Complainant is Wal-Mart Stores Inc., of Bentonville, Arkansas, United States of America, represented by Troutman Sanders, LLP, Hong Kong, People's Republic of China.
Respondent is Frank Warmath, of Santa Fe, New Mexico, United States.
The disputed domain name <walmart.tv> (the “disputed domain name” or “Domain Name”) is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2008. On December 1, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On December 1, 2008, eNom transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the registrant's contact details.
In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on December 5, 2008. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on December 5, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 25, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 29, 2008.
The Center appointed Seth M. Reiss as the sole panelist in this matter on January 16, 2009. 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.
Complainant is the world's largest and perhaps best known retailer and the operator of Wal-Mart department stores worldwide. Complainant opened its first Wal-Mart store in Rogers, Arkansas in 1962. Since then Complainant's business and the number of Wal-Mart stores has grown exponentially worldwide. Complainant has been listed as the number one Fortune 500 Company each year from 2002 until 2008 with the exception of 2006, when Complainant placed second on the list. Complainant currently operates more than 6,800 stores and employs more than 1.9 million employees worldwide in the United States, Canada, China, Japan, Mexico, Argentina, Brazil, Germany, Puerto Rico, Costa Rica, Nicaragua, Guatemala, Honduras, El Salvador and the United Kingdom of Great Britain and Northern Ireland. In its most recent fiscal year, Complainant's global sales exceeded USD 374 billion. More than 180 million customers per week visit Complainant's Wal-Mart stores worldwide.
Complainant claims rights in the WAL-MART trade mark (“the Mark”) consequent to using the Mark in business and through registrations of the Mark worldwide. Complainant has used the WAL-MART trademark in respect to its business since 1962. Complainant has obtained registrations for the Mark in no less than 95 countries or regions, in numerous classes of goods and services. Annexed to the Complaint are copies of United States Patent and Trademark Office registrations for the WAL-MART mark dating back to 1993 claimed for retail department store services.
Complainant has registered numerous domain names which are comprised of or incorporate the Mark. The domain names resolves into Complainant's various Wal-Mart websites globally accessible via the Internet.
Complainant spends in excess of USD 1 billion annually on advertising and promotional expenses worldwide in association with its Wal-Mart stores and the Mark.
The eNom WhoIs database shows the disputed domain name <walmart.tv > registered to Respondent, an individual having an address in Santa Fe, New Mexico. The Domain Name was first registered on May 25, 2003. Currently and at the time the Complaint was filed the Domain Name resolves into a website comprising a “link farm” that describes goods and services, mostly televisions. The “www.walmart.tv” landing page provides links to commercial sites that sell the goods and services described by the links on the “www.walmart.tv” site.
Complainant contends the WAL-MART mark is one of the most well-know marks in the world, is an invented mark, and is associated by consumers worldwide solely with Complainant and its Wal-Mart stores. Complainant further contends that registration of the Mark is prima facie evidence of its validity and that Respondent has the burden of refuting this presumption. Because the disputed domain name comprises the word “walmart”, the Domain Name is identical or confusingly similar to the Mark in which Complainant has rights.
Complainant next maintains that Respondent has no right or legitimate interest in respect of the Doman Name for, inter alia, the following reasons: a search conducted by Complainant failed to reveal any trademark registrations for the Mark in the name of Respondent; Complainant acquired through widespread use and registration rights in the Mark which precede by many years Respondent's registration and use of the disputed domain name; due to the fame of Complainant and its Mark, Respondent could not have been ignorant of Complainant's rights in the Mark at the time Respondent registered the <walmart.tv> Domain Name; and Complainant has not authorized or otherwise permitted Respondent to use the Mark or to register the disputed domain name.
Lastly, Complainant submits that the Domain Name was registered and is being used by Respondent in bad faith because it is inconceivable that Respondent did not know of the Mark and Complainant's rights therein when Respondent registered the disputed domain name, because Respondent profits from the Mark's fame and Complainant's goodwill by using the Domain Name to point to a “link farm” that links Internet users to commercial sites offering goods and services which compete with the goods and services offered by Complainant, and because Respondent breached his registration agreement by warranting that his registration and use of the Domain Name would not infringe third party rights.1
In conclusion, Complainant requests, pursuant to paragraph 4(i) of the Policy, that the domain name <walmart.tv >, be transferred to Complainant.
The Respondent did not reply to the Complainant's contentions.
Paragraph 15(a) of the Rules instructs that the “Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Pursuant to paragraph 4(a) of the Policy, the Complainant has the burden of establishing the existence of the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) (iii) The disputed domain name was registered and is being used in bad faith.
