World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wal-Mart Stores, Inc. v. blingblingtickets

Case No. D2011-2276

1. The Parties

Complainant is Wal-Mart Stores, Inc. of Bentonville, Arkansas, United States of America (“United States”), represented by FairWinds Partners, LLC, United States.

Respondent is blingblingtickets of San Jose, California, United States.

2. The Domain Name and Registrar

The disputed domain name <walmartticket.com> is registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 26, 2011. On December 28, 2011, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On December 28, 2011, GoDaddy.com, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 29, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on December 29, 2011. The Center verified that 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 January 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 23, 2012. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 24, 2012.

The Center appointed Timothy D. Casey as the sole panelist in this matter on January 26, 2012. 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

Complainant’s business operations began in the United States in 1962. Complainant is an international operator of discount department stores and warehouse stores, and is presently the largest retailer in the world. Complainant’s brand was recently recognized as the top retail brand of 2011 by Interbrand, with a valuation of USD 142.03 billion.

Complainant owns and operates more than 8,970 stores worldwide and is traded on the New York Stock Exchange under the ticker symbol WMT.

Between 2008 and 2010, Complainant spent nearly USD 6.0 billion to promote its WAL-MART marks through print, digital and television advertising. For years Complainant has received extensive media coverage including stories in the New York Times, The Wall Street Journal, CNN and many other outlets.

Complainant owns the following registered trademarks (the “WALMART Marks”) in the United States (Registration Date):

WAL-MART DISCOUNT CITY WE SELL FOR LESS (1971)

WAL-MART (1985)

WAL-MART (1993)

WALMART (2009).

Complainant generates significant sales revenue as a result of the advertising and sales it conducts at store locations as well as on its various websites including “www.walmart.com”, “www.wal-Mart.com”, “www.walmart.ca”, “www.myWalmart.com”, “www.samsClub.com”, “www.vudu.com” and others and has generated net sales of over USD 1.8 trillion between 2006 and 2010. As a result of Complainant’s long usage and promotion of the WALMART Marks, they have become widely recognized around the world.

The disputed domain name was registered with GoDaddy.com, Inc. by Respondent on February 12, 2011. The disputed domain name resolves to a website parked with GoDaddy.com, LLC that includes advertisements to a variety of online retailers, including at least one good or service that competes directly with Complainant.

The evidence on record includes no response by Respondent or any other communication from Respondent.

5. Parties’ Contentions

A. Complainant

Complainant contends that it owns and has rights in the WALMART Marks, that the disputed domain name contains in entirety at least one of the WALMART Marks, and that the addition of the generic word “ticket” is without legal significance in determining the issue of similarity.

Complainant contends there is no evidence to suggest that Respondent has ever used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

Complainant contends that there has never been any relationship between the Complainant and the Respondent has not been authorized in any way to use the disputed domain name.

Complainant contends that on December 19, 2011, Complainant sent Respondent a demand letter, and that Respondent remained silent and continued to operate its infringing website.

Complainant contends that Respondent is not commonly known by the disputed domain name and is not making and does not intend to make a legitimate noncommercial or fair use of the disputed domain name.

Complainant contends that Respondent registered the disputed domain name for the purpose of disrupting the business of Complainant as the disputed domain name directs to a pay-per-click website that displays links to competitors of Complainant. Complainant also contends that use of the disputed domain name in the stated fashion misdirects potential consumer to Respondent’s website at the disputed domain name and is disruptive to Complainant’s business as potential consumers of Complainant’s services are confused into believing that Respondent’s website at the disputed domain name is affiliated with, or sponsored by, Complainant.

Complainant contends that Respondent has actual or constructive knowledge of Complainant’s rights in the disputed domain name at the time of registration by virtue of the notoriety of the WALMART Marks.

Complainant requests that the disputed domain name be transferred to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant owns and has rights in the WALMART Marks. The disputed domain name fully and completely incorporates at least one of the WALMART Marks. The addition of the generic word “ticket” to the incorporated WALMART Mark does not change the fact that the WALMART Mark is fully incorporated and the disputed domain name, as a whole, is confusingly similar to the WALMART Marks.

