The Complainant is Wal-Mart Stores, Inc., Bentonville, Arkansas, United States of America, represented by Kenyon & Kenyon, United States of America.
The Respondent is Legal Department, Utah, United States of America.
Eight Domain Names are disputed:
<mywalmartbank.com>,
<walmartbankdirect.com>,
<walmartbankingnetwork.com>,
<walmartbankonline.com>,
<walmartbanksucks.com>,
<walmartfinancialonline.com>,
<walmartindustrialbank.com>, and
<walmartlendingnetwork.com>.
All are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2008. On August 15, 2008, the Center transmitted by email to
the Registrar a request for registrar verification in connection with the Domain Names. On August 15, 2008, 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”), 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 August 19, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 8, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 10, 2008.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on September 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.
The following facts concerning the Complainant, undisputed by the Respondent, are drawn from the Complaint, the Declaration of Assistant General Counsel Kenneth Oh, the Complainant's website at “www.walmart.com”, and the Complainant's public filings with the United States Securities and Exchange Commission.
The Complainant is a Delaware corporation headquartered in Bentonville, Arkansas, United States of America. Since 1962, the Complainant has grown from a local specialty store in Arkansas to become possibly the largest retailer in the world, with more than 6700 stores and 1.8 million employees serving over 175 million customers weekly in fourteen countries. The Complainant operates websites at “www.walmart.com”, “www.wal-mart.com”, “www.walmartstores.com”, “www.walmartfacts.com”, and “www.walmartchecks.com”.
In addition to a wide range of consumer goods, the Complainant offers a number of services to consumers. These include certain financial products, chiefly credit cards, gift cards, and money transfer services.
The Complainant owns United States of America registered trademarks numbers 1322750 for WAL-MART and design (registered February 26, 1985, claiming first use in commerce in 1962) and 1783039 for WAL-MART (registered July 20, 1993, also claiming first use in commerce in 1962), both in connection with retail department store services. The registered design mark appears to be rarely, if ever, used on the Complainant's websites at present, but the registered standard-character WAL-MART mark is prominently featured on the Complainant's websites, in advertising in multiple media, and in signage and labeling at numerous retail stores operated by the Complainant throughout the United States of America, including the State of Utah.
According to the Registrar's WHOIS database, the Domain Names were all created on March 21, 2006. The registrant for each of the Domain Names is listed only as “Legal Department”. According to DomainTools.com (printout furnished with the Complaint), more than2000 domain names are registered in that name. The Respondent's address as registrant is given as being located in Utah, United States of America. The administrative and technical contacts are both listed as “Department, Legal”, with an email address in the <trumpworldwide.com>. According to DomainTools.com, that same email address is associated with 325 other domain names. Internet users who enter that domain name in a browser are redirected to a website operated by financier Donald Trump and the Trump Organization, LLC.
In January 2008, the Complainant found that some of the Domain Names redirected Internet users to the Complainant's websites, while others redirected users to the website of a company called Western Capital at “www.westerncapitalcredit.com”. The Complainant furnished printouts from that website dated July 14, 2008. The domain name no longer resolves to a website. According to the Western Capital website in July 2008, the postal address of Western Capital is the same as the address listed for the registrant of all of the Domain Names.
The Western Capital website named a Mr. Robert Henry Paisola as the CEO of Western Capital. Mr. Paisola is also shown as the registered agent of Western Capital Financial, Inc., with the same postal address in Utah that is given as the address of the registrant of each of the Domain Names, in the online business entity database maintained by the Utah Department of Commerce. (The database also shows that the company's registration has expired due to non renewal.)
From printouts of the former Western Capital website, it appears that Western Capital, Mr. Paisola, and related ventures such as Robert Paisola Productions Inc. are or were involved in several business activities, chiefly debtor representation, motivational books and seminars, corporate training, debt collector training, counseling for persons threatened with mortgage foreclosures, restoring “reputation on the Internet”, “business turnarounds”, “skip tracing” (locating missing debtors), and a Western Capital Venture Capital Fund. The website also referred to a Western Capital Foundation, devoted to prisoner reform, with a blog on a separate website. Other websites and blogs, such as “www.mycollector.com” and “http://westerncapital.blogspot.com” (which are similarly not currently operational), referred to similar activities of Western Capital and/or Robert Paisola.
