WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wal-Mart Stores, Inc. v. OUR Walmart
Case No. D2011-0783
1. The Parties
Complainant is Wal-Mart Stores, Inc. of Bentonville, Arkansas, United States of America, represented by Drinker, Biddle & Reath, LLP, United States of America.
Respondent is OUR Walmart of Washington, D.C., United States of America.
2. The Domain Name and Registrar
The disputed domain name <ourwalmart.org> (the “Domain Name”) is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2011. On May 5, 2011, the Center transmitted by email to GoDaddy.com, Inc. (the “Registrar “) a request for registrar verification in connection with the Domain Name. On May 6, 2011, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 14, 2011.
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” or “UDRP”), 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 May 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 6, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 8, 2011.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on June 29, 2011. 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
Complainant Wal-Mart Stores, Inc. is the largest retailer in the world. Established in 1962, Complainant sales for the 2010 fiscal year totaled over USD 400 billion while serving more than 175 million customers weekly.
Complainant is the owner of current United States trademark rights and registrations on various iterations of its name including WAL-MART and WALMART. Additionally, Complainant holds numerous foreign trademark registrations. Complainant’s WALMART mark is famous and has obtained extensive fame and reputation in the United States and worldwide.
Complainant holds the registrations for various domain names, which it uses to host its websites for consumer information and commercial interactions. These include <walmart.com> (registered in 1995), <wal-mart.com> and various iterations including descriptive terms that indicate the specific services or information offered, such as <walmartstore.com>, <walmartstores.com>, <mywalmart.com> and <walmartcommunity.com>.
Respondent registered the Domain Name on December 13, 2010.
Respondent has no license from, or other affiliation with, Complainant.
5. Parties’ Contentions
(1) Respondent’s Domain Name is Confusingly Similar to Complainant’s Mark
Complainant submits that Respondent’s Domain Name is confusingly similar to Complainant’s WALMART trademark in violation of the Policy, paragraph 4(a)(i). Respondent’s Domain Name is confusingly similar to the WALMART mark, with the differences being the addition of the gTLD “.org” and the inclusion of the word “our”. The Domain Name wholly incorporates Complainant’s WALMART mark. The TLD does not factor into the analysis, and the addition of a non-distinctive, descriptive term such as “our” does not avoid a finding of confusing similarity. Here confusion is enhanced by the fact that Complainant maintains a website at “www.mywalmart.com”. Further, the Domain Name is likely to be understood by Complainant’s associates and employees, and the public, as a marketing campaign or source of information operated by Complainant.
(2) Respondent has No Rights or Legitimate Interests in the Domain Name
Complainant asserts that Respondent has no rights in the WALMART mark and is not making noncommercial or fair use of the Domain Name. Complainant alleges that Respondent’s website resolving at the Domain Name is operated and maintained by the United Food and Commercial Workers International Union (“UFCW”). Neither Respondent nor the UFCW are affiliated with, sanctioned or sponsored by Complainant, and Complainant has not granted the Respondent or UFCW any license or permission to use the WALMART mark in a domain name or in any other manner. Complainant alleges that Respondent (and/or UFCW) has deliberately sought to create confusion, creating the false impression that Respondent is somehow affiliated with or sanctioned or sponsored by Complainant.
Complainant contends that regardless of the legality and protections afforded Respondent in its attempt to unionize Complainant’s associates, these efforts neither permit Respondent to use the WALMART mark as part of its confusing Domain Name, nor does Respondent’s incorporation of the WALMART mark into its organizational name allow it to claim rights in that mark as this famous mark is owned by Complainant. Further, it is inappropriate and untenable that, among the largely infinite variety of domain names Respondent could have chosen, Respondent seeks to use a confusing domain name in furtherance of an overall, bad faith attempt to create and capitalize on confusion. In particular, Complainant alleges that Respondent’s use of the Domain Name is a purposeful attempt to create and foster a false affiliation, association, and/or connection to Complainant to deceive Complainant’s employees and customers into believing that Respondent’s mission is promoted or sponsored by Complainant. This is compounded by use of the prefix “our” and the close mimicking of Complainant’s <mywalmart.com> domain name. Such misleading usage, even by protest sites, has been deemed inappropriate.
In addition, Respondent’s request for payment from Complainant’s associates and employees – as evidenced by its website linked to the Domain Name – is prima facie evidence that Respondent’s use of Complainant’s WALMART mark is illegitimate commercial use.
Complainant contends that because its WALMART mark has become well-known through extensive promotion and use since 1962, there is a presumption that no one else has rights or legitimate interests to it. Given consumers’ knowledge and recognition of Complainant’s famous WALMART mark, Respondent cannot overcome the presumption that it lacks a legitimate right and interest in the Domain Name. Accordingly, Complainant contends that the foregoing facts lead to an overwhelming presumption that Respondent has no legitimate interest in the Domain Name and the burden thereby shifts to Respondent.
