WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wal-Mart Stores, Inc. v. Domain Administrator, DVLPMNT MARKETING, INC.

Case No. D2016-0077

1. The Parties

The Complainant is Wal-Mart Stores, Inc. of Bentonville, Arkansas, United States of America (“United States”), represented by Accent Law Group, Inc., United States.

The Respondent is Domain Administrator, DVLPMNT MARKETING, INC. of Charlestown, Nevis, Saint Kitts and Nevis.

2. The Domain Names and Registrar

The disputed domain names <membersmarkgrill.com> and <membersmarkgrills.com> are registered with DNC Holdings, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2016. On January 14, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 15, 2016 and January 18, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 8, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 10, 2016.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on February 10, 2016. 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

Founded in the United States in 1962, the Complainant, Walmart, is the world’s largest retailer and currently serves shoppers through more than 8,970 stores worldwide and is traded on the New York Stock Exchange.

The Complainant is the owner of the distinctive and well-known MEMBER’S MARK trademarks and their corresponding logos (collectively the “MEMBER’S MARK Marks”).

The Complainant has used the MEMBER’S MARK Marks in connection with the advertising, marketing and operation of a wide range of consumer products, including cooking grills, sold at the Complainant’s Sam’s Club retail department stores. Since the inception of the MEMBER’s MARK Marks, the Complainant has continually used these marks in interstate and international commerce.

The Complainant extensively promotes its MEMBER’S MARK Marks through print, digital, and advertising on television and radio and spends millions of dollars on these efforts.

The Complainant generates significant sales revenue as a result of the advertising and sales it conducts at Sam’s Club store locations as well as on its various websites including “www.samsclub.com”, “www.membersmark.com” and others. As a result of the Complainant’s long-standing usage and promotion of the MEMBER’S MARK Marks, they have become very well-known and widely recognized by the consumer public.

The MEMBERS MARK Marks are aggressively protected through registration and enforcement.

The Complainant owns, amongst others, the following trademarks:

United States trademark MEMBERS MARK No. 2,579,025 registered on June 11, 2002 (first use July 13, 1998) – Jeans, sweat pants and sweat shirts, in class 25.

United States trademark MEMBERS MARK No. 2,571,741 registered on May 21, 2002 (first use August 30, 2000) – in class 11.

CTM trademark MEMBERS MARK No. 003435716 registered on May 19, 2005 – in classes 3, 4, 5, 8, 9, 11, 16, 18, 20, 21, 24, 25, 28, 29, 30, 31, 32.

Cease-and-desist letters regarding the disputed domain names <membersmarkgrill.com> and <membersmarkgrills.com> were sent to the Respondent (via email) on March 27, 2015 and October 1, 2015 with reminder letters on April 9, 2015 and October 14, 2015 at the email address listed in the public WhoIs record for the disputed domain names, without receiving a response.

The disputed domain names <membersmarkgrill.com> and <membersmarkgrills.com> were registered on June 9, 2005 and August 20, 2005 respectively.

The websites at the disputed domain names display parking pages, where pay-per-click advertisements and hyperlinks are displayed.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain names are confusingly similar to the Complainant’s MEMBER’S MARK Marks; that the Respondent has no rights or legitimate interests with respect to the disputed domain names nor is the Respondent a licensee of the Complainant; that although the disputed domain names were registered in 2005 the Respondent did not acquire them before the year 2013; and that the Respondent registered and is using the disputed domain names in bad faith for the following reasons:

1) The Complainant’s MEMBER’S MARK Marks were registered, used and extensively promoted well before the Respondent registered/acquired the disputed domain names <membersmarkgrill.com> and <membersmarkgrills.com>; thus the Respondent, when it purportedly acquired the disputed domain names was aware of the Complainant’s MEMBER’S MARK Marks;

2) The Respondent is trying to take advantage of the MEMBER’S MARK Marks in order to confuse consumers and trade on the Complainant’s rights and reputation and to drive traffic to its own websites, all for its own commercial benefit. Therefore, the Complainant submits that the websites have been registered to commercially profit from the likelihood of confusion between the trademark and the disputed domain names;

3) The websites at the disputed domain names display parking pages, where pay-per-click advertisements and hyperlinks, including some that refer to goods competing with those of the Complainant, are displayed;

4) The Respondent’s failure to respond to the Complainant’s cease-and-desist letters;

5) The Respondent is a known cybersquatter and is engaged in a pattern of bad faith registration of domain names that are confusingly similar to trademarks in which the Respondent has no rights.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order for the Complainant to obtain the transfer of the disputed domain names, paragraphs 4(a)(i)-(iii) of the Policy require that the Complainant demonstrates to the Panel that:

(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) The disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established rights in the MEMBER’S MARK Marks.

As correctly pointed out by the Complainant, it has already been held in numerous decisions that the mere addition of generic terms does not avoid the creation of a confusingly similar domain name.

The Panel agrees with the above view and specifically with the Complainant’s assertion that the addition of the words “grill” and/or “grills” to the mark in the final part of the disputed domain names does not prevent a finding of confusing similarity. Even more so considering that Complainant has used the MEMBER’S MARK Marks in connection with the advertising, marketing and operation of a wide range of consumer products, including cooking grills.

Therefore, the Panel finds the disputed domain names to be confusingly similar to the MEMBER’S MARK Marks in which the Complainant has rights.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names. The Respondent has no connection or affiliation with the Complainant and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s marks. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain names, nor any use in connection with a bona fide offering of goods or services for the reasons described in section 6.C below. In addition, the Respondent does not appear to be commonly known by the name “Member’s Mark” or by a similar name. Moreover, the Respondent has not replied to the Complainant’s contentions, alleging any rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Based on the evidence put forward by the Complainant, the Panel is of the opinion that the Respondent was aware of the Complainant’s trademark registrations and rights in the MEMBER’S MARK Marks when it registered the disputed domain names.

In fact, the Complainant’s trademarks have been registered and used for many years and predate the disputed domain names’ registration dates. Therefore, in the absence of evidence to the contrary, the Panel finds that the Respondent knew of the Complainant’s marks and intentionally intended to create an association with the Complainant and its business, and that the Respondent must have had actual knowledge of the Complainant’s trademarks at the time of the registration of the disputed domain names.

The Panel notes that the disputed domain names display parking pages, where pay-per-click advertisements and hyperlinks including some referring to goods competing with those of the Complainant are displayed, and that this falls clearly within the example of bad faith set out in paragraph 4(b)(iv) of the Policy: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.

An inference of bad faith registration and use of the disputed domain names is also given by the fact that the Respondent has never replied to the Complainant’s cease-and-desist letters. Indeed, owing to the fact that the Respondent has not responded to, let alone denied, the assertions of bad faith made by the Complainant in the pre-action communications and in this proceeding, it is reasonable to assume that if the Respondent had legitimate purposes for registering and using the disputed domain names it would have responded.

A further inference of bad faith is given by the fact that the Respondent appears to be engaged in a pattern of bad faith registration of domain names that are confusingly similar to trademarks in which the Respondent has no rights. There are in fact several UDRP cases that have been successfully brought against this Respondent.

Accordingly, the Panel finds on the basis of the evidence presented, that the Respondent registered and is using the disputed domain names in bad faith.

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 names <membersmarkgrill.com> and <membersmarkgrills.com> be transferred to the Complainant.

Fabrizio Bedarida
Sole Panelist
Date: February 16, 2016