WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wal-Mart Stores, Inc. v. Peter Carrington
Case No. D2002-0846
1. The Parties
1.1 The Complainant is Wal-Mart Stores, Inc., a United Sates corporation with its headquarters in Bentonville, Arkansas, United States of America.
1.2 The Respondent is Peter Carrington, of Party Night Inc., Jan Luykenstraat 58, Amsterdam 1071 CS, Netherlands.
2. The Domain Name and Registrar
2.1 The proceeding is concerned with the domain name <walmartcreditcards.com> ("the disputed Domain Name").
2.2 The disputed Domain Name is registered with Key-Systems GmbH ("the Registrar") of SaarPfalz-Park Ė Building 7, Bexbach 66450, Germany.
3. Procedural History
3.1 The Complainant initiated this proceeding by filing a Complaint (Ďthe Complaint"), electronic and hard copies of which were received by the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") on September 9 and 12, 2002, respectively. The Complaint was also sent to the Registrar and to the addresses of the Respondent shown in the Registrarís Whois database.
3.2 On September 13, 2002, the Center notified the Complainant of a deficiency in paragraph 19 of the Complaint, containing the Complainantís submission to the jurisdiction of certain court in respect of any challenge that may be made to the decision by an Administrative Panel in this proceeding. In response to this notification, the Complainant filed an amendment to paragraph 19 of the Complaint on September 16, 2002. Copies of this amendment were also sent to the Respondent and the Registrar.
3.3 On September 17, 2002, the Center completed its review to confirm that the Complaint complies with the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the ICANN Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the ICANN Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy. On the same date, the Center transmitted electronic and hard copies of the Complaint and notification of the commencement of this proceeding to the email and physical addresses of the Respondent shown in the Registrarís Whois database.
3.4 No response was received from the Respondent and on October 8, 2002, the Center transmitted an electronic notification of default to the Respondent.
3.5 The Complainant elected to have the Complaint resolved by a single-member Panel. The Center invited Ian Donovan to serve as the single-member Panel and a Statement of Acceptance and Declaration of Impartiality and Independence was duly executed and faxed to the Center. On October 17, 2002, the Complainant and Respondent were notified of the appointment of the Panel and the requirement that the Panel forwards its decision to the Center by October 31, 2002.
3.6 The Panel has not received any requests for waivers or extensions of deadlines and the Panel has not found it necessary to request any further information from the parties.
3.7 The language of this proceeding is English, being the language of the registration agreement applicable to the disputed Domain Name.
4. Factual Background
4.1 The Complainant operates more than 2700 retail outlets in the United States and more than 1100 outlets in various other countries in Europe, Asia and South America. It has made continuous use of the WAL-MART service mark since 1962, and currently owns registrations of that mark in 46 countries. These include a registration in 1994, for the Benelux countries and registration in 1999, for Germany. The Complainant makes extensive use of the service mark in connection with its many retail outlets, in advertising its merchandise and services throughout the world, on its various websites and in a variety of community service programs. The Complainant offers Wal-Mart credit card and claims trademark rights in the marks WAL-MART and WAL-MART CREDIT CARD for credit cards and related services. It also operates a website at <walmartcreditcard.com> providing information and services to its customers.
4.2 The Complainant has not authorised the use of the disputed Domain Name by the Respondent.
4.3 On August 23, 2002, the Complainant sent a letter by courier and by email to the Respondent, demanding transfer of the disputed Domain Name and immediate removal of certain links. No reply to that letter was received and there were no changes to the links. The relevant Internet service provider and the Registrar agreed subsequently to shut down an offending link pending the finalisation of this proceeding.
