WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wal-Mart Stores, Inc. v. Whois Privacy Corp. / Ran G Foo, PPA Media Services
Case No. D2014-1864
1. The Parties
The Complainant is Wal-Mart Stores, Inc. of Bentonville, Arkansas, United States of America, represented by Drinker, Biddle & Reath, LLP, United States of America.
The Respondents are Whois Privacy Corp. of Nassau, Bahamas / Ran G Foo, PPA Media Services of Santiago, Chile.
2. The Domain Name and Registrar
The Domain Name <walmartgrocery.com> is registered with Internet.bs Corp. (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 Domain Name. On October 24, 2014, 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. The Center sent an email communication to the Complainant on October 29, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to amend the Complaint. The Complainant filed an amended Complaint on October 31, 2014.
The Center verified that the 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 Respondents of the Complaint, and the proceeding commenced on November 5, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 25, 2014. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on November 26, 2014.
The Center appointed Nick J. Gardner as the sole panelist in this matter on December 9, 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 is a United States based retail company, offering products and services, both online and via retail stores, in the apparel, grocery, food, electronics, toys, sports, fitness, books, music, furniture, pharmacy, home products, automotive, financial and other industries. It is one of the largest retailers in the world.
The Complainant is the owner of numerous trade mark registrations for the words WAL-MART and WALMART, for retail and other services in many countries. Its trade mark registrations include for example: (i) U.S. registration No. 1,322,750, registered on February 26, 1985; (ii) U.S. registration No. 1,783,039, registered July 20, 1993; (iii) U.S. registration No. 2,891,003, registered October 5, 2004; and (iv) U.S. registration No. 4,180,335, registered on July 24, 2012.
The Complainant also incorporates the WAL-MART and WALMART marks as well as variations thereof in the domain names and website content for its websites located at "www.walmart.com", "www.wal-mart.com", "wal-martcorporate.com" and "www.walmartstores.com".
On January 7, 2010 the Respondents registered the Domain Name.
The Domain Name is used in relation to a webpage where links to various other websites are provided under such headings as "grocery home delivery", "tissue paper coupons" or "Walmart tire coupons". None of these links seem to relate to the Complainant's websites.
The word WALMART is a made up word with no separate or independent meaning apart from in relation to the Complainant or its products.
5. Parties' Contentions
The Complainant's case can be summarised as follows.
a) The Domain Name is confusingly similar to the WALMART and WAL-MART trade marks as (i) it incorporates in their entirety the Complainant's well-known and distinctive WAL-MART and WALMART marks, and (ii) the combination thereof with generic terminology is insufficient to distinguish the Domain Name from the Complainant's trade marks.
b) The Respondents do not have any rights or legitimate interests in the Domain Name.
c) The Respondents use the Domain Name in bad faith as the website to which the Domain Name resolves, make use of the Complainant's WAL-MART and WALMART marks in order to raise advertising revenue through the use of sponsored or click-through links.
The Respondents did not reply to the Complainant's contentions.
6. Discussion and Findings
As a preliminary issue the Panel notes this is a case where one of the Respondents (Whois Privacy Corp.) appears to be a privacy or proxy registration service while the other Respondent (Ran G Foo/PPA Media Services) appears to be the substantive Respondent. The Panel in this case adopts the approach of most UDRP panels, as outlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.9, as follows "Most panels in cases involving privacy or proxy services in which such disclosure of an underlying registrant has occurred, appear to have found it appropriate to record in their issued decision both the name of the privacy or proxy registration service appearing in the WhoIs at the time the complaint was filed, and of any disclosed underlying registrant". Accordingly this decision refers to both Respondents. It is not in practical terms necessary to distinguish which Respondent was responsible for specific acts.
The Panel also notes that no communication has been received from the Respondents. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel again adopts the approach set out in the WIPO Overview 2.0 namely, "once the WIPO Center has notified the complaint to the WhoIs-listed contact information (especially where confirmed by the registrar) for the domain name registrant, this would normally satisfy the requirement in paragraph 2(a) of the UDRP Rules to employ reasonably available means calculated to achieve actual notice". Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondents' failure to file any Response.
Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:
i. the Respondents' Domain Name is identical to or confusingly similar to a trade mark or service mark in which the Complainant has rights;
ii. the Respondents have no rights or legitimate interests in the Domain Name;
iii. the Respondents' Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has submitted detailed evidence that it is the owner of numerous trade marks consisting of the words "wal-mart" and "walmart".
The Panel holds that the Domain Name is confusingly similar to the above trade marks. The Domain Name, as registered by the Respondents, incorporates the WAL-MART and WALMART trade marks. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy, "when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name" (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). The only differences in the present case are the omission of the hyphen (in the case of the WAL-MART trade mark), which the Panel finds to be a trivial difference, and the addition of the generic word "grocery". This addition does not suffice to negate the similarity between the Domain Name and the Complainant's WAL-MART and WALMART trade marks.
Accordingly the Panel finds that the Domain Name is confusingly similar to the Complainant's trade mark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in the domain name:
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 organisation) have been commonly known by the domain name, even if you have acquired no trade mark 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 trade mark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondents to register or use the Domain Name or to use the WALMART trade mark. The Complainant has prior rights in the WALMART trade mark which precede the Respondents' registration of the Domain Name. The Complainant has therefore established a prima facie case that the Respondents have no rights or legitimate interests in the Domain Name and thereby the burden of production shifts to the Respondents to produce evidence demonstrating rights or legitimate interests in respect of the Domain Name (see for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondents have failed to produce any evidence to establish any rights or legitimate interests in the Domain Name. Accordingly the Panel finds that the Respondents have no rights or legitimate interests in the Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present circumstances, the distinctive nature of the WALMART trade mark, and the evidence as to the extent of the reputation the Complainant enjoys in the WALMART trade mark, and the confusingly similar nature of the Domain Name to the WALMART trade mark, and the lack of any explanation from the Respondents as to why they registered the Domain Name leads the Panel to conclude the registration and use was in bad faith. In the present case, the Panel concludes that it is inconceivable that the Respondents selected the Domain Name independently and without knowledge of the Complainant or its trade marks. The website operated by the Respondents at the Domain Name comprises a series of "click through" links to other third-party websites. The Panel infers that some consumers, once at the Respondents' website will follow the provided links and "click through" to other sites which offer products some of which may compete with those of the Complainant. The Respondents presumably earn "click through" linking revenue as a result. The Panel infers the Respondents' website is automatically generated. This does not however matter. It is well established that where a domain name is used to generate revenue in respect of "click through" traffic, and that traffic has been attracted because of the name's association with the complainant, such use amounts to use in bad faith, see for example, Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315; Owens Corning v. NA, WIPO Case No. D2007-1143; McDonald's Corporation v. ZusCom, WIPO Case No. D2007-1353; Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912; Rolex Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396.
Further the Panel notes the Respondents have not filed a response and hence have not availed themselves of the opportunity to present any case of legitimate use that they might have. The Panel infers that none exists.
As a result, and applying the principles in the above noted UDRP decisions, the Panel finds that the Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 Name, <walmartgrocery.com>, be transferred to the Complainant.
Nick J. Gardner
Date: December 18, 2014