WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wal-Mart Stores, Inc. v. Peter Carrington/Party Night Inc.
Case No. D2004-0029
1. The Parties
The Complainant is Wal-Mart Stores, Inc., Arkansas, United States of America, represented by Venable, LLP, United States of America.
The Respondent is Peter Carrington, Party Night Inc., Amsterdam, Netherlands.
2. The Domain Name and Registrar
The disputed domain name <wallmartcreditcard.com> is registered with Key-Systems GmbH dba domaindiscount24.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 15, 2004. On January 16, 2004, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the domain name at issue. On January 27, 2004, Key-Systems GmbH dba domaindiscount24.com 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 the proceedings commenced on January 28, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 17, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on February 18, 2004.
The Center appointed Guillermo Carey as the sole panelist in this matter on March 4, 2004. 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 owns the service marks WAL-MART and WAL-MART CREDIT CARD in a number of countries worldwide. It is the worldís largest retailer.
The Complainant has made continuous and extensive use of the WAL-MART service mark since 1962. It currently owns registrations of this mark in 46 countries. The Complainant owns a Benelux (Belgium, Netherlands, and Luxembourg) trademark registration. It also operates 95 stores in neighboring Germany.
The Complainant makes extensive use of its service marks in connection with its many retail outlets, in advertising its merchandise and services throughout the world.
The Complainant offers WAL-MART credit cards and has trademark rights in the marks WAL-MART and WAL-MART CREDIT CARD for credit cards and related services, operating a website at "www.walmartcreditcard.com", which provides information and services to WAL-MART customers.
The Complainant has not authorized the use of the disputed Domain Name, <wallmartcreditcard.com>, to the Respondent.
Given the inappropriate use of the Domain Name by Respondent, the Registrar agreed temporarily to shut down the pornographic link of the Domain Name at issue.
5. Partiesí Contentions
The Complainant has submitted that:
1. The disputed Domain Name is identical or confusingly similar to Complainantís WAL-MART and WAL-MART CREDIT CARD service marks and its own website "www.walmartcreditcard.com".
2. The Complainant has rights in these service marks that predate the registration by the Respondent of the disputed Domain Name.
3. The continuous, widespread, and extensive use of the service marks WAL-MART and WAL-MART CREDIT CARD in Complainantís worldwide operations, and the extensive advertising of the WAL-MART mark, including via internet, have made the service marks famous, which in turn means that consumers are highly likely to associate a domain name incorporating the term "Wal-Mart", or a close approximation of it, with the Complainant.
4. The disputed Domain Name is being used in bad faith with intent for commercial gain. It is misleading and diverts Complainantís customers to a website with links to inappropriate sites offering pornography and pop-up advertisements, which in turn tarnish the Complainantís well-established image.
5. The Respondent is using the Complainantís service mark without its authorization.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
The Policy paragraph 4(a) provides that the Complainant must prove each of the following:
1. That the Respondentís domain name is identical or confusingly to a trademark or service mark in which the Complainant has rights; and
2. The Respondent has no rights or legitimate interests in respect of the domain name; and
3. The domain name has been registered and is being used in bad faith.
Paragraph 4(c) of the Policy identifies circumstances which, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all the evidence presented, shall demonstrate the Respondentís rights or legitimate interests for the purpose of paragraph 4(a)(ii).
Paragraph 4(b) of the Policy sets out circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The Policy states that those circumstances are not exhaustive of the circumstances indicating registration and use in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence indicating its ownership of several registered trademarks for the service mark WAL-MART worldwide, including in the Benelux and Germany. The Complainant is also the owner of the website "www.walmartcreditcard.com".
Given that the disputed domain name wholly integrates the Complainantís registered service mark, the similarity, to the point of absolute confusion, between the Respondentís domain name and the Complainantís intellectual property is obvious.
The Panel believes that persons coming across the Respondentís website may very well conclude that it is owned by or associated with the Complainant as the owner of the famous worldwide WAL-MART mark.
Furthermore, the Complainant offers to its customers a WAL-MART credit card, uses the name WAL-MART CREDIT CARD as a service mark and owns a virtually similar website of its own, "www.walmartcreditcard.com".
The Complainantís extensive and continuous use of the mark since 1962, and its various registrations for it worldwide, clearly establish the Complainantís rights to the service mark.
Consequently, the Panel has no hesitation in finding that the domain name at issue is identical and confusingly similar with the Complainantís registered trademarks and domain names. Consequently, the Complainant succeeds in meeting the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
In the absence of a response, there is no evidence indicating the Respondentís rights or legitimate interests over any mark consisting of the term "Wal-Mart" in any country. The Complainant, therefore, also satisfies the second requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name points to the Respondentís website, which links to a number of inappropriate sites offering pornography and other pop-up advertisements.
The fame of the WAL-MART mark and the existing worldwide registrations for it, including in the Benelux countries and Germany, strongly indicate that the Respondent was or should have been aware of the mark prior to registering the disputed domain name.
The Respondentís use of a random hotel address in the Netherlands supports the conclusion that the registration was in fact done in bad faith.
The Respondentís registration and use of a domain name incorporating the Complainantís famous mark to link to other unrelated sites also indicate the deliberate attempt to capture persons to believe those sites are in some way associated with the Complainant. The inappropriate nature of Respondentís website links indicates the likely tarnish to Complainantís reputation and marks.
Unfortunately, the Respondent failed to provide a response stating his legitimate purposes and thus interests for registering and using the domain name in dispute. Thus, the Panel agrees with the Complainant that the Respondent registered and uses the domain name in bad faith, i.e., to capture clients to its web page using the reputation and good will achieved by WAL-MART worldwide.
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 <wallmartcreditcard.com> be transferred to the Complainant.
Dated: March 19, 2004