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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wal-Mart Stores, Inc. v. Moniker Privacy Services / domain admin GREAT ECHO LTD.

Case No. D2011-2320

1. The Parties

The Complainant is Wal-Mart Stores, Inc. of Bentonville, Arkansas, United States of America, represented by FairWinds Partners, LLC, United States of America.

The Respondent is Moniker Privacy Services of Pompano Beach, Florida, United States and domain admin GREAT ECHO LTD of Wanchai, Hong Kong, SAR of China.

2. The Domain Name and Registrar

The disputed domain name <walmarthiring.com> is registered with Moniker Online Services, LLC (the Registrar).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 30, 2011. On January 3, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 4, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 9, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 9, 2012.

The Center verified that the Complaint together with amended 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 January 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 30, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 31, 2012.

The Center appointed Desmond J. Ryan as the sole panelist in this matter on February 7, 2012. 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

The Complainant is one of the world’s largest retailers and is well-known internationally for operating department stores in the United States and abroad. The Complainant currently operates 8,970 stores and reported revenue of USD 421.8 billion last financial year. In 2011, Interbrand recognized the Complainant’s Walmart brand as the top retail brand of the year, valued at USD 142.03 billion.

The Complainant is the owner of United States trademark registrations on several iterations of its name, including: WAL-MART and design registered on February 26, 1985 in relation to retail department store services; WAL-MART registered on July 20, 1993 in relation to retail department store services; and WALMART and device registered on April 28, 2009 in relation to, among other things, online retail store services (the “WALMART trademarks”). According to the Complainant, the WALMART trademarks are well-known worldwide.

The Complainant holds the registration for several domain names, including <walmart.com>, <wal-mart.com> and <mywalmart.com>. The Complainant hosts its various websites for consumer information and interactions. Between 2006 and 2010, the Complainant’s websites generated net sales of over USD 1.8 trillion. The Complainant has been the successful complainant in over 80 complaints filed under the Policy.

The disputed domain name was registered on May 28, 2009. On December 12, 2011, the Complainant emailed the Respondent demanding that the Respondent cease use of the disputed domain name and transfer it to the Complainant. In reply on December 27, 2011, the Respondent offered to sell the disputed domain name to the Complainant for USD 5,000.

As at December 29, 2011, the disputed domain name redirected to a website at “www.surveytakeinternet.com” (the “website”) which offers prizes in exchange for visitors’ disclosure of personal information.

5. Parties’ Contentions

A. Complainant

The Complainant contends:

(1) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s well-known WALMART trademarks. The disputed domain name consists of the entire WALMART mark and the generic word, “hiring”. The Complainant contends that the disputed domain name is likely to mislead Internet users into believing that there is a relationship of source, sponsorship, affiliation or endorsement between the Complainant and the website. The Complainant submits that the addition of a generic word to the Complainant’s WALMART trademark is insufficient to distinguish the disputed domain name from the Complainant’s mark.

(2) The Respondent does not have any rights or legitimate interests in respect of disputed domain name.

The Complainant submits that the Respondent does not have any rights or legitimate interests in the disputed domain name on the basis that:

(a) The Respondent’s use of the website is not a bona fide offering of goods or services. The disputed domain name diverts the Complainant’s potential customers to third-party websites which contain information-harvesting prize and gift card offers.

(b) The Respondent is not commonly known by the disputed domain name or the name WALMART.

(c) The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. Instead, the Respondent is using the disputed domain name to confuse and mislead consumers into thinking they are visiting the Complainant’s website. The Respondent’s use of the disputed domain name has tarnished the Complainant’s WALMART trademarks by diminishing consumer’s capacity to associate the trademarks with the quality of the Complainant’s goods and services.

(3) The disputed domain name has been registered and is being used in bad faith.