The Panel finds that the Domain Name is identical to Complainant's registered WAL-MART mark. Panels have long held that the addition of the gTLD suffix is generally irrelevant in an examination of identity or confusing similarity.2 Credit Management Solutions, Inc. v. Collex Resource Management, WIPO Case No. D2000-0029. WIPO UDRP panels considering the WAL-MART mark incorporated into other domain names have concluded that use of the word “walmart” in its entirety, regardless of the presence of other terms, would give rise to a domain name that is identical or confusingly similar to Complainant's WAL-MART mark, Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662, and that deletion of the hyphen between the terms “WAL” and “MART” in the domain name “has little, if any... legal significance,” Wal-Mart Stores, Inc. v. Brad Tauer, WIPO Case No. D2000-1076 (finding <walmartrx.com> confusingly similar to the WAL-MART mark).
The consensus view of WIPO panelists concerning the burden of establishing lack of a respondent's rights or legitimate interests in respect of a domain name is that:
[w]hile the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.
In the present case Complainant has alleged that Respondent has no rights or legitimate interests in the Domain Name and that Respondent is neither authorized, licensed, endorsed or otherwise permitted by Complainant to use Complainant's Mark in the disputed domain name or otherwise. This establishes a prima facie case and shifts the burden to Respondent to demonstrate rights or legitimate interests in the domain name.
By not submitting a Response, Respondent has failed to invoke any circumstances that might demonstrate, pursuant to paragraph 4(c) of the Policy, that Respondent holds some right or legitimate interest in the disputed domain name. Ahead Software AG v. Leduc Jean, WIPO Case No. D2004-0323.
Additionally, Complainant's rights in respect of the Mark predate by many years Respondent's registration and use of the disputed domain name. Given the notoriety of the WAL-MART mark, Respondent could not have not known of the rights held by Complainant in the Mark at the time Respondent registered the disputed domain name. Such awareness on the part of a respondent may be inconsistent with the possibility of some right or legitimate interest in the respondent in respect of the domain name. Pfizer Inc. v. Websites, WIPO Case No. D2004-0730. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Concerning the third element of the Policy, paragraph 4(b)(iv) is implicated by the facts here at issue. Respondent uses the Domain Name to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant's WAL-MART mark as to source, sponsorship, affiliate, or endorsement of Respondent's “www.walmart.tv” website and the products and services being offered by commercial websites linked there through.
When a domain name incorporates a famous mark comprised of a coined or fanciful term, “it would be difficult, perhaps impossible, for Respondent to use the Domain Name as the name of any business, product or service for which it would be commercially useful without violating Complainant's rights.” Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028.
When a domain name incorporating a famous mark is used to attract Internet traffic to fuel click-through revenues which trade on the reputation of that mark, a conclusion of bad faith registration and use under paragraph 4(a)(iii) of the Policy is unavoidable. The Sportsman's Guide, Inc. v. Asia Ventures, Inc, WIPO Case No. D2002-1116 (use of domain name to attract traffic for commission based search engine); Yahoo! Inc. v. Web Master a/k/a MedGo, NAF Claim No.127717 (use of domain name to attract traffic for pay-per-click search engine); Deutsche Telekom AG v. WWW Enterprise, Inc., WIPO Case No. D2005-1136 ( “[I]t is now a well known practice to display on a web page or search engine various links to other commercial websites, every link activated by an Internet user enables the host of the search engine to collect financial remuneration proportional to the number of connections.”).
The same conclusion of bad faith registration and use is reached when a domain name incorporating a famous mark is used to sell competitive products. Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400; Merrell Pharmaceuticals Inc. and Aventis Pharma SA. v. Lana Carter, WIPO Case No. D2004-1041.
WAL-MART is a famous mark. Respondent uses the fame of the WAL-MART mark to attract Internet users to Respondent's link farm website located at “www.walmart.tv”. Respondent undoubtedly earns revenues through his link farm. The link farm links those so attracted to sites that sell goods and services that are in direct competition with goods and services sold by Complainant under the Mark.
The Panel finds that Respondent has registered and is using the disputed domain name in bad faith.
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <walmart.tv> be transferred to Complainant.
Seth M. Reiss
Dated: January 30, 2009
1 Although there appears to be some support among UDRP panels for Complainant's position that a registrant's breach of registration agreement supports a conclusion of bad faith registration and use, this Panel declines to adopt such reasoning where the alleged breach concerns the trademark rights that form the subject of the UDRP dispute.
2 Although the “.tv” suffix is technically not a gTLD (generic top level domain) but a ccTLD (country code top level domain), the distinction is irrelevant for purposes of this analysis.