a response with respect to this proceeding by the February 3 deadline. On February 11, 2004, the Center sent a "Notification of Respondent Default" to the parties with respect to this default.
On February 27, 2004, the Center invited the undersigned Panelist to serve as a single member panel in this proceeding. The Panel submitted a "Statement of Acceptance and Declaration of Impartiality and Independence" to the Center, as required, to ensure compliance with the Rules, paragraph 7. The Center sent a "Notification of Appointment of Administrative Panel and Projected Decision Date" by e-mail to the parties on March 8, 2004.
Having reviewed the entire record submitted for this proceeding, the Panel concurs with the Centerís finding that the Complaint is in compliance with the Policy, the Rules and the Supplemental Rules and finds that the Panel was properly constituted and appointed. The Panel also finds that the Center has fully discharged its responsibility under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent" of this proceeding and that the Respondent is in default for failing to file a response to the Complaint. The Panel shall therefore draw inferences from the Respondentís default as the Panel considers appropriate based upon paragraph 14(b) of the Rules and shall issue a decision based on the Complaint, the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant bases the Complaint on United States Registration No. 1,783,039 (first use and first use in commerce July 1, 1962; issued July 20, 1993) for the mark WAL-MART used in connection with retail department store services and the trade name Wal-Mart. The Complainant is also the owner of the working telephone number "1-800-WAL-MART" that connects to the "Wal-Mart Customer/Samís Club Member/Associate Hotline." The Complainant provided a copy of the United States registration information for the mark WAL-MART and a listing showing its customer hotline telephone number as Annexes B and Annex D, respectively, to the Complaint.
The Domain Name in issue was registered on January 28, 2002, to the Respondent and was set to expire on January 28, 2004. A copy of the whois information for the Domain Name was attached as Annex A to the Complaint. A review of the current whois record for the Domain Name shows that the Domain Name was renewed and is now set to expire on January 28, 2005. There is also a website currently accessible at the Domain Name that frames the Respondentís website at "www.neosystemz.com." Copies of the web pages from the site accessible at the Domain Name were attached as Annex G to the Complaint.
5. Partiesí Contentions
The Complainant asserts that the Domain Name in issue is confusingly similar to its mark WAL-MART, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith by the Respondent, primarily for the purpose of diverting the Complainantís customers to the Respondentís site or disrupting the Complainantís business by preventing the Complainant from using the Domain Name for its own business.
No response was received from the Respondent with respect to this proceeding.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party (complainant) asserts to an ICANN-approved dispute resolution service provider that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the domain name holder 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.
The Panel can rule in a complainantís favor only after the complainant has proven that the above-listed elements are present.
It is noted that the Domain Name was set to expire during this proceeding, but it appears that the Domain Name has been renewed and is now set to expire on January 28, 2005. Although no explanation was provided to the Center by the parties concerning this renewal, the Panel will proceed with rendering a decision based on this renewal and the fact that the parties have not terminated this proceeding.
A. Identical or Confusingly Similar
Under Paragraph 4(a)(i) of the Policy, the Complainant is required to establish that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel finds that the Complainant has provided sufficient evidence to establish that it is the owner of and has rights in the mark WAL-MART.
A review of the second-level domain of Domain Name shows that the domain incorporates the mark WAL-MART and only differs from the mark by the addition of the prefix "1-800-" preceding the mark and the omission of the hyphen from the mark. Such addition and omission to create the second-level domain for the Domain Name in issue do not result in differentiating or distinguishing the Domain Name from the mark WAL-MART. In addition, the domain is reflective of the Complainantís own toll free number "1-800-WAL-MART" thus further creating an overall impression that the Domain Name is somehow associated with the Complainant. Based upon these findings and that the Complainant has provided sufficient evidence to establish its ownership and rights in the mark WAL-MART, the Panel concludes that the Domain Name is confusingly similar to the Complainantís mark WAL-MART and that Paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panel to be proven based on her evaluation of all of the evidence presented, can demonstrate the holderís rights to or legitimate interests in the Domain Name. These circumstances include:
(i) before any notice to the holder of the dispute, the holderís 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) the holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or
(iii) the domain name holder is 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.
No evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent had been using or was making demonstrable preparations to use the Domain Name in connection with any type of bona fide offering of goods or services. The uncontested evidence shows that the mark WAL-MART was well-known at the time of the Respondentís registration of the Domain Name and that the Respondent registered the Domain Name and has been and is currently using the Domain Name to misleadingly direct Internet users to his own website entitled "Neo Systemz PC Gaming Center" where computer systems, computer gaming and downloads are being offered for apparent commercial gain. Based upon the evidence submitted, the Respondentís use cannot constitute a bona fide offering of goods or services. Nor can such apparent commercial use constitute a legitimate noncommercial or fair use of the Domain Name. Moreover, no evidence has been presented that the Respondent is commonly known by the Domain Name. The Panel, therefore, concludes that the Respondent has no rights or legitimate interests in the Domain Name and that Paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the holder includes, but is not limited to:
(i) circumstances indicating that the holder has registered or has 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 the holderís documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holderís website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the holderís website or location.
Based upon the uncontested evidence submitted by the Complainant, the Panel finds that the Respondent clearly had knowledge of the Complainantís mark WAL-MART when registering the Domain Name. This finding is supported by the evidence showing that the Domain Name was registered well after the first use in commerce by the Complainant of its WAL-MART mark. This finding is further supported by the Complainantís uncontested evidence showing that the mark WAL-MART was clearly well-known at the time the Respondent registered the Domain Name. Indeed, it is hard to imagine that the Respondent was not well aware of the Complainantís mark, as well as its trade name and toll free number, with the submitted evidence showing 10 WAL-MART stores within a 28 mile radius of the Respondentís postal address as listed in the Domain Name registration. The Panel, therefore, finds that the Respondent registered the Domain Name in bad faith.
The Complainant has further asserted that the Respondent acquired the Domain Name in bad faith primarily for the purpose of diverting the Complainantís customers to the Respondentís site or disrupting the Complainantís business by preventing the Complainant from using the Domain Name for its own business. To support these assertions, the Complainant has provided evidence of web pages from the Respondentís framed website accessible at the Domain Name offering computer systems, computer gaming and downloads, as well as web pages from the Complainantís own site offering computer systems and equipment for sale. Based upon the findings and evidence submitted, the Panel concludes that the Respondent registered and is using the Domain Name to intentionally attempt to attract for commercial gain Internet users to his website by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation or endorsement of the Respondentís site or of a product or service on the Respondentís site. The Panel also finds that the Respondent registered and is using the Domain Name to create initial interest confusion among Internet users who visit the Respondentís site as to the source, sponsorship, affiliation or endorsement of the site and the products and services offered on the site for his own apparent commercial gain.
The Panel therefore finds that Paragraph 4(a)(iii) of the Policy has been satisfied in that the Respondent has registered and is using the Domain Name in bad faith.
The Panel concludes that: (i) the Domain Name is confusingly similar to the Complainantís mark WAL-MART; (ii) the Respondent has no rights or legitimate interests in the Domain Name; and (iii) the Respondent registered and is using the Domain Name in bad faith. The Panel, therefore, requires that the registration of the domain name <1-800-walmart.com> be transferred to the Complainant.
Dated: March 22, 2004