The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant contents that the Respondent uses the disputed domain name intentionally to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s WALMART trademarks as to the source, sponsorship, affiliation or endorsement of the website. The Complainant speculates that the Respondent obtains commercial gain from its use of the website by receiving compensation from the owners of third-party websites who collect visitors’ information for the purposes of marketing or identity theft. The Respondent’s use of the disputed domain name in bad faith is further demonstrated, according to the Complainant, by its knowing and intentional use of the WALMART trademarks in violation of the Complainant’s rights and its attempt to sell the disputed domain name to the Complainant for USD 5,000.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has shown sufficient evidence, in this and countless earlier disputes under the Policy that it has rights in the WALMART trademarks. The disputed domain name consists of the Complainant’s WALMART trademark and the generic word “hiring”. A domain name consisting only of a trademark and a generic word will be confusingly similar to the trademark. 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>). With almost 9,000 stores worldwide the Complainant is one of the largest private employers in the United States, and Internet users would be likely to think that the domain name resolves to a website affiliated with the Complainant and devoted to recruitment of its employees. For this reason, the word “hiring” does not serve to distinguish the disputed domain name from the Complainant’s trademarks.

The Panel therefore concludes that the disputed domain name is confusingly similar to a trademark in respect of which the Complainant has rights.

B. Rights or Legitimate Interests

The WALMART trademarks are well-known worldwide, and the Complainant has owned the trademarks or some variation of them since at least 1971. The disputed domain name was registered on May 28, 2009. The Complainant has not granted the Respondent any rights to use the WALMART trademarks. Given the extensive use and world-wide reputation of the WALMART trademarks, the Respondent must have known of the Complainant’s trademarks at the time of registering the disputed domain name. The Respondent has not submitted any evidence under paragraph 4(c) of the Policy to rebut the Complainant’s prima facie case. The Respondent has had the opportunity to refute the Complainant’s contentions by producing evidence to the contrary, but has failed to do so. In particular:

(1) There is no evidence that the Respondent’s use of the website is a bona fide offering of goods or services as contemplated by paragraph 4(c)(i) of the Policy. The website seems to have no purpose other than to divert visitors to websites which seek to collect their personal information by offering prizes and gift cards. The Respondent achieves this end by misleading Internet users into thinking that the website is associated with the Complainant. Use of a domain name that is confusingly similar to a trademark for the purpose of collecting visitors' personal information by offering prizes or gift cards is not bona fide use. See e.g. Google Inc. v. Kanter Associates SA, NAF Claim No. FA1111001414449 (2011) and Victoria’s Secret Stores Brand Management, Inc. v. Privacy Protect/Privacy Protection, NAF Claim No. FA1108001404667 (2011).

(2) There is no evidence that the Respondent is commonly known by the disputed domain name or the name Walmart so as to satisfy paragraph 4(c)(ii) of the Policy.

(3) There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain as contemplated by paragraph 4(c)(iii) of the Policy. On the evidence, one can reasonably presume that the Respondent collects revenue either by selling the personal information of visitors or by receiving compensation for directing visitors to third-party websites which collect visitors’ personal information. By analogy with the pay-per-click cases, in either case the Respondent’s use of the website would not constitute noncommercial or fair use. See e.g. Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258.

The Panel therefore finds that the Respondent has no legitimate rights or interests in the disputed domain name.

C. Registered and Used in Bad Faith

As noted in paragraph B, in light of the well-known reputation surrounding the WALMART trademarks, the Panel is satisfied that at the time of adopting the disputed domain name the Respondent must have known of the WALMART trademarks and chose the disputed domain name for the purpose of riding on the reputation of the mark to deceive Internet users into thinking the website is associated with the Complainant. The Panel is also satisfied, given the evidence put forth in relation to the website, that the Respondent has likely obtained commercial gain from its use of the website either by selling visitors’ personal information or receiving compensation from the owners of third-party websites to which the disputed domain name directs. Thus, the Panel concludes that the Respondent intentionally attempted to attract Internet users to the website, for commercial gain, by creating a likelihood of confusion with the Complainant's trademarks as to the source or affiliation of the website as contemplated by paragraph 4(b)(iv) of the Policy.

The Respondent’s use of the domain name in bad faith is further demonstrated by the fact that the Respondent attempted to sell the disputed domain name to the Complainant for USD 5,000, an amount which far exceeds the Respondent's out-of-pocket costs directly related to the disputed domain name.

The Panel therefore finds that the Respondent’s registration and use of the domain name has been in bad faith.

7. Decision

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 <walmarthiring.com> be transferred to the Complainant.

Desmond J Ryan AM
Sole Panelist
Dated: February 21, 2012

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