Wal-Mart Stores, Inc. v. xc2
Case No. D2006-0811
1. The Parties
The Complainant is Wal-Mart Stores, Inc of Arkansas, the United States of America, represented by Quinn Emanuel Urquhart Oliver & Hedges, LLP of the United States of America.
The Respondent is xc2 of Hong Kong, SAR of China.
2. The Domain Name and Registrar
The disputed domain name <walmartblows.com> is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2006. On June 29, 2006, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the domain name at issue. On June 29, 2006, eNom, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 10, 2006. 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 July 19, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August 8, 2006. The Respondent did not submit a Response. Accordingly, the Center formally notified the Respondent of the consequences of it’s default on August 9, 2006.
The Center appointed Philip N. Argy as the sole panelist in this matter on August 15, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as requested by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
There being no Response, the following facts are uncontested.
The Complainant was established in 1962, in the United States of America as a local specialty store and is currently the world’s largest retailer. The Complainant offers for sale a wide variety of products including but not limited to electronics, computers, toys, furniture, sports and fitness equipment, automotive and apparel. The Complainant owns and has continuously used the WAL-MART and WALMART trademark and service mark in the United States of America for retail department store services since 1962.
In addition to the common law trademark rights in WAL-MART and WALMART, the Complainant has numerous registered United States trademarks which incorporate the terms “Wal-Mart” or “Walmart” which it uses in the United States of America and internationally in connection with its retail stores and in connection with services such as credit cards, vision care, vacation planning and pharmacy. The marks include but are not limited to:
- U.S Reg. No 1,322,750 for WALMART and Design
- U.S. Reg. No. 1,783,039 for WAL-MART.
The Complainant also operates a website at “www.walmart.com” where consumers can shop online and obtain information about Wal-Mart stores. The website is arranged in various product categories and as such is a vital part of the Complainant’s business and contributes to the Complainant’s online identity and brand. The Complainant also owns and operates a number of other domain names which incorporate the WAL-MART or WALMART marks, including <walmart.com>, <walmartsupercenter.com>, <walmartstores.com> among others, that link to the Complainant’s website.
Due to the Complainants extensive use and millions of dollars in advertising the WAL-MART and WALMART marks have acquired invaluable goodwill and reputation in the United States of America and throughout the world. Additionally the Complainant also uses the WAL-MART and WALMART marks extensively on its Wal-Mart buildings, advertising and community support programs.
The Respondent registered the domain name <walmartblows.com> on or about February 22, 2005.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is virtually identical or at least confusingly similar to the Complainant’s WAL-MART mark as the Respondent has merely added the term “blows” to a term that is identical to the WAL-MART mark.
Specifically, the Complainant cites a number of prior panel decision that held that a domain name with an insulting suffix, such as “blows” or “sucks”, is confusingly similar to the trademark to which it is applied.
Further, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant knows of no other “WALMART” that offers goods or services and Wal-Mart has not authorized any individual or business entity to register the <walmartblows.com> domain name. Further, the Complainant contends that the Respondent is not using the <walmartblows.com> domain name as a site for genuine non-commercial criticism of the Wal-Mart business. The Complainant contends that the Respondent is using the site in a commercial manner to redirect internet traffic to competitors of the Complainant. The Complainant also contends that the Respondent is using the domain name in bad faith as it is using it for commercial gain rather than for genuine criticism or complaints.
As noted above, the Respondent did not file a Response to the Complaint.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has shown that it is the owner of the marks WAL-MART and WALMART, through the registration of various WAL-MART and WALMART trademarks in the United States of America and the use of the domain names such as <walmart.com>, <walmartsupercenter.com> and <walmartstores.com>.
When comparing the Complainant’s mark to the disputed domain name, it is well established that the generic top-level domain, in this case “.com”, must be excluded from consideration as being the generic or functional component in the domain name. Once the “.com” is excluded from the disputed domain name the remaining term is “walmartblows”, which consists solely of the term “blows” and the Complainant’s mark. The Panel must decide whether the remaining term “walmartblows” is confusingly similar to the marks WAL-MART and/or WALMART.
When comparing the domain name with the Complainant’s mark, reference should not be made to the content of the website (See A&F Trade Mark, Inc. and Abercrombie & Fitch Stores, Inc v. Justin Jorgenson, WIPO Case No. D2001-0900).
The Complainant has argued that formulating a domain name by adding a derogatory term to the Complainant’s mark results in the domain name being confusingly similar to the Complainant’s mark. Indeed there have been a number of UDRP panel decisions that have held that a domain name which consists of a disparaging word such as “sucks” and a trademark must in all circumstances be confusingly similar because not all Internet users speak English fluently (Vivendi Universal v. Mr. Jay David Sallen and GO247.COM, INC., WIPO Case No. D2001-1121 and Koninklijke Philips Electronic N.V. v. In Seo Kim, WIPO Case No. D2001-1195). However, on a number of occasions UDRP panels have concluded that appending a critical or disparaging term, such as “sucks”, to a trademark in a domain name automatically signals that the corresponding website is intended for parody or criticism, and eliminates any significant risk that the public will be confused into believing that the trademark owner owns or is affiliated with the domain name (Qwest Communications International, Inc. v. DefaultData.com a/k/a Brian Wick, WIPO Case No. D2003-0002 and Arthur Guinness Son & Co (Dublin) Limited, Guinness Anchor Behad v. Josh.com.my a.k.a Josh Lim, WIPO Case No. 2002-1117). These cases have held that trademark owners are unlikely to disparage or parody their goods and services and therefore the use of a critical or disparaging term in a domain name obviates confusion.
