WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Wal-Mart Stores, Inc. v John Zuccarini d/b/a RaveClub Berlin

Case No. D2002-0950

 

1. The Parties

The Complainant in this proceeding is Wal-Mart Stores, Inc. ("the Complainant"), a corporation based in Bentonville, Arkansas, United States of America.

The Respondent is RaveClub Berlin ("the Respondent"), whose status is unknown but who appears as registrant of the subject domain name with a mailing address in Cherry Hill, New Jersey, United States of America.

The Complainant asserts that RaveClub Berlin is merely a trading style of an individual, John Zuccarini. This fact was proved by unchallenged evidence in AT&T Corp. v John Zuccarini d/b/a RaveClub Berlin (Case D2002-0666). The Respondent has not denied the assertion in the present proceeding, either, and the Panelist is satisfied that the subject domain name is controlled by John Zuccarini. References to "the Respondent" therefore refer to RaveClub Berlin and John Zuccarini, individually and collectively.

 

2. The Domain Name and Registrar

The domain name at issue is <samclubcredit.com> ("the Domain Name") and the Registrar is CSL GmbH, trading as Joker.com ("the Registrar"), Rathausufer 16, 20213 Dusseldorf, Germany.

 

3. Procedural History

The WIPO Arbitration and Mediation Center ("the Center") received the Complaint by e-mail on October 14, 2002, and in hard copy on October 18, 2002. On October 15, 2002, the Center received an amendment to the Complaint in the form of additional submissions. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules"). The Complainant made the required payment to the Center.

The formal date of the commencement of this administrative proceeding is October 22, 2002.

On 17 October 2002, the Center transmitted via e-mail to the Registrar a request for registrar verification in connection with this case and on October 22, 2002, the Registar transmitted by e-mail to the Center a verification response confirming that the registrant is RaveClub Berlin and that the contact for both administrative and billing purposes is the same.

Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on October 22, 2002, to the Respondent via e-mail this Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by November 11, 2002. Also on October 22, 2002, the Center transmitted by mail copies of the foregoing documents to the Respondent at its contact addresses of 600 Haddonfield Road, Cherry Hill, New Jersey 08034, United States of America, and Free Speech Internet, 43376 Jonsered, Amstelveen 1170 AC, Netherlands.

No Response was received from the Respondent by the due date of November 11, 2002. On the same day, Notice of Respondent Default was sent to the Complainant and to the Respondent using the same contact details and methods as were used for the Notification of Complaint and Commencement of the Administrative Proceeding. No reply by the Respondent to the Notification of Respondent Default was received.

Having received on December 12, 2002, Ms Angela Foxís Declaration of Impartiality and Independence and her Statement of Acceptance, the Center transmitted to the parties on December 16, 2002, a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Ms Angela Fox was formally appointed as the Sole Panelist. The Projected Decision Date was December 30, 2002. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.

Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under para. 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondents". Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of any Response from the Respondent.

 

4. Factual background

The Complainant is a retailer. In this field, it has achieved great commercial success and has become in fact the largest retailer in the world. Its reach extends throughout the United States and beyond, including to Mexico and Germany. The Complainant is best known for its prolific Wal-Mart chain of discount stores, but it also owns the Samís Club chain of discount warehouse stores.

The Samís Club chain is not as ubiquitous as Wal-Mart, but in the United States at least, its network is vast. The Complaint states that there are currently 517 Samís Club stores in the United States alone, with another 64 in other countries including Brazil, China, Mexico and Puerto Rico[1]. The Complaint asserts that there are six Samís Club stores within 25 miles of the Respondentís recorded address, and 11 stores within 50 miles of it. The Complainant asserts that it owns trademark registrations for SAMíS CLUB in 46 countries, and provides details of its United States federal trademark registration 2036770 for SAMíS CLUB, registered on February 11, 1997, for retail department store services. The date of first use is given as 1990.

Like many retail chains, the Complainant offers credit facilities to its customers. Samís Club store credit facilities are provided through the Complainantís credit partner, General Electric. The Complaint states that these credit facilities are promoted under the name SAMíS CLUB CREDIT. Accounts can be opened and checked on a website reached via the domain name <samsclubcredit.com> which was registered on July 19, 2000, and stands in the name of General Electric Company, of Princeton, New Jersey, United States of America.

The Respondent registered the Domain Name <samclubcredit.com> on July 3, 2001. The Complainant has exhibited copies of the pages accessed via this Domain Name at Appendix H to the Complaint. These pages bear advertisements unrelated to the Complainant and a prominent link to <Hanky-Panky-college.com>. The notice advertising the linked site leaves little doubt about the explicit nature of its contents.

The Complaint does not identify precisely when the Complainant first learned of the Respondentís registration. However, the Complaint does exhibit at Appendix J a copy of a letter from the Complainantís attorneys to the Respondent dated October 7, 2002, a little over a year after the Domain Name was registered. That letter demanded the immediate removal of pornographic links from the site accessed via the Domain Name and the transfer of the Domain Name to the Complainant. No reply was received to this letter, which was returned marked, "Company or person unknown." On October 14, 2002, the Complainant launched this proceeding.

