WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wal-Mart Stores, Inc. v. Henry Chan
Case No. D2004-0056
1. The Parties
The Complainant is Wal-Mart Stores, Inc. (WAL-MART) a company incorporated under the laws of the United States of America with its headquarters in Bentonville, Arkansas. Complainant is represented in this administrative proceeding by Janet F. Satterthwaite of Venable LLP, Washington DC, United States of America.
Respondent is Henry Chan of Nassau, Bahamas.
2. The Domain Names and Registrar
The twenty-three disputed domain names (hereinafter referred to collectively as "The twenty-three Domain Names") are:
The Registrar with which "The twenty-three Domain Names" are registered is iHoldings.com, Inc. d/b/a DotRegistar.com, domiciled in Miami, Florida, USA.
3. Procedural History
On January 21, 2004, the World Intellectual Property Organization's Arbitration and Mediation Center ("the Center"), received in hard copies and then on January 28, 2004, via e-mail, a Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy implemented by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999 ("the Policy"), under the Rules for Uniform Domain Name Dispute Resolution Policy implemented by ICANN on the same date ("the Rules"), and in accordance with the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 ("WIPO Supplemental Rules"), whereby Complainant sought the transfer of the following ten domain names ("ten domain names"): <walmartcheck.com>, <chasewalmart.com>, <jobsatwalmart.com>,<walmartflw.com>, <walmartbooks.com>, <walmartfoundation.com>,<walmartportrait.com>, <walmartportraitstudio.com>, <walmartportraitstudios.com> and <walmarttoys.com>.
On January 23, 2004, the Center acknowledged receipt of the Complaint and at the same time, in compliance with its obligations under Paragraphs 2(a) and 4 of the Rules for Uniform Domain Name Dispute Resolution Policy, the Center requested from the Registrar verification of the information provided by the Complainant in relation to "the ten domain names" as well as the provision by the Registrar of other relevant data contained in the latter's database. In undertaking said verification and inquiry, the Registrar noticed that the <walmarttoys.com> domain name had expired by then and was to be deleted, which outcome was conveyed to the Center on January 26, 2004.
Thereafter, several communications via e-mail took place amongst the Complainant, the Center and the Registrar aimed to ensuring that the <jobsatwalmart.com> domain name due to expire on February 28, 2004, was to be put on Registrar lock pending resolution of this Proceeding and on the other hand, the aforementioned communications addressed the issue of Respondent's concomitant registration of fourteen new domain names incorporating the service mark/trade name "Wal-Mart".
Consequently, on March 19, 2004, the Center received via e-mail and then in hard copies on March 22, 2004, followed by the remittance of a signed copy on March 29, 2004, an Amended Complaint filed by the Complainant to the effect of claiming the transfer of the following fourteen additional domain names <walmartphotostudio.com>, <walmartpictures.com>, <walmartwire.com>, <walmartmart.com>, <walmartregistry.com>, <walmartretaillink.com>, <walmartblackfriday.com>, <walmartblitz.com>, <walmartgames.com>, <samswalmart.com>, <girlsofwalmart.com>, <walmartapplication.com>, <walmartcareer.com>, <walmartcareers.com> registered by the Respondent following submission of the first Complaint, and at the same time eliminating <walmarttoys.com> from the list of disputed domain names.
On March 24, 2004, the Center acknowledged receipt of the Amended Complaint and at the same time proceeded with a second request for verification to the Registrar in order to verify the contact details of the Registrant for the additional domain names, which outcome of said process was communicated to the Center by the Registrar on the same day.
Having verified that the Amended Complaint satisfied the formal requirements of the Policy, the Rules and the WIPO Supplemental Rules, the Center notified the Respondent on March 30, 2004, by e-mail, that an administrative proceeding had been commenced against him by the Complainant while at the same time the Respondent was informed that in accordance with the Rules, he was due to submit his Response to the Complaint on April 19, 2004, at the latest.
The formal date of commencement of this proceeding for all applicable purposes was set to be March 30, 2004.
On May 3, 2004, the Center advised the parties of Respondent's failure to submit a Response to Complainant's Amended Complaint and accordingly, on May 13, 2004, as the Complainant on his Amended Complaint requested a single-member Panel and made the required payment, the Center communicated to the parties the appointment of the undersigned as the Sole Panelist in the present case, having previously received the latter's requisite Statement of Acceptance and Declaration of Impartiality and Independence.