5. Parties Contentions
5.1 The Complainant has submitted that:
i. the disputed Domain Name is very similar to and likely to be confused with the Complainantís WAL-MART and WAL-MART CREDIT CARD service marks and its own website at <walmartcreditcard.com>.
ii.it has rights in these service marks which predate the registration by the Respondent of the disputed Domain Name.
iii. the widespread use of the WAL-MART service mark in the Complainantís operations in many countries, in its extensive advertising and on its websites has made the mark famous which in turn means that consumers are likely to believe that any domain name incorporating the WAL-MART mark, or a close approximation of it, is associated with the Complainant.
iv. the Respondent does not have legitimate rights to the disputed Domain Name.
v. the disputed Domain Name is being used, for commercial gain, to misleadingly divert the Complainantís customers to a website with links to inappropriate sites offering pornography and annoying pop-up advertisements, which tarnishes the Complainantís image.
vi. the Respondentís use of the disputed Domain Name disrupts the Complainantís business by preventing it from using the domain name for its own business.
vii. the Respondent had constructive notice of the Complainantís rights in the marks as a result of the various trademark registrations owned by the Complainant in the Netherlands, Germany, the United States and other countries and the use of the marks in print advertising and on the Complainantís websites.
viii.the Respondentís failure to provide accurate contact information or to respond to correspondence related to this proceeding is further evidence of bad faith.
5.2 The Respondent has not filed a response to the Complaint.
6. Discussion and Findings
6.1 Paragraph 2(a) of the ICANN Rules requires the Center to employ reasonably available means calculated to achieve actual notice of a complaint to the Respondent and stipulates how this responsibility should be discharged. The Panel is satisfied on the evidence before it that the Center has duly discharged its responsibilities in terms of this paragraph.
6.2 Paragraph 5(e) of the ICANN Rules provides that if a Respondent does not submit a response to a Complaint, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the Complaint. The Panel finds that no such exceptional circumstances exist in this proceeding.
6.3 In terms of paragraph 4(a) of the ICANN Policy, the Complainant must prove that:
(i) the disputed Domain Name is 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 Name; and
(iii) the disputed Domain Name has been registered and is being used in bad faith.
6.4 The view of the Panel is that persons coming across the website of <walmartcreditcards.com> might well conclude that it is owned by or associated with the Complainant as the owner of the famous WAL-MART mark. This likelihood is enhanced by the fact that the Complainant does offer a WAL-MART credit card, utilises WAL-MART CREDIT CARD as a service mark and has a virtually identical website of its own. The Complainantís continuous use of the mark for many years and its registration in many countries clearly establishes the Complainantís right to the mark. Accordingly, the Panel finds that the domain name <walmartcreditcards.com> registered by the Respondent is confusingly similar to service marks in which the Complainant has rights.
6.5 The Complainant asserts that the Respondent has no rights to any mark consisting of the term "WAL-MART" in any country. In the absence of evidence from the Respondent to counter this, the Panel finds that the Respondent has no rights or legitimate interest in respect of the disputed Domain Name.
6.6 The fame of the WAL-MART mark and the existing registrations of the mark in numerous countries, including the Netherlands and Germany, strongly suggest that the Respondent was or should have been aware of the mark prior to registering the disputed Domain Name. The Respondentís use of a contact address at which he is not known for the purposes of the registration agreement in respect of the disputed Domain Name supports the conclusion that the registration was in bad faith. The subsequent use of a domain name incorporating the Complainantís famous marks to link to other sites has the appearance of a deliberate attempt to lead persons to believe that those sites are in some way associated with the Complainant. Given the dubious content on those sites, such a belief might well tarnish the Complainantís image in their eyes. Accordingly, the Panel finds that the disputed Domain Name was registered and is being used in bad faith.
7.1The decision of the Panel is that the domain name <walmartcreditcards.com> is confusingly similar to the WAL-MART and WAL-MART CREDIT CARD service names in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name and that the domain name was registered and is being used in bad faith.
7.2In terms of paragraph 4(i) of the ICANN Policy, the Panel requires that the registration of the domain name <walmartcreditcards.com> be transferred to the Complainant.
Dated: October 31, 2002