The Complainant observes that the Respondent's Domain Name registrations use an email address at <trumpworldwide.com>, while neither Western Capital nor Mr. Paisola have any apparent connection with Donald Trump or the Trump Organization, LLC. The Complainant asserts that Mr. Paisola has also deceptively used an email address at <cnnlegal.com>, appearing to refer to the CNN news network. It appears that Mr. Paisola formerly made contributions to CNN iReports and advertised himself as a “senior CNN reporter” (see, e.g., www.blogcatalog.com/blogs/robert-paisola-the-life-of-a-cnn-i-reporter.html), although hiscontributor profile no longer appears at “www.cnn.com/ireport”. According to an article in SL Weekly, a periodical published in Salt Lake City, Mr. Paisola's website at that time included a link to “CNNlegal.com” which redirected Internet users to CNN's website at “www.cnn.com” (see S. Dark, “Conman.com”, May 24, 2007, available online at http://www.slweekly.com/index.cfm?do=article.details&id=1CA7B211-2BF4-55D0-F1F6A1E782BB16DD). The article concluded as follows:
“By purchasing sound-alike domain names like CNNlegal.com, Paisola often leeches off the reputations of brand-name outfits to give himself gravitas. In a lengthy letter of complaint about Paisola to the Utah Attorney General's Office sent December 2006, a debt collector turned private investigator named John Brewington explained, ‘Mr. Paisola steals whatever appeals to him. He takes names like Trump, CNN, Sundance, IPO, Carnival Cruises and changes them to make his own. There is no mistaking his intent.' That intent, Brewington said, is to get companies to pay him in exchange for the domain names. If the owners of the material make their dissatisfaction known, Mr. Paisola posts their names on his Website in a suggestion that they did something wrong.”
The May 2007 SL Weekly article reported on Mr. Paisola's criminal convictions for fraud and child pornography in the 1990s. The article also reported on a successful 2006 federal lawsuit brought against Mr. Paisola for registering the domain name <ameripriseuniversity.com> and attempting to sell it to Ameriprise Financial, Inc. for some $3000.
The Panel notes that Mr. Paisola was also the subject of a 2007 UDRP decision, Playboy Enterprises International Inc. v. Global Media Domain Trust, WIPO Case No. D2006-1543, which ordered the transfer of three domain names incorporating the PLAYBOY mark. The Panel concluded that Mr. Paisola was the beneficial owner of these domain name registrations, identifying himself with the “Trump Worldwide” name as he did in the current proceeding:
“According to an unrefuted statement by the Complainant, Mr. Robert Paisola a/k/a TOP FORTY DOMAINS identified himself to the Complainant as the beneficial owner of all three domain names <playboyvipservices.com>, <playboyworldwide.com> and <playboyaccess.com> on or around April 17, 2006, while using various services, fictitious business names and aliases, including ‘Trump Worldwide', to shield his identity. Interestingly, again according to the information provided by the Registrar, the name ‘trumpworldwide' was also used as second level domain name by the owner of the domain names <playboyworldwide.com> and <playboyaccess.com> before December 7, 2006.”
The Domain Names in the current proceeding all presently redirect Internet users to the Complainant's website at “www.walmart.com”.
The Complainant contends that each of the Domain Names is confusingly similar to its well-known, registered WAL-MART marks, and that the Respondent has no rights or legitimate interests in the Domain Names.
The Complainant argues that the person responsible for registering and using the Domain Names (presumably Mr. Paisola or Western Capital) did so in bad faith, either to divert Internet users to the website of Western Capital for commercial gain, using the Complainant's well-established and distinctive mark, or to redirect them to the Complainant's genuine websites so that persons receiving emails from those domains would believe that they were communications legitimately associated with the Complainant. The Complainant cites other indicia of bad faith: false or incomplete identification of the registrant, registration of multiple Domain Names based on the Complainant's mark, failure to use the Domain Names in connection with a bona fide offering of goods or services, and the Respondent's history of registering other domain names that incorporate the names or trademarks of third parties.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules,
“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 applicable.”
Putting aside the relevance of the WAL-MART design mark, the Complainant unquestionably has rights in the registered WAL-MART standard-character mark.
The distinctive element of each of the Domain Names is “walmart” or “wal-mart”. The absence of the hyphen found in the mark is unlikely to eliminate confusion. See, e.g., Wal-Mart Stores, Inc. v. Tauer, WIPO Case No. D2000-1076. The addition of generic descriptive words or phrases in the Domain Names (“my”, “bank”, “direct”, “banking network”, “online”, “financial”, “industrial”, and “lending network”) does not eliminate confusing similarity with the mark, especially where these generic terms are conceivably relevant to the Complainant's online presence or financial services offerings. See, e.g., Wal-Mart Stores, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0620.
The Domain Name <walmartbanksucks.com>, including the normally derogatory term “sucks”, might conceivably have been used for a criticism website. Numerous UDRP decisions (and several judicial precedents in the United States of America, where both parties are located) have addressed the question of whether adding a derogatory word such as “sucks” to a domain name makes it unlikely that Internet users would be confused as to source or affiliation. The American Heritage Dictionary of the English Language (4th ed. 2000) defines “sucks” as a “vulgar slang” term meaning, “to be disgustingly disagreeable or offensive.” Merriam-Webster's Online Dictionary (“www.m-w.com”) similarly includes the “slang” definition of “sucks” as “to be objectionable or inadequate”. Presumably, most companies would not publish a website with such a self-denigrating domain name, and some UDRP panels have concluded that such a domain name is not, therefore, “confusingly similar” to a mark included in the domain name. See, e.g., Lockheed Martin Corporation v. Dan Parisi, WIPO Case No. D2000-1015.