There is no controversy that English is the language of this Proceeding as English is the language of the twenty-three Domain Names' Registration Agreements.
As fixed by the Center, the Panel's Decision is due by May 27, 2004.
4. Factual Background
Complainant WAL-MART is the world's largest retailer. [See for instance the Special Report on Complainant featured in the April 17-23, 2004, issue of "The Economist" magazine at page 67]. Complainant is engaged worldwide in the operation of its discount retail stores and hypermarket "Supercenters".
Complainant owns and has used since 1962, the service mark "WAL-MART", which is claimed for example in U.S. trademark registration number 1,783,039, registered July 20, 1993, for use in retail department stores. The "WAL-MART" service mark has also been registered in a number of countries.
By virtue of Complainant's extensive use and advertising of goods and services under the WAL-MART trademark, it is unquestionable that the mark has become famous.
To promote its business, Complainant advertises its services and merchandise in numerous countries through a series of related websites for which it has also registered several domain names containing the mark "WAL-MART", namely <walmart.com>, <wal-mart.com>, <walmartsores.com>, <walmartchecks.com>, <walmartfoundation.org> and <walmartmastercard.com>.
For its part, Respondent Henry Chan is a proven cybersquatter. He has been involved as respondent in several UDRP Administrative Proceedings like this one, has defaulted as in the present case and has lost in all the proceedings he has been party to. Among the no less than forty controversies that it is possible to find reported on the Internet, it is worth citing: LTD Commodities LLC v. Henry Chan, NAF Case No.152617 (relating to the registration of seven domain names); Yahoo! Inc., GeoCities, HotJobs.com, Ltd. and Launch Media Inc. v. Henry Chan, NAF Case No.162050 (with respect to seventy-six domain names); Kellogg Company and Kellogg North America Company v. Henry Chan, NAF Case No. 237507 (concerning twelve domain names); Nike, Inc. v. Henry Chan, NAF Case No. 250742 (relating to thirty-nine domain names) and PepsiCo, Inc. v. Henry Chan, WIPO Case No. D2004-0033 (with respect to seven domain names). There is no doubt that Respondent in this case is the same person as the respondent in all those cases for the contact details attributed to respondent in those disputes coincide in whole or in part with the contact information provided by Mr. Chan in relation to "the twenty-three Domain Names" at issue here.
Respondent registered "the twenty-three Domain Names" at different times between May 13, 2002, and August 15, 2003. Respondent uses "the twenty-three Domain Names" in relation to web sites that contain links to other commerce web sites that are related to the common nouns in "the twenty-three Domain Names". It is submitted and uncontested that visitors are misdirected to these web sites through Respondent's use of the WAL-MART mark and if they click on one of the advertisements then Respondent receives a commission.
Having found out about Respondent's activities and considering the same in violation of Complainant's statutory and common law rights with respect to the use of the name WAL-MART, on November 2, 2003, the counsel for Complainant wrote a demand letter whereby it requested Respondent to delete the redirects from "the twenty-three Domain Names", to stop using the WAL-MART trade name or any variation thereof, to refrain from renewing "the twenty-three Domain Names" registrations after they expire and to abstain from registering new domain names comprising the name WAL-MART. In return, Complainant undertook to forego its option of seeking damages.
Given Respondent's lack of response to the above-mentioned letter, as stated therein, Complainant proceeded to take legal action, namely the filing of the UDRP Complaint which gave rise to the present dispute.
5. Parties' Contentions
In essence, Complainant's main submissions can be summarized as follows:
i. The twenty-three Domain Names are confusingly similar to Complainant's WAL-MART service marks in their entireties as to appearance, sound, connotation and commercial impression for each of "the twenty-three Domain Names" is simply the WAL-MART mark combined with a common noun or phrase (i.e., toys, portrait, books, foundation, check, etc.).
ii. As all of the words that Respondent has combined with the WAL-MART mark have a real connection to Wal-Mart Stores, there is a likelihood that consumers will be misled by "the twenty-three Domain Names" registered by Respondent.
