Complainant is Wal-Mart Stores Inc., Bentonville, Arkansas, United States of America, represented by Kirkpatrick & Lockhart Preston Gates Ellis LLP, United States of America.
Respondent is WhoisGuard Protected, of Lagos, Nigeria.
The domain name <samslcub.com> the “Disputed Domain Name” is registered with eNom Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2007. On March 21, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the Disputed Domain Name. On March 21, 2007, eNom transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on March 26, 2007. 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”), 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 the Respondent of the Complaint, and the proceedings commenced on March 27, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 17, 2007.
The Center appointed Clive L. Elliott as the sole panelist in this matter on April 26, 2007. 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 retailer. It operates approximately 1,074 Wal-Mart stores and 2,257 Wal-Mart Supercenters throughout the United States and approximately 2,760 Wal-Mart stores and Supercenters internationally.
In addition to operating Wal-Mart stores and Supercenters, Complainant owns and operates Sam’s Club stores in the United States and internationally. Through its Sam’s Club stores, it offers a wide variety of products including, food products, electronics, computers, toys, furniture, sports and fitness, automotive, and apparel. In conjunction with operating Sam’s Club stores in the United States, Complainant owns various service marks including the following:
- SAM’S CLUB, Registration No. 2,036,770, issued February 11, 1997, based on use as early as August 8, 1990;
- SAM’S CLUB DIRECT, Registration No. 1,922,419, issued September 26, 1995 based on use as early as October 1993;
- SAM’S CLUB. WE MEAN BUSINESS, Registration No. 2,027,769, issued December 31, 1996 based on use as early as January 31, 1995; and
- SAM’S CLUB PLUS, Registration No. 2,887,281, issued September 21, 2004, based on use as early as February 2003;
- the “SAM’S CLUB mark”.
The exact nature of the Respondent’s business is unclear but it seems to have in some way facilitated the use of the Dispute Domain Name as a portal or website.
It is asserted that Sam’s Club is the United States’ largest warehouse club with more than 49 million members nationwide, having started operation in Midwest City, Oklahoma in 1983. Sam’s Club has expanded into a nationwide chain of more than 570 Clubs in the United States, and more than 100 international locations in Brazil, Canada, China, Mexico and Puerto Rico.
Complainant states that it uses the SAM’S CLUB mark extensively on its Sam’s Club buildings, advertising and community support programs associated with its Sam’s Club stores. Complainant also uses the SAM’S CLUB mark in connection with a range of services, including those related to healthcare, business, personal and financial.
Additionally, Complainant operates a website at “www.samsclub.com” where consumers can shop online and obtain extensive information about Sam’s Club. It also owns and operates the domain names <sams-club.com>, <samsclub.net>, and <samsclub.biz> to link to Complainant’s “www.samsclub.com” website.
It is contended that as a result of Complainant’s extensive and exclusive use, and millions of dollars in advertising, the SAM’S CLUB mark has acquired invaluable goodwill and reputation, not only in the United States but also throughout the world.
It is said that the Disputed Domain Name displays a web page that has a search engine and various “sponsored links” for products and services that are competitive with Complainant’s products and services, including wholesale retail and retail-related services.
Upon discovering Respondent’s registration and use of the Disputed Domain Name, Complainant, through its counsel, sent Respondent a demand letter on February 20, 2007 via certified mail and electronic mail. It states that no response has been received.
Complainant objects to Respondent’s registration of the Disputed Domain Name because this registration is likely to be confused with Complainant’s SAM’S CLUB mark. It notes that its rights in its SAM’S CLUB mark are expansive and predate Respondent’s registration of the Disputed Domain Name.
It submits that there is clear similarity between the Disputed Domain Name and Complainant’s SAM’S CLUB mark as to appearance, sound, connotation and commercial impression. Respondent simply switched the order of the “C” and “L” to create a common misspelling of Complainant’s SAM’S CLUB mark.
It also submits that this is a classic case of typosquatting in which a pirate registers a domain name that is a common typographical error of a high-traffic site of a major brand owner. Typosquatting, by definition, renders a domain name confusingly similar to a complainant’s mark. See, ESPN, Inc. v. XC2, WIPO Case No. D2005-0444.
Also, Respondent is using the Disputed Domain Name as a search engine and to display “sponsored links” to (1) websites of Complainant’s competitors, (2) other commercial websites that sell goods similar to those sold at SAM’S CLUB stores and online and (3) Complainant’s “www.samsclub.com” website.