As outlined in the decision of this Panel in Wal-Mart Stores, Inc v. Traffic Yoon, WIPO Case No. D2006-0812, blanket propositions in relation to whether a derogatory term appended to a Complainant’s mark constitutes a phrase which is confusingly similar to the Complainant’s mark should be avoided. Instead, careful consideration needs to be given to whether the particular disparaging term combined with the Complainant’s mark may confuse members of the public into believing that there exists an affiliation between the Complainant or the Respondent, or that the Complainant operates or owns the domain name.
In establishing the likelihood of confusion between the Complainant’s mark and the domain name, the Complainant must show that their customers or those members of the public likely to be their customers would be confused as to whether the Complainant was associated with the domain name. In demonstrating this, the Complainant may show evidence that their clientele would not understand that the term is derogatory and therefore would be confused as to who was the owner or operator of the web site, such as in Berlitz Investment Corp v. Stefan Tinculesue, WIPO Case No. D2003-0465 where it was shown that the complainant’s customers did not generally speak English. The Complainant may also show that the “derogatory” or “critical” term is not ordinarily perceived as a derogatory or critical term as such a meaning relies on nuances or idiosyncrasies or idioms of regional language. These factors are not exhaustive but what needs to be demonstrated by the Complainant is that viewers of the domain name would be genuinely confused as to the Complainant’s association with the disputed domain name.
In the current case, the Panel finds that a domain name which uses the term “blows” as a suffix to the Complainant’s mark could cause confusion as to whether the Complainant owned or operated the website. This is because the term “blows” used in a derogatory or critical term relies on idiomatic usage of American English which many Wal-Mart customers or potential customers might not appreciate. Without appreciating that the term “blows” may constitute a derogatory or critical term, it would not be obvious that the site was unrelated to the Complainant. In these circumstances, a visitor may be confused as to whether the Complainant owned or operated the website.
Furthermore, in the view of this Panel, where the appended word is a prefix rather than a suffix, the emphasis normally placed on the initial portion of a domain name tends to ‘bury’ the trademark. Conversely, if the appended word is a suffix, the trademark is at the beginning of the domain and therefore much more likely to retain its trademark effect on the reader. The practical application of this principle also underpins the different outcomes between this case and Wal-mart Stores, Inc v. Traffic Yoon, WIPO Case No. D2006-0812.
In the circumstances the Panel finds that the disputed domain is confusingly similar to the trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out in particular, but without limitation, three circumstances which, if proved by a respondent, can substantiate the respondent’s right to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii) of the Policy, namely:
(i) before any notice of the dispute to the respondent, the respondent’s use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial 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.
It has been established by WIPO Panels that once a complainant establishes a prima facie case showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of proof on this factor shifts to the respondent to demonstrate a right or legitimate interest in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see amongst others Croatia Airlines d.d. v Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
In the case at hand, it is clear that the Complainant has never authorized or licensed the Respondent to use either of the Complainant’s WAL-MART or WALMART marks. Furthermore, there is no evidence that the Respondent has been commonly known by or associated with either of those mark. There is no plausible or legitimate explanation in the circumstances for the Respondent’s registration of the Complainant’s trademark as a domain name in the .com gTLD, especially given that the marks WAL-MART and WALMART have no generic meaning. The website does not contain genuine non-commercial criticism, which would constitute a right or legitimate interest in the domain name. As such, the Respondent’s conduct violates paragraph 4(c)(ii) of the Policy.
This Panel finds that the Respondent is in all likelihood intentionally seeking to exploit the confusion created by the use of the domain name to divert Internet users away from the Complainant’s site to the Respondent’s own site for the latter’s own benefit. Whether, as the Complainant surmises, the benefit to the Respondent is by earning referral fees by diverting traffic to other commercial websites, or whether the Respondent is seeking to preclude the Complainant from obtaining the domain name unless it or its competitor pays a sufficiently large sum to purchase the name, the ultimate effect is that the Respondent reaps financial benefit. To receive such a benefit is neither a bona fide offering of goods or services nor a legitimate non-commercial or fair use.
In light of the above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Under the policy, the Complainant is also required to prove the third element in paragraph 4(a)(iii), namely, that the domain name has been registered and is being used in bad faith.
The Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 documented out-of pocket costs directly related to the domain name; or
(ii) the respondent 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; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to its source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
As previously noted, the Complainant owns and has continuously used the WAL-MART and WALMART trademark and service mark in the United States of America for retail department store services since 1962, and this mark has become an extremely recognizable mark. By registering on February 22, 2005 a domain name which includes the Complainant’s mark, and having regard to the discussion in paragraph B above, it can only be assumed that the Respondent has in all likelihood registered the domain name to attract, for commercial gain, Internet users to that website.
The Panel concludes that the Respondent has registered the disputed domain name and has used the disputed domain name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <walmartblows.com> be transferred to the Complainant.
Philip N. Argy
Date: August 29, 2006