WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wal-Mart Stores, Inc. v. datsla, datslahotmail
Case No. D2014-1863
1. The Parties
The Complainant is Wal-Mart Stores, Inc. of Bentonville, Arkansas, United States (“United States”), represented by Drinker, Biddle & Reath, LLP, United States.
The Respondent is datsla, datslahotmail of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <walmartfresh.com> (the “Disputed Domain Name”) is registered with eName Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 23, 2014. On October 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 24, 2014, 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. On October 29, 2014, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On October 31, 2014, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that 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 in both Chinese and English, and the proceeding commenced on November 4, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 25, 2014.
The Center appointed Kar Liang Soh as the sole panelist in this matter on December 8, 2014. 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 operates a retail store chain comprising 11,000 retail units in 27 countries and several e-commerce sites under the trademark WALMART. It achieved about USD 473 billion in sales for fiscal year 2013. The Complainant opened its first Walmart retail store in 1962 and retailing a wide variety of grocery products and services. The word “fresh” is commonly used on the Complainant’s websites (for example, at the website resolved from the domain name <walmart.com>) to describe the Complainant’s products. The Complainant also launched a “Fresh Produce Guarantee” campaign in 2013 in its United States stores allowing a 100% money-back guarantee with regard to freshness of its fruits and vegetables.
The Complainant owns trademark registrations comprising the variants of the word “Walmart” in various jurisdictions, including the following:
February 26, 1985
July 20, 1993
October 5, 2004
July 24, 2012
There is limited information about the Respondent in this proceeding. It is noted that the Respondent has an address in Beijing, China. However, it is not apparent that “datsla” is a Chinese name or correspond phonetically to any Chinese characters. The name “datsla” also does not appear to be the name of an individual or company. A reverse WhoIs lookup on the Respondent’s email address as reflected in the WhoIs record of the Disputed Domain Name highlighted almost 500 domain names associated with various names including “datsla”. Some of these domain names are <googlesearch.co.in>, <amazonfresh.com> and <faceiook.com>.
The Disputed Domain Name was registered on July 1, 2013. As of October 16, 2014, the Disputed Domain Name resolved to a parking website with links prominently featuring the trademark WALMART.
5. Parties’ Contentions
The Complainant contends that:
1) The Disputed Domain Name is confusingly similar to the trademark WALMART. The trademark WALMART is famous and instantly recognizable. The only difference between the Disputed Domain Name and the trademark WALMART is the addition of the word “fresh”, which has been held by previous UDRP panels to be a descriptive term and does not avoid the finding of confusing similarity (e.g., société SAS GIza v Habib Sassi/Sociétés ZEOtechnologies GmbH et Cabinet Optimum, WIPO Case No. D2011-2303);
2) The Respondent has no rights or legitimate interests in the Disputed Domain Name. The trademark WALMART is internationally famous. The Complainant has not granted the Respondent a licence or authorization to use or register the trademark WALMART. The Respondent is not commonly known by the Disputed Domain Name or the trademark WALMART. No entity or person connected with the Respondent is named or identified by the Disputed Domain Name. The Respondent has not lawfully used the Disputed Domain Name to offer goods or services; and
3) The Respondent registered and is using the Disputed Domain Name in bad faith. The Complainant’s trademark registrations pre-date the registration of the Disputed Domain Name. It is implausible that the Respondent did not have actual knowledge of the trademark WALMART at the time of registering the Disputed Domain Name given its worldwide fame. The Respondent’s failure to use the Disputed Domain Name to identify an active website constitutes passive holding and demonstrates bad faith. The Respondent has amassed a large number of domain names that incorporate brand names. Such registrations, including of the Disputed Domain Name, were directed primarily for the purposes of diverting traffic from legitimate sites associated with brand names for the purposes of collecting advertising revenue otherwise transferring to third parties at a profit. The Respondent’s registration of the Disputed Domain Name indicates an affiliation with the Complainant with the goal of misleading Internet users and diverting traffic away from the Complainant’s genuine sites.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
The language of the registration agreement is Chinese and the default language of the proceeding should be Chinese. The Complainant has requested that English be adopted as the language of the proceeding. Pursuant to the discretion empowered to the Panel by paragraph 11 of the Rules, the Panel grants the Complainant’s request having regard to the circumstances as follows:
1) The Respondent is associated with many domain name registrations incorporating English language phrases (e.g., <buildsyourbusness.com>);
2) The Respondent’s name does not appear to be that of a Chinese individual or company;
3) The website resolved from the Disputed Domain Name is entirely in English;
4) The Respondent has not participated in the proceeding by filing a Response;
5) The Respondent has not objected to the Complainant’s request for English to be adopted as the language of the proceeding;
6) The Complaint has already been filed in English and the Complainant would incur substantial additional expense for translations should Chinese be maintained as the language of the proceeding; and
7) Requiring Chinese translations would lead to unnecessary delay in the proceeding.
