WIPO Arbitration and Mediation Center
Wal-Mart Stores, Inc. v. Fred Sacco
Case No. D2006-1561
1. The Parties
The Complainant is Wal-Mart Stores, Inc., Arkansas, United States of America, represented by Ballard Spahr Andrews & Ingersoll, LLP, United States of America.
The Respondent is Fred Sacco, Nebraska, United States of America.
2. The Domain Name and Registrar
The disputed domain name <walmart-usa.com> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2006. On December 12, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On December 13, 2006, Go Daddy Software 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 December 19, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2007.
The Center appointed Harry L. Arkin as the sole panelist in this matter on January 25, 2007. 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 the registered proprietor of the trademark WALMART.COM as of 1993 having registered the same through Network Solutions, LLP as confirmed through WHOIS; the trademark Wal-Mart having first been used by Claimant in 1962 according to the United States Patent and Trademark Office. Respondent registered the disputed domain name with GoDaddy.com, Inc. on September 30, 2006.
5. Parties’ Contentions
The Complainant contends as follows:
- that the Complainant has been in business since 1962 and is now the world’s largest retailer operating over 3,100 stores and “supercenters” in 14 countries.
- that the Complainant offers a wide variety of products including, but not limited to, electronics, computers, toys, furniture, sports and fitness, automotive and apparel.
- that there are at least ten (10) Wal-Mart locations within fifty (50) miles of the Respondent’s address.
- that a person representing himself as counsel to the entity identified by the disputed trade name, when contacted by Complainant’s counsel stated that “he was sure that Wal-Mart would purchase the domain name for some amount less than US$1500, as he knew that is what it would cost to file a UDRP Complaint (and) stated that under no circumstances would he transfer the domain name for free (as well as) indicated that if Complainant did not act quickly to purchase the domain name, Respondent would place pornographic content (DVDs for sale) on the website located at WALMART-USA.COM.”
- that the disputed domain name is “virtually identical” to the <walmart.com> domain name of the Complainant and the Wal-Mart trademarks in which the Claimant has well-established rights.
- that the Respondent’s second-level domain name is confusingly similar to that of the Claimant and the use of “a generic geographic descriptor such as ‘USA’ does not obviate the confusion.”
- that the Respondent has no rights or legitimate interests in respect of the domain name, has not been authorized by the Complainant to use the Complainant’s marks in any way.
- that the Respondent has registered the disputed domain name and is using (or threatening to use the same) in bad faith pursuant to Section 4(b)(i) of the Policy as evidenced by the demand on behalf of the Complainant described above.
- that, as a result of the foregoing the Complainant seeks transfer of the subject disputed domain name to the Complainant.
The Respondent advised the Center on January 26, 2007, as follows:
- that the disputed domain name “has no affiliation with walmart whatsoever” and that “walmart-usa.com is not in any way affiliated with walmart.”
- that there has not been made any money made on this (the disputed) domain name and that (he is) not affiliated with what has been brought forth (by the Complainant).
- that the Respondent has not had any “bad faith intentions with the purchase of this (disputed) domain (name).”
- that the disputed domain name is a “parked page” over which the Respondent “has no control over what is placed on this “parked page.”
6. Discussion and Findings
A. Identical or Confusingly Similar:
The Panel finds: That the Complainant has established that it has rights to the registered trademark WAL-MART. That the Respondent states he added the acronym “usa” to the registered trademark of the Claimant, i.e., a geographical suffix, after a hyphen, which is insufficient here to avoid a finding of confusing similarity.
The Complainant has established the first element of the Policy.
B. Rights or Legitimate Interests:
The Complainant has not authorized the use by the Respondent of the Claimant’s trademark by incorporation into the disputed domain name or otherwise.
That the Respondent states he has not “made any money” from the disputed trade name is irrelevant in the absence of any apparent non-commercial or fair use, and that the Respondent claims he (or the disputed domain name) has no affiliation with the Claimant is likewise irrelevant except to indicate that the Respondent has no rights or legitimate interests in the disputed trade name.
Therefore, the Panel finds that the Complainant here made a prima facie showing of the Respondent’s lack of rights or legitimate interest to the disputed trade name, which has not be compellingly answered by the Respondent.
The Panel thus finds that the Complainant has established the second element of the Policy.
C. Registered and Used in Bad Faith:
The Panel refers to that portion of the Complaint, not refuted by the Respondent, in which it is stated that an individual representing himself as counsel to the Respondent’s registered domain name asked an attorney for the Complainant if the Complainant would purchase that domain name or (if not) the Respondent would place pornographic content (DVDs for sale) on the website located at “www.walmart-usa.com.”
One of the indications of bad faith is the registration of a domain name with the intent to profit for the sale to the owner of a similar trademark or domain name. That indication is satisfied in the Panel’s view by the circumstances described above, i.e., the intentional registration by the Respondent of a confusingly similar domain name. The disputed domain name is correctly “parked” and being used to provide a number of sponsored links, from which revenue is presumably derived.
The Panel thus finds in the circumstances that the Respondent registered and used the disputed domain name in bad faith.
I conclude that: The disputed domain name registered by the Respondent is confusingly similar to marks in which the Complainant has prior rights; that the Respondent lacks any rights or legitimate interest in the disputed domain name; that the Respondent registered the disputed domain name in bad faith. For all of the foregoing reasons, I find in favor of the Complainant and, in accordance with paragraph 15 of the Rules and paragraph 15 of the Policy, order that the disputed domain name <walmart-usa.com> be transferred to the Complainant.
Harry L. Arkin
Dated: February 14, 2007