 

5. The Partiesí Contentions

5.1. The Complainant

The Complainant contends that it has rights in the trademark SAMíS CLUB acquired through its United States trademark registration 2036770, and through its extensive use and promotion of the mark which has made it well known. The Complainant argues that the Domain Name is confusingly similar to the SAMíS CLUB mark, since the first two words of the Domain Name <samclubcredit.com> are nearly identical to the Complainantís mark and the nondistinctive word "credit" does nothing which can distinguish them. The Complainant looks to several panel decisions for support; the most relevant of these are discussed below.

The Complainant further contends that it has rights in the trademark SAMíS CLUB CREDIT, acquired through use in respect of retail store credit services, and that the Domain Name is confusingly similar to this mark, as well. A copy of the page accessed through the General Electric <samsclubcredit.com> site is attached as Appendix F to the Complaint, showing presumably authorised references to "Samís Club Online Credit Center," "Samís Club Credit Account," "Samís Club Personal Credit Account" and "Samís Club Business Credit Account." The Complaint does not state for how long SAMíS CLUB CREDIT has been in use, nor does it provide any further information on the extent of activities under and promotion of the mark in that form.

The Complainant also asserts that the Domain Name is confusingly similar to "Wal-Martís legitimate website at "www.samsclubcredit.com"." The Complainant additionally refers to its registrations for the domain names <samsclub.com> and <sams-club.com>, which date from 1995 and 1998 respectively, and stand in the name of the Complainant.

The Complainant asserts that the Respondent has no rights or legitimate interests in the Domain Name or in the trademark SAMíS CLUB in any country.

Finally, the Complainant contends that the Respondent registered, and is using, the Domain Name in bad faith. The Complainant argues that the Respondent had actual notice of the Complainantís rights prior to registration of the Domain Name, since the Samís Club chain is well-known in the United States and is present in at least six locations in the Respondentís immediate postal area. The Complainant further argues that the Respondent had constructive notice of the Complainantís earlier rights through its United States trademark registration and through the Complainantís routine use of the ® symbol next to the SAMíS CLUB trademark in print advertising and on the Internet.

The Complainant asserts that the Domain Name is a clear case of "typosquatting," devised to misdirect Internet traffic away from the genuine Samís Club credit site by taking advantage of the common typographical error of omitting a letter. In support of this, the Complainant points to the panel decision in AT&T Corp. v John Zuccarini d/b/a RaveClub Berlin (Case D2002-0666), which quoted the results of a recent United States Federal Trade Commission investigation which found that RaveClub Berlin is simply a trading style of John Zuccarini, an individual notorious for the abusive registration of domain names. Case D2002-0666 lists some of the many cases in which Zuccarini has been a respondent under the UDRP. It also notes the recent proceedings in United States Federal District Court against Zuccarini, who admitted registering deliberate misspellings of third-party trademarks as domain names in order to divert Internet traffic to linked sites, whose operators in turn remunerated him.

The Complainant contends that the Respondentís bad faith is further evidenced by its having provided apparently false registration contact details, as it also did in Case D2002-0666.

5.2. The Respondent

The Respondent did not respond to the case against it and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14 (a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondentís default.

 

6. Discussion and Findings

Under Paragraph 4(a) of the Policy, a Complainant can only succeed in an administrative proceeding under the Policy if the Panel finds that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests to the domain name;

(iii) the domain name has been registered and is being used in bad faith.

All three elements must be present before a Complainant can succeed in an administrative proceeding under the Policy.

6.1. Identical or Confusingly Similar to Complainantís Mark

The Complainant is the owner of a United States trademark registration for SAMíS CLUB which predates the registration of the Domain Name. Apart from the apostrophe, which cannot be replicated in domain names, the only differences between the registered mark and the Domain Name are the omission of the possessive "s" and the addition of the word "credit." The omission of the second "s" is a common typographical error and its absence from the middle of the Domain Name is not visually prominent. The chief question, therefore, is whether the presence of the word "credit" is enough to avoid confusing similarity.

The Complainant argues that it is not, and calls in aid a number of previous panel decisions where descriptive or so-called "generic" words or terms have been disregarded in overall comparisons with earlier trademarks. In Wal-Mart Stores, Inc. v Kenneth E. Crews (Case D2000-0580), for example, <superwal-mart.com> was found to be confusingly similar to WAL-MART despite its prefix, because "super" simply denoted size. The Panel held that size was a relevant and often promoted feature in the complainantís field of retail department stores, and that the prefix "super" could not, therefore, avoid confusing similarity.

