WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wal-Mart Stores Inc. v. Amar Botle
Case No. D2008-0419
1. The Parties
Complainant is Wal-Mart Stores Inc., c/o Kenneth H. Oh, Bentonville, Arkansas, United States of America,, represented by Haynes and Boone, LLP, United States of America.
Respondent is Amar Botle,Maharashtra State, India.
2. The Domain Name and Registrar
The disputed domain name <walmartindia.net> (the “Disputed Domain Name”) is registered with Melbourne IT trading as Internet Names Worldwide (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2008. On March 19, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 20, 2008, the Registrar transmitted by email to the Center its verification response confirming that 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”), 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 March 31, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 20, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 21, 2008.
The Center appointed Mark Ming-Jen Yang as the sole panelist in this matter on April 24, 2008. 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
Respondent registered the Disputed Domain Name on December 16, 2005.
Complainant uses the WAL-MART mark and variations (collectively herein, “WAL-MART Trademark”) and has the following registrations in the United States of America in association with retail department store services: (1) No. 1,322,750, registered February 26, 1985, based on use as early as July 1, 1962; (2) No. 1,783,039, registered July 20, 1993, based on use as early as July 1, 1962; and (3) No. 2,891,003, registered October 5, 2004, based on use as early as March 1992.
Complainant has the following registrations in India for its WAL-MART Trademark: (1) No. 928856, registered February 6, 2007, and covering “stationery, paper & plastic bags, printed paper signs, printed forms, advertising supplements to newspapers for general circulation, privately circulated newspapers, packaging, price tags”; and (2) No. 1254210, registered December 23, 2005, and covering “the bringing together for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods in a supermarket, a retail pharmacy, a general merchandise internet web site, and in a retail department store.” Applications for these registrations were filed at least several years before Respondent registered the Disputed Domain Name.
5. Parties’ Contentions
Complainant contends that the Disputed Domain Name is confusingly similar with the WAL-MART Trademark in which it has rights, that Respondent has no rights or legitimate interests in the Disputed Domain Name, and that Respondent registered and uses the Disputed Domain Name in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
One requirement of fundamental due process is that a respondent has notice of proceedings that may substantially affect its rights. The Policy, Rules and Supplemental Rules establish procedures intended to assure that a respondent is given adequate notice of proceedings commenced against it, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of Respondent to furnish a Response to the Complaint is not due to any omission by the Center. There is sufficient evidence in the case file for the Panel to conclude that the Center discharged its obligations under Rules, paragraph 2(a) (see Section 3, Procedural History, supra).
In case of default, under paragraph 14(a) of the Rules, “the Panel shall proceed to a decision on the complaint”, and under paragraph 14(b) of the Rules, “the Panel shall draw such inferences [from the default] as it considers appropriate”. Furthermore, paragraph 15(a) of the Rules provides that “a Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems appropriate”. Since Respondent has not submitted any evidence, the Panel must render its decision on the basis of the uncontroverted evidence supplied by Complainant.
To succeed in accordance with paragraph 4(a) of the Policy, Complainant must meet three requirements that will be considered in turn below.
A. Identical or Confusingly Similar
Complainant contends that it has rights in the WAL-MART Trademark and that the Disputed Domain Name is confusingly similar thereto.
In particular, the Panel accepts Complainant’s contentions, set out next, as reasoned and as supported by its evidence.
Complainant contends that it is, “…the world’s largest retailer, as well as one of the fifteen largest companies in the world, with more than $370 billion in sales last fiscal year. Wal-Mart operates approximately more than 3,500 stores under the WAL-MART mark. Through both retail and online stores, the company offers a wide variety of products and services in the apparel, food, electronics, toys, sports, fitness, books, music, furniture, pharmacy, home products, automotive, financial, and other industries…. Complainant makes further use of the WAL-MART mark and variations thereof on the Internet, such as in the domain names and website content for Complainant’s websites located at “www.walmart.com”, “www.wal-martcorporate.com”, and “www.walmartstores.com”. Accordingly, Complainant contends that its WAL-MART Trademark is well known in the international marketplace (and in particular, in the United States of America and India) among consumers of its retail department stores services.
In addition to common law, marketplace rights, Complainant has the trademark registrations (listed in section 4, Factual Background, supra), and in particular, the legal rights flowing therefrom.