iii. In light of the significant fame associated with the WAL-MART mark, consumers are likely to believe that any domain name incorporating the Wal-Mart name is associated with Complainant.
iv. To the best of Complainant's knowledge, Respondent has no rights to any trademarks consisting of the terms "WAL-MART" or "WALMART" in any country.
v. As found by other Panels in relation to other proceedings implicating Respondent, in the present case Respondent is equally using the disputed twenty-three Domain Names to misdirect Internet traffic to search engines and a series of pop-up advertisements in order to collect advertising and click-through fees and to generate sales revenues, which behavior is neither a bona fide offering of goods or services, nor a legitimate non-commercial or fair use of the Domain Names. See Cancer Treatment Centers of America, Inc. (CTCA) v. Henry Chan, WIPO Case No. D2003-0611 and Yahoo et al. v. Henry Chan, NAF Case No. 162050."vi. Respondent registered the twenty-three Domain Names with knowledge that Complainant held rights in and to its WAL-MART mark. It is submitted that Respondent had constructive notice of Complainant's trademarks by virtue of Wal-Mart's trademark registrations in the United States and many countries, Complainant's use of the mark in the United States and elsewhere, and Complainant's use of a trademark registration symbol when referencing the mark in print advertising and on its own websites.
vii. Even if the Respondent was unfamiliar with the Complainant's WAL-MART service mark, the former was obligated to inquire on its existence upon performing a trademark search prior to registering the Domain Names. In support of this argument, Complainant relies on Rubbermaid, Inc. v. Venture-Q, LLC, WIPO Case No. D2001-1361.
viii. The twenty-three Domain Names were acquired in bad faith primarily for the purpose of diverting Complainant's customers to Respondent's site or disrupting Complainant's business by preventing the latter from using the twenty-three domain names for its own business.
ix. The Respondent uses the twenty-three Domain Names in a manner that tarnishes the goodwill associated with the Complainant and its service mark, because the websites appear to be sponsored by the Complainant, but they "mouse trap" and annoy the Internet user, and they create a false and negative association between the Respondent's sites and the Complainant and its WAL-MART service mark.B. Respondent
No counter-arguments were submitted on behalf of Respondent.
6. Discussion and Findings
It is worth noting that due to Respondent's failure to submit a Response, the Panel may accept all reasonable and supported allegations and inferences in the Complaint as true. See Charles Jourdan v. Holding AG v. AAIM, WIPO Case No. D2000-0403 (finding it appropriate for the Panel to draw adverse inferences from Respondent's failure to reply to the Complaint) and also Vertical Solutions Mgmt., Inc. v. webnet-marketing, Inc., NAF Case No. 95095 (holding that Respondent's failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).
According to paragraph 4(a) of the Policy, in order to succeed with its claim, Complainant must prove that each of the three following elements is present:i. The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
ii. The Respondent has no rights or legitimate interest in respect of the Domain Name; and
iii. The Domain Name has been registered and is being used in bad faith.
A. Identity or Confusing Similarity
First of all the Panel notes that the Complainant's mark is a very distinctive one for it enjoys a strong reputation in the United States of America and many other countries in the field of retail services.
Secondly, as noted in Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415, the issue under this type of analysis is not whether confusion is likely in the trademark sense (that is, confusion as to source based on the domain name and its use in connection with a website) but, rather, whether the twenty-three domain names, standing alone, are sufficiently similar to the trademark to justify a remedy under the Policy.
Thus, turning to the relevant question of this part, on its face, it is evident that the twenty-three Domain Names at issue are confusingly similar with the Complainant's mark, where the latter is included in its entirety in the twenty-three Domain Names. The mere addition of the words "chase", "girlsof", "jobsat", "sams", "application", "blackfriday", "blitz", "books", "career(s)", "check", "flw", "foundation", "games", "mart", "photostudio", "pictures", "portrait", "portraitstudio(s)", "registry". "retaillink" or "wire" is too tenuous and insubstantial to detract from this conclusion.
Furthermore, case law has consistently confirmed that "when a domain name incorporates a complainant's mark in its entirety, it is confusingly similar to that mark despite the addition of other words". See Experian Information Solutions Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095 ("credit" added to mark EXPERIAN); Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 ("parts" added to mark OKIDATA); Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505, ("buildingsociety" added to trademark "Britannia"); Chanel Inc., v. Estco Technology Group, WIPO Case No. D2000-0413 ("chanelstore" and "chanelfashion" were found to be confusingly similar to the "Chanel" mark).