The Complainant must satisfy the Panel that all three limbs of paragraph 4(a) of the Policy are established on the facts.
A. Identical or Confusingly Similar
The first limb of paragraph 4(a) of the Policy requires the Complainant to show that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant’s trademark registrations comprising the word “Walmart” establishes the Complainant’s rights. The Disputed Domain Name incorporates the Complainant’s trademark WALMART in its entirety, with the only difference being the suffix “fresh”. The Panel agrees with the Complainant that the word “fresh” is a mere descriptive term which does not assist to distinguish the Disputed Domain Name from the trademark WALMART. Therefore, the Panel is satisfied that the requirements of the first limb of paragraph 4(a) of the Policy have been met.
B. Rights or Legitimate Interests
The Complainant, having rights in the trademark WALMART, has confirmed that it has not authorized the Respondent to use or register “Walmart” as a trademark or domain name. There is nothing before the Panel to suggest that the Respondent is commonly known by the Disputed Domain Name. The resolution of the Disputed Domain Name to a parking website does not convince the Panel that there is any bona fide use or preparation to use the Disputed Domain Name. The Panel accordingly holds that the Complainant has established a prima facie case that the Respondent does not have any right or legitimate interests in the Disputed Domain Name. Since no Response was filed, the prima facie case stands and the second limb of paragraph 4(a) of the Policy is established.
C. Registered and Used in Bad Faith
The Complainant’s trademark registrations pre-date the registration of the Disputed Domain Name by at almost 30 years. Based on the evidence submitted, the Panel accepts that the trademark WALMART is famous and agrees that it is implausible for the Respondent not to have known of it at the time of registering the Disputed Domain Name. Even though the Disputed Domain Name resolved to a parking website, it is obviously a holding website and qualifies as passive holding of the Disputed Domain Name.
The Panel notes the large number of domain names associated with the Respondent, some of which incorporate other well-known names. In the absence of any cogent explanation by the Respondent, the Panel finds it hard to avoid the conclusion that the Respondent has exhibited a pattern of conduct preventing the relevant trademark owner from reflecting such trademark in a corresponding domain name contrary to paragraph 4(b)(ii) of the Policy.
The Complainant has allayed a serious contention that the Respondent must have intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating an affiliation with the Complainant with the goal of misleading Internet users and diverting traffic away from the Complainant’s genuine sites in the manner outlined in paragraph 4(b)(iv) of the Policy. Although there is no direct evidence that the Respondent has intended to gain or has gained financially from the parking site, the Complainant’s allegation as such is serious. A reasonable person in the Respondent’s position who disagrees with the allegation would have denied the same. In view of the Respondent’s silence and on the balance of probabilities, the Panel draws an adverse inference that the Respondent has an intention for financial gain.
Having regard to the above and all the circumstances in the proceeding, the Panel determines that the Complainant has established the bad faith registration and use required under the third limb of paragraph 4(a) 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 Disputed Domain Name <walmartfresh.com>, be transferred to the Complainant.
Kar Liang Soh
Date: December 19, 2014