The Panel finds the disputed domain name to be identical or confusingly similar to the WALMART Marks and that this element of the Policy has been met by Complainant.

B. Rights or Legitimate Interests

Rights

Complainant contends that there has never been any relationship between Complainant and Respondent and Respondent has not been authorized in any way to use the disputed domain name. Respondent did not challenge this contention. The Panel accepts these contentions as true.

Legitimate Interests

Complainant contends there is no evidence to suggest that Respondent has ever used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Respondent did not challenge this contention. The Panel accepts these contentions as true.

Complainant contends that Respondent is not commonly known by the disputed domain name and is not making and does not intend to make a legitimate noncommercial or fair use of the disputed domain name. Respondent did not challenge this contention. Moreover, Respondent appears to be known by the business name of “blingblingtickets”, which bears no resemblance or connection to the disputed domain name <walmartticket.com> outside of the generic word “ticket”. Even if one were to argue that Respondent (blingblingtickets) has a legitimate interest in a domain name bearing the word “ticket”, the two names “Walmart” and “blingbling” bear no resemblance or connection whatsoever. The Panel therefore accepts Complainant’s contentions as true.

Complainant also contends that: (1) Respondent registered the domain name for the purpose of disrupting the business of Complainant; (2) by pointing the disputed domain name to a pay-per-click website that displays links to competitors of Complainant that Respondent is also a competitor of Complainant; (3) Respondent’s use of the disputed domain name misdirects potential consumers to Respondent’s website; and (4) potential consumers of Complainant’s services are confused into believing that Respondent’s website at the disputed domain name is affiliated with, or sponsored by, Complainant. Respondent did not challenge these contentions. Moreover, the Panel finds these contentions to be supported by the record.

The Panel finds that Respondent’s website at the disputed domain name appears to exist for the primary purpose of diverting legitimate consumers of Complainant to Respondent’s website, which presents consumers with links to websites of direct competitors of Complainant, from which someone other than Complainant likely profits. The Panel does not find Respondent’s use or preparations to include a bona fide offering of goods or services and is not a legitimate non-commercial or fair use of the disputed domain name.

The Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name and that this element of the Policy has been met by Complainant.

C. Registered and Used in Bad Faith

Registered in bad faith

Complainant has registered and has been using one or more of the WALMART Marks for nearly 40 years prior to Respondent’s registration of the disputed domain name. The Panel agrees with Complainant that Respondent was likely aware of the existence of the WALMART Marks and Complaint’s prior registration of the domain names <walmart.com> and <wal-mart.com> prior to Respondent’s registration of the disputed domain name. The use of links to competing retailers on Respondent’s website at the disputed domain name provides further evidence of Respondent’s likely advanced knowledge of the WALMART Marks and the nature of Complainant’s business, which is why Respondent probably selected the disputed domain name in the first place.

It must be noted that Complainant’s contentions regarding Respondent not responding to a demand letter on December 19, 2011 cannot be considered relevant as no such letter was attached to the Complaint or made a piece of evidence on the record. Nevertheless, in view of the other arguments above, coupled with the fact that Respondent has not attempted to challenge these contentions, the Panel finds it likely that Respondent registered the disputed domain name in bad faith.

Used in bad faith

The website associated with the disputed domain name has been used to compete with Complainant, to misdirect potential consumers of Complainants services to Respondent’s website, and to confuse potential consumers into believing that Respondent’s website is somehow affiliate with, or sponsored by, Complainant. Each of these actions, on their own, may constitute bad faith use of the disputed domain name.

While the Panel does not fully accept Complainant’s contention that Respondent’s use of links to competitors on the website is direct competition in this case, a respondent need not be a direct competitor of a complainant; it is sufficient if it provides a means for Internet users to access links to businesses that compete with, or rival, the complainant (PepsiCo, Inc. v. LaPorte Holdings, Inc. and Pepsiemployment.com a/k/a Henry Chan, WIPO Case No. D2005-0087).

The Panel finds that Respondent registered and used the disputed domain name in bad faith. The Panel finds this element of the Policy has been met by Complainant.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <walmartticket.com> be transferred to Complainant.

Timothy D. Casey
Sole Panelist
Dated: February 9, 2012

 

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