The finding of confusion in this case is strengthened by the fact that as highlighted by Complainant, all of the words that Respondent has combined with the WAL-MART mark have a real connection to WAL-MART's services and activities so that there is a likelihood that consumers will be misled by the twenty-three Domain Names registered by Respondent given the notoriety of Complainant's mark.
Accordingly, this Panel finds that the Complainant has proven the first threshold of paragraph 4(a) of the Policy.B. Legitimacy of Respondent's Interest
Complainant asserts that Respondent has no rights to any trademarks consisting of the terms "WAL-MART" or "WALMART" in any country. Moreover, it is submitted that just as it was found by other Panels in relation to a number of UDRP Proceedings implicating Respondent, given that in the present case Respondent is equally using the disputed twenty-three Domain Names to misdirect Internet traffic to search engines and a series of pop-up advertisements in order to collect advertising and click-through fees and to generate sales revenues, this behavior should neither be regarded as a bona fide offering of goods or services, nor a legitimate non-commercial or fair use of the twenty-three Domain Names. See Cancer Treatment Centers of America, Inc. (CTCA) v. Henry Chan, WIPO Case No. D2003-0611 and Yahoo et al. v. Henry Chan, NAF Case No.162050.
In this respect, this Panel finds no reason to get away from the conclusion drawn by the Administrative Panels in the cases cited by Complainant as no evidence has been put forward to the effect of distinguishing Respondent's misconduct in this case to that found to exist in those controversies.
Indeed, by examining the facts of a number of cases in which Respondent has been found not to have a legitimate interest and have registered and used a large number of domain names in bad faith, it is possible to detect a pattern of conduct on the part of Respondent consisting of systematically registering domain names containing third-party trademarks without any right or authorization whatsoever for the purposes of attracting hits to his sites by using the goodwill of the trademarks involved so that he can collect affiliate credits through the links he provides.
Additionally, in the case at hand, the Panel chooses to view Respondent's failure to submit a Response to the Complaint as evidence that it lacks rights or legitimate interests in the twenty-three disputed Domain Names. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., WIPO Case No. D2000-1221 (finding that Respondent's failure to respond can be construed as an admission that they have no legitimate interest in the domain names); Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., eResolution Case No. AF-0336 (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).
Accordingly, this Panel concludes that the Complainant has proved the second limb of paragraph 4(a) of the Policy.
C. Registration and Use in Bad Faith
Complainant sets out uncontested evidence and argument in support of its contention that Respondent's reliance on the goodwill surrounding the WAL-MART service mark to misdirect Internet users to websites unrelated to Complainant and to then subject those users to commercial pop-up advertisements for Respondent's commercial gain equates to bad faith use and registration of the twenty-three Domain Names. See Kmart v. Kahn, NAF Case No. 127708 (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy 4(b)(iv).
In sum, the facts show that Respondent has registered and used the twenty-three Domain Names to intentionally attempt to attract for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of Respondent's websites, falling under the illustrative situation provided for in paragraph 4(b)(iv) of the Policy evidencing registration and use in bad faith.
The Panel thus finds that Policy 4(a)(iii) has been satisfied.
In light of all the foregoing, this Panel concludes that the Complainant has met its burden as established by paragraph 4(a) of the Policy. Accordingly, the Panel requires that the following twenty-three domain names <chasewalmart.com>, <walmartcheck.com>, <walmartportrait.com>, <walmartportraitstudio.com>, <walmartportraitstudios.com>, <walmartphotostudio.com>, <walmartpictures.com>, <walmartflw.com>, <walmartbooks.com>, <walmartfoundation.com>, <walmartwire.com>, <walmartmart.com>, <walmartregistry.com>, <walmartretaillink.com>, <walmartblackfriday.com>, <walmartblitz.com>, <walmartgames.com>, <samswalmart.com>, <girlsofwalmart.com>, <jobsatwalmart.com>, <walmartapplication.com>, <walmartcareer.com> and <walmartcareers.com> be transferred to the Complainant.
Reynaldo Urtiaga Escobar
Dated: May 27, 2004