However, it is not self-evident that Internet users would always take notice of the slang word following the trademark in the Domain Name and recognize its negative import. Many Internet users potentially interested in the Complainant, which operates retail units in fourteen countries, are not fluent English-speakers. See, e.g., Wachovia Corporation v. Alton Flanders, WIPO Case No. D2003-0596; Koninklijke Philips Electronics N.V. v. In Seo Kim, WIPO Case No. D2001-1195 (non-native English speakers may not recognize the negative connotations of a pejorative slang term included in a domain name). It is also possible that a trademark holder would use such a domain name wryly, perhaps seeking an opportunity to communicate with younger or disaffected consumers.
It is for such reasons that most panels have tended to find that a domain name consisting of a trademark and a negative term will be confusingly similar to the complainant's mark. See, e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 1.3, and cases cited therein. As the Wachovia and Philips panels observed, a finding of confusing similarity does not deprive a legitimate protest website from protection under the second and third elements of a Policy complaint.
In any event, significantly in the present case, there is simply no evidence that the Respondent mounts or ever mounted a criticism website at the Domain Name. Instead, the Domain Name <walmartbanksucks.com> redirects Internet users to the Complainant's own website, reinforcing the impression that it is associated with the Complainant. In these circumstances, the Panel finds that this Domain Name is confusingly similar to the Complainant's WAL-MART mark.
The Panel concludes that the first element of the Complaint is satisfied with respect to all eight Domain Names.
The Respondent (“Legal Department” or those parties that are most likely the beneficial owners of the Domain Names, Mr. Paisoli and Western Capital or other entities associated with Mr. Paisoli) do not claim a relationship with the Complainant or dispute the Complainant's assertion that it has not authorized the Respondent to use its WAL-MART mark. This establishes the Complainant's prima facie case on this element of the Complaint, and the burden shifts to the Respondent to produce evidence of its rights or legitimate interests under paragraph 4(c) of the Policy. See Admiral Insurance Services Limited v. Mr. Adam Dicker, WIPO Case No. D2005-0241; Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753.
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which the Respondent could demonstrate rights or legitimate interests in the Domain Names:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
From the available record, it does not appear that any of these circumstances apply. The Domain Names have been used only to redirect Internet users to the Complainant's own website or, formerly, to the commercial website of Western Capital, with no visible references to “Wal-Mart” in any form. The Respondent has not come forward to claim a right or legitimate interest in any of the Domain Names.
The Panel concludes, therefore, that this element of the Complaint has been established.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that indicate bad faith, including the following:
“(iv) 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.”
The Panel finds from the evidence discussed above that the registrant of the Domain Names, “Legal Department”, is most likely an alias for Robert Paisola, Western Capital, and/or other legal entities associated with Mr. Paisola.
The WAL-MART mark is well-known and long-established, especially in the United States of America where Mr. Paisola is located, and all eight Domain Names incorporate the WAL-MART mark or a hyphenless variation on it. Some of the Domain Names redirected Internet users for a time to the former Western Capital website, which fits the paradigm of the Policy, paragraph 4(b)(iv). Others redirected users to the Complainant's own website at “www.walmart.com”, as all of the Domain Names do at present. Thus, the Respondent was plainly aware of the Complainant and its mark, and the potential for attracting with the Domain Names Internet users interested in the Complainant.
Mr. Paisola has a proven history of using the trademarks of others in domain names to redirect users to the websites of the trademark owners, as is currently the case here. This may be done simply to lend credibility to his communications using email addresses that appear to be associated with well-known trademark holders. The Complainant speculates that this practice might facilitate fraudulent schemes, citing Mr. Paisola's criminal record. But there is no need to prove that such fraud has taken place to conclude that such a misleading use of well-established trademarks reflects bad faith for purposes of the Policy. As in Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the wide reputation of the Complainant's distinctive mark makes it difficult “to conceive of a plausible circumstance in which the Respondent[] could conceivably use the domain name” legitimately.
The inference of bad faith in this case is further supported by Mr. Paisola's history of domain name abuses and the fact that no fewer than eight Domain Names were registered that incorporated the Complainant's mark – Domain Names in which the Respondent had no apparent rights or legitimate interests, as discussed above. Moreover, the Respondent furnished a false or incomplete identification of the registrant (“Legal Department”). It is telling, as well, that the Respondent has not come forward in this proceeding to offer an explanation for the registration and use of multiple Domain Names incorporating the Complainant's mark.
The Panel concludes that the third element of the UDRP Complaint is supported by the record in this proceeding.
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 Names, <mywalmartbank.com>, <walmartbankdirect.com>, <walmartbankingnetwork.com>, <walmartbankonline.com>, <walmartbanksucks.com>, <walmartfinancialonline.com>, <walmartindustrialbank.com> and <walmartlendingnetwork.com>, be transferred to the Complainant.
W. Scott Blackmer
Sole Panelist
Date: October 7, 2008