The Complainant also referred to Louis Vuitton Malletier v Enrico Villa (Case D2000-0721) concerning <louisvuittoncup.2003.org>, where 2003 was disregarded as nondistinguishing generic matter when coupled with the name of a recurring sporting event. Likewise, in Heineken Brouwerijen BV v Mark Lott (Case D2000-1487), the prefix "planet" was not sufficient to distinguish <planetheineken.com> from HEINEKEN since it simply alluded to a site devoted to HEINEKEN products.

This Panel agrees that confusing similarity is likely where a mark is reproduced or closely imitated in a domain name, and is accompanied only by matter which is descriptive in a way clearly relevant to the complainantís business or reputation. In this case, the word "credit" denotes credit services, which are commonly offered by retail chains of the Samís Club variety. "Credit" therefore does not add any feature that would steer an Internet user away from assuming a connection with the Complainant, and indeed its presence encourages the presumption of such a link. The Panel finds that the Domain Name is confusingly similar to the Complainantís earlier registered SAMíS CLUB mark.

In taking this decision, the Panel notes that the addition of the word "credit" to trademarks in the financial services arena has also been held to be nondistinguishing (see Wachovia Corporation v Organized Crime, Inc., Case D2002-0362 and Hang Sen Bank Limited v Websen Inc., Case D2000-0651).

The Panel was not able to come to any firm view on whether the Complainant owns common law rights in the composite mark SAMíS CLUB CREDIT based on the evidence provided in the Complaint, which was limited on the length and extent of use and promotion of that composite mark. However, as a result of the finding of confusing similarity with the registered mark SAMíS CLUB, it is not necessary to rule on whether the Domain Name is confusingly similar to the unregistered mark, SAMíS CLUB CREDIT, or whether the earlier domain names <samsclubcredit.com>, <samsclub.com> and <sams-club.com> can be said to constitute earlier marks in which the Complainant has rights, or whether the Complainant can be said to have rights in the domain name <samsclubcredit.com> despite its ownership by General Electric.

6.2. Respondent Has No Rights or Legitimate Interests in Domain Name

There is nothing to suggest that the Respondent has any rights or legitimate interests in the Domain Name. The Respondent has not challenged the assertion that it has none.

The Panel deems that the Complainant has established an arguable case on this point and that the burden of proof has thus shifted to the Respondent to show that there is a possible right or legitimate interest which justifies his registration. The Respondent has not discharged this burden. The Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.

6.3. Registration and Use of Domain Name in Bad Faith

The Panel accepts that the Complainantís Samís Club stores have a very substantial commercial presence in the United States. It is most unlikely, in light of that presence and reputation, that the Respondent registered the Domain Name without actual knowledge of the stores and, indeed, of the fact that they were likely to offer a credit facility in common with other retail chains. The Complainant contends that even if there was no actual knowledge, there was constructive knowledge arising from the Complainantís trademark registration. This Panelist does not accept that, as a general principle, the mere existence of a prior, similar trademark registration gives rise to a presumption that a respondent ought to have known about it. Nevertheless, in light of the strong and unrebutted likelihood that the Respondent had actual notice of the Complainantís registered mark, resolution of the question of constructive notice is not necessary to decide this dispute.

The Respondentís almost certain knowledge of the Complainantís activities under the SAMíS CLUB mark in the retail and credit sector and the utter absence of any explanation for its actions lead almost inexorably to the conclusion that they were in bad faith. That the Respondent was found to have practised such bad faith before, and repeatedly, only strengthens that conviction. The Panel finds that the Complainant has offered persuasive evidence in the form of its reference to AT&T Corp. v John Zuccarini d/b/a RaveClub Berlin (Case D2002-0666) that the Respondent is a habitual cybersquatter who deliberately and routinely registers domain names which are common typographical errors for well-known trademarks, with the intent to profit from the Internet traffic consequently misled. The Respondentís intentions are made yet more suspect by its failure to provide accurate registrant contact details, in this case as in Case D2002-0666.

In the view of this Panelist, the registration of this Domain Name was made with knowledge of the Complainantís reputation and with the intent to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainantís mark. That such confusion would in most cases be dispelled upon viewing the Respondentís site is immaterial. Once the site has been accessed, the deception is complete and the Respondent has gained an ignominious profit at the expense of those who are misled to unsolicited and offensive materials. The Panelist finds that the Complainant has adequately shown registration and use of the Domain Name by the Respondent in bad faith.

 

7. Decision

The Panelist finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the Domain Name, and that the Respondent has registered and is using the Domain Name in bad faith. The Panelist requires that the Domain Name <samclubcredit.com> be transferred to the Complainant.

 


 

Angela Fox
Sole Panelist

Date: December 27, 2002

 


1. There was a discrepancy between the Complaint, which identified 517 Sam's Club stores in the United States as of October 2002, and Appendix D to the Complaint, which identified only 500 at the end of the 2002 fiscal year. The 17 unaccounted for in the end-of-fiscal-year total could have been opened between February and October 2002, but the Complaint is silent on this. In the event, it makes no difference to the finding in this case.