WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Asda Stores, Ltd., Wal-Mart Stores, Inc. v. HC a/k/a Henry Chimanzi
Case No. D2014-2256
1. The Parties
The Complainant is Asda Stores, Ltd. of Leeds, United Kingdom Great Britain and Northern Ireland and Wal-Mart Stores, Inc., Arizona, United States of America, represented by Drinker, Biddle & Reath, LLP, United States of America.
The Respondent is HC a/k/a Henry Chimanzi of Bristol, United Kingdom of Great Britain and Northern Ireland, self-represented.
2. The Domain Name and Registrar
The disputed domain name <asda.club> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2014. On December 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 25, 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.
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, and the proceedings commenced on January 6, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2015. On January 23, 2015, the Respondent sent an email to the Center requesting an extension to file a Response. On the same day, the Center replied declining to extend the period for the Response, taking into account that the request was received close to the date for the Response, and because there did not appear to be exceptional circumstances, as required by the Rules, paragraph 5(d). The Center also noted that the Respondent might wish to file a late Response, which it would bring to the Panel’s attention, and that it would be at the sole discretion of the Panel to consider it. The Respondent sent an email to the Center on February 2, 2015 which, for the purpose of this decision, is referenced as “the Response”.
The Complainant submitted a supplemental filing, in response to the late Response, on February 5, 2015.
The Center appointed James A. Barker as the sole panelist in this matter on February 10, 2015. 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.
On February 25, 2015, the Panel extended the due date for the decision, in accordance with paragraph 10 and 12 of the Rules.
4. Factual Background
The second Complainant (Wal-Mart Stores Inc.) is the parent company of the first Complainant (Asda Stores Inc.). In the rest of this decision, unless otherwise indicated, both complainants are collectively referred to as ”the Complainant”.
The first Complainant is the registrant of marks for ASDA, and has used that mark since as early as 1965 in connection with supermarket store services, and has expanded its business to include the sale of numerous goods and services, including retail services, financial services and services devoted to parents through its “ASDA Baby and Toddler Club” located online at “www.babyclub.asda.com”. In the United Kingdom, the Complainant’s earliest of the Complainant’s registrations dates from 1971.
The second Complainant is the owner of various other domain names that include the ASDA mark, including <asda.com>.
The first Complainant is Britain’s second largest supermarket chain and employs over 169,000 employees through its various stores.
The disputed domain name was registered in July 2014. The website at the disputed domain name is inactive.
5. Parties’ Contentions
The Complainant says that the disputed domain name is confusingly similar to its registered ASDA mark. The only difference is the addition of the generic Top-Level Domain (“gTLD”) “.club”, however it is well-settled that the gTLD extension does not factor into the issue of confusing similarity. Moreover the addition of the word “.club” is insignificant to the issue of confusing similarity. Indeed, the addition of a term that relates to the Complainant’s business exacerbates the likelihood of consumer confusion.
The Complainant secondly says that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant’s mark is well-known, and the Complainant has not given the Respondent a license or other permission to use its mark in a domain name. Nothing in the WhoIs record indicates that the Respondent is commonly known by the disputed domain name, and the Respondent has not used them to offer goods or services. Even if the Respondent has an intention to develop content on its website, the Respondent has registered the disputed domain name to divert Internet traffic, which is not a bona fide or fair use.
The Complainant also points to emails to it from the Respondent, indicating that the Respondent has an intention to sell the disputed domain name. In this connection, the Complaint attaches evidence of a “cease and desist” email it sent to the Respondent on August 6, 2014. In a response on August 21, 2014, the Respondent stated that he had been offered USD 27,000 for the disputed domain name by another buyer, and that, if the Complainant was interested, to contact him as soon as possible and he would consider an alternative offer.
Lastly, the Complainant says that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant’s trademark registrations provide constructive notice of its rights. Further, it is implausible that the Respondent did not have actual knowledge of the Complainant’s mark when it registered the disputed domain name given the longstanding fame of the Complainant’s mark, particularly in the United Kingdom. The Respondent’s indication that he would sell the disputed domain name for a sum – USD 27,000 – well in excess of his out of pocket costs, is clear evidence of bad faith registration.
The Complainant various refers to a large number of prior decisions under the Policy in support of its arguments.
The Respondent did not file a Response within the time required by the Rules. The Respondent filed a late and brief Response on February 2, 2015, which the Panel has considered for the reasons set out further below (under ‘Discussion and Findings’).
In his Response, the Respondent says that the disputed domain name represents “African Societies Direct Action Club”. The intended purpose of the registration “is to create a hub where interaction and blogging from people of African decent [sic] and African residents on political issues affecting their countries and holding governments accountable to decisions they make and laws they dictate on citizens within their jurisdiction and further more.” The Respondent denies that he registered the disputed domain name to violate the Complainant’s rights in any way. He claims that had he been interested in private gain, he would have sold the disputed domain name to the private buyer he claims made an offer for it. The Respondent says that the Complaint is a bullying tactic that Walmart is using to acquire a legitimately registered domain name.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. These elements are discussed in turn below, immediately after