Complainant contends that the Disputed Domain Name is identical or confusingly similar to its WAL-MART Trademark. The dominant and distinctive component of the Disputed Domain Name is “wal-mart”, which is identical to Complainant’s WAL-MART Trademark. The addition of the generic geographical indicator, “india” does not make the dominant element “wal-mart” less distinctive. The ending “.com” is a generic top level domain, which is not sufficient to render a domain name dissimilar or to prevent consumer confusion.
As indicated above, the Panel accepts Complainant’s contentions.
The Panel concludes that the first requirement of the Policy is met.
B. Rights or Legitimate Interests
Complainant contends (and the Panel accepts as uncontroverted and convincing) that Respondent has no rights or legitimate interests in the Disputed Domain Name.
Complainant contends the following:
(a) The Disputed Domain Name resolves to a page identified as being “Under Construction” and having some links to some pages promoting Yahoo!.
(b) Respondent has not, since it registered the Disputed Domain Name, made any use of it that was for a bona fide offering of services, or was a legitimate non-commercial or a fair use.
(c) The Disputed Domain Name does not consist of Respondent’s legal name or a name by which it is otherwise commonly identified.
(d) Complainant did not consent to or permit Respondent’s use of its WAL-MART Trademark in any way.
(e) Respondent registered the Disputed Domain Name shortly after the press reported Complainant’s interest in expanding its retail department store services to India. Complainant subsequently engaged Respondent in communication, and Respondent requested monetary consideration from Complainant (phrased variously as “green bucks”, “reimbursement”, adequate compensation” and “acceptable offer”) for transferring the Disputed Domain Name to Complainant.
Respondent has provided no arguments or evidence of rights or legitimate interests to counter Complainant’s contentions on this issue. By virtue of the legal rights in the WAL-MART Trademark (and in particular, those provided by its trademark registrations listed in Section 4, Factual Background, supra), Complainant convincingly argues that Respondent has no rights or legitimate interests in the Disputed Domain Name. The Panel, especially in the absence of any response from Respondent, considers that the circumstances described in paragraph 4(c) of the Policy, of proof of rights or legitimate interests by Respondent in the Disputed Domain Name, do not exist either. Quite the opposite, the communications, actions and timing described in Complainant’s contention Section 6(B)(e) above, tend to deny any rights or legitimate interests of Respondent.
The Panel concludes that the second requirement of the Policy is met.
C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and uses the Disputed Domain Name in bad faith.
Complainant contends that when Respondent registered the Disputed Domain Name, it had at least constructive knowledge of the WAL-MART Mark by virtue of the aforesaid trade-mark registrations in the United States of America and in its country of domicile, India. Furthermore, Respondent registered the Disputed Domain Name shortly after the press reported Complainant’s interest in expanding its retail department store services to India. The Panel finds that Respondent registered the Disputed Domain Name in bad faith.
Complainant contends that Respondent’s “Under Construction” site is evidence of bad faith use of the Disputed Domain Name. The Panel agrees, and finds persuasive the thinking in Société des Produits Nestlé S.A. v. Cook, WIPO Case No. D2002-0118: “The fact that Respondent hold “passive” websites under the contested domain names gives the wrong impression to the users of the Internet, that the new company does not have a current presence on this media, a behaviour that is able to create confusion on the market and that prevents the Complainant from reflecting the natural combination of the marks in a corresponding domain name. With regard to the present case, it is also important to state that the mere holding of a domain name that is identical or confusingly similar to a trademark belonging to someone else, in itself can be considered disrupting to the business of the rightholder. The Panel agrees that it is within the scope of the rights conferred to a trademark to regard “passive use” as “use”, cf. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and several other subsequent decisions.”
The Panel accepts Complainant’s contentions, set out above, as reasoned and as supported by its evidence.
Although the Panel does not consider it necessary to consider Complainant’s contentions on Paragraph 4(b)(i) of the Policy for rendering a conclusion on the third requirement, the Panel would likely consider the communications, actions and timing described in Complainant’s contention Section 6(B)(e) above, to support a finding of bad faith use.
The Panel concludes that the third requirement of the Policy is met.
For all 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 <walmartindia.net> be transferred to Complainant.
Mark Ming-Jen Yang
Dated: May 6, 2008