(3) Respondent Registered and is Using the Domain Name in Bad Faith
Complainant states that the WALMART trademark is famous and distinctive and has been used by one of the largest corporations in the world for nearly 50 years. This fame and Complainant’s federal trademark registrations serve as constructive notice to Respondent of Complainant’s rights in its WALMART mark. Further, it is implausible that Respondent did not have actual knowledge of Complainant’s mark at the time it registered the Domain Name, given that Respondent specifically chose the Domain Name in order to create the false impression of affiliation, association or sponsorship by Complainant. At least one other Panel has found that it is inconceivable that the respondent in that case could have been unaware of the existence of Complainant’s WALMART trademarks and therefore the disputed domain names there could only have been registered in bad faith. Here, Complainant maintains that registration of the Domain Name incorporating Complainant’s WALMART mark in its entirety is, by itself, evidence of bad faith.
In addition, Complainant asserts that Respondent has intentionally attempted to attract Internet users and Complainant’s associates, employees and customers to its website for commercial gain by creating a likelihood of confusion with the WALMART mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website and its membership services for payment. Respondent has chosen a domain name that purposefully deceives and confuses. By unlawfully capitalizing on the name recognition and goodwill of the WALMART mark for commercial gain, Respondent registered and has been using the Domain Name in bad faith.
Respondent includes an “after-the-fact disclaimer” found at the very bottom of its website, but Complainant urges that this is not enough to avoid confusion, especially since there is trickery in attracting users to Respondent’s website and Respondent repeatedly uses the WALMART mark throughout its website and refers to itself as “ Our Walmart” Moreover, the verbiage and representations made on Respondent’s site improperly indicate that Respondent is some type of official group or organization of Walmart employees or owners. Complainant contends that Respondent’s actions are done under the guise that Respondent is affiliated with, sanctioned or sponsored by Complainant, and this pattern is facilitated by the unauthorized use of the famous WALMART mark in the Domain Name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel must determine whether the Domain Name is “identical or confusingly similar to a trademark or service mark in which the Complainant has rights” in accordance with paragraph (4)(a)(i) of the Policy.
The Panel finds that the Domain Name incorporates in full the Complainant's famous WALMART trademark. The Panel further finds that the added word “our” in the Domain Name does nothing to avoid confusion but instead would be perceived by many Internet users, including Complainant’s associates and employees, as descriptive of a website where they could find additional information about Complainant and is quite similar to Complainant’s <mywalmart.com> domain name. Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph (4)(a)(i) of the Policy. See, for example, Wal-Mart Stores, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0620 (transferring <walmartbenfits.com>); General Electric Company v. Recruiters, WIPO Case No. D2007-0584 (transferring <ge-recruiting.com>).
This Panel therefore finds that the Domain Name is confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy.
B. Rights or Legitimate Interests
As Complainant indicates above, it has not authorized the use by Respondent of the WALMART trademark in the Domain Name or otherwise. Neither Respondent nor the UFCW are affiliated with, sanctioned or sponsored by Complainant. Indeed, the Panel finds that because the WALMART mark has become famous and well-known through extensive promotion and use since 1962, there is a strong presumption that no one besides Complainant has any rights or legitimate interests to use it.
Complainant has alleged that Respondent (and/or UFCW) has deliberately sought to create confusion through use of the Domain Name in order to deceive Complainant’s associates, employees and customers into believing that Respondent’s mission is promoted, authorized or sponsored by the Complainant. While the Policy provides guidance to respondents on how to demonstrate rights or legitimate interests in a domain name, Respondent here did not reply to the Complaint. Consequently, no evidence has been presented to the Panel that might support a claim of Respondents' rights or legitimate interests in the Domain Name, particularly as it confusingly incorporates the Complainant’s well-known WALMART trademark in its entirety along with the descriptive prefix “our’.
Therefore, the Panel finds that Complainant here made a prima facie showing of Respondent’s lack of rights or legitimate interest to the Domain Name, which has not been answered by the Respondent. The Panel thus finds that the Complainant has established the second element of the Policy.
C. Registered and Used in Bad Faith
Complainant's marks are famous and have been for many years, including in the United States where Respondent's address is listed. There is nothing in this case to suggest that Respondent was not fully aware of Complainant's marks at the time Respondent registered the Domain Name, nor did Respondent offer any evidence to that effect. Instead, it is quite clear that Respondent registered the Domain Name precisely because it did incorporate Complainant’s famous WALMART mark. See Wal-Mart Stores, Inc. v. Po Ser, WIPO Case No. D2009-1450.
There are several ways in which a complainant can demonstrate that a domain name was registered and used in bad faith. Here, Complainant has submitted unrebutted evidence that, pursuant to paragraph (4)(b)(iv) of the Policy, Respondent’s use of the Domain Name constitutes an intentional attempt, for commercial gain, to attract Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's WALMART marks as to source, sponsorship, affiliation or endorsement.
Therefore, the Panel finds that Respondent registered and used the Domain Name in bad faith in accordance with paragraph (4)(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <ourwalmart.org>, be transferred to Complainant.
Christopher S. Gibson
Dated: July 18, 2011