Complainant argues that Respondent’s practice of diverting consumers looking for Complainant’s products to competing websites for commercial gain is not a legitimate bona fide use of a domain name. See ESPN, Inc. v. XC2, WIPO Case No. D2005-0444.
It also points out that Respondent’s website is a link farm site and lacks any substantive content of its own. It is well-established that the operation of a link farm is not a bona fide offering of goods and services within the meaning of the UDRP, and therefore cannot confer upon Respondent any legitimate interest in the Disputed Domain Name. See, MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC, WIPO Case No. D2006-0550 (“Use of the domain name in connection with such a commercial link service is not a bona fide offering of goods or services capable of giving rise to a right or legitimate interest in the domain name.”)
Finally, it submit that by registering the Disputed Domain Name, Respondent has engaged in the practice of typosquatting. “It is well-settled that the practice of typosquatting, of itself, is evidence of the bad faith registration of a domain name.” ESPN, Inc. v. XC2, WIPO Case No. D2005-0444. The practice of typosquatting “serves no other purpose but to target . . . potential users who mistakenly or inadvertently enter an incorrectly spelled version of the [website].” Wal-Mart Stores, Inc. v. Hiroshiy, Inc., WIPO Case No. D2004-0620.
The Respondent did not reply to Complainant’s contentions. This requires the Panel to assess, as best as it can, the evidence and submissions filed by the Complainant. Likewise, in the absence of any contrary assertion or dispute those assertions and submissions are presumed to be, prima facie, correct.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following:
- The Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; and
- The Respondent has no right or legitimate interest in respect of the Domain Name; and
- The Domain Name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by paragraph 4(a)(iii) referred to above. Paragraph 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in paragraph 4(a)(ii) referred to above.
It is clear from the evidence that the SAM’S CLUB mark is a trademark in which Complainant has rights, not just in the United States of America but in certain overseas areas. Complainant has traded extensively and has registered or applied for registration of the SAM’S CLUB mark. There is clear support for the assertion that the SAM’S CLUB mark has substantial recognition and reputation.
The Disputed Domain Name is clearly a variation of the SAM’S CLUB mark. It is on its face confusingly similar to the trademark SAM’S CLUB as used by Complainant in the course of its business.
The Disputed Domain Name while not identical to is undoubtedly very close to SAM’S CLUB. Given the widespread practice of typosquatting, whereby a domain name registrant deliberately introduces slight deviations into famous marks for commercial gain, it is not difficult to conclude that the close similarity between the Complainant’s trademark/name and the Disputed Domain Name is intentional and is designed to confuse the public.
On this basis it is found that Complaint has rights in the trademark SAM’S CLUB, to which the Disputed Domain Name is confusingly similar and that this ground is made out.
It is difficult to understand why Respondent chose the Disputed Domain Name other than as a reference to SAM’S CLUB. Nor can it be envisaged, on the evidence, that SAM’S CLUB has any obvious meaning other than as an indication of origin of Complainant’s products and services.
Respondent has failed to exercise its right to respond to the allegations and put its side of the story. The Panelist concludes that on the basis of the record and in the absence of any effort to contradict Complainant’s assertions and submissions that a prima facie case is established under this ground. This appears to be a routine case of typosquatting and little more needs to be said, particularly in the face of the Respondent’s rather pointed silence.
Given the substantial exposure, registration and use of the trademark SAM’S CLUB the Panel finds that there is no indication that the Respondent has any rights or legitimate interests in respect of the Disputed Domain Name.
As such it is found that this ground is made out.
Given the substantial reputation and the undoubted goodwill in the trademark SAM’S CLUB and for the reasons given above it is difficult to see how Respondent can claim to have registered and used the Disputed Domain Name in good faith. Accordingly, it is not necessary to repeat what has been said above.
It is now well-settled that the practice of typosquatting, in and of itself, is evidence of the bad faith registration of a domain name. The cases cited by Complainant verify this.
It is thus found that this ground is made out.
Therefore, and in consideration to the Complaint’s compliance with the formal requirements for this domain dispute proceeding, to the factual evidence and legal contentions that were submitted, to the confirmation of the presence of each of the elements contemplated in paragraph 4(a)(i), (ii), and (iii) of the Policy, and on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by paragraphs 14(a) and (b) and 15 (a) of the Rules, it is found:
(1) that the Disputed Domain Name is confusingly similar to Complainant’s SAM’S CLUB trademark; and
(2) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(3) that the Domain Name has been registered and is being used in bad faith by Respondent.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <samslcub.com> be transferred to the Complainant.
Clive L. Elliott
Sole Panelist
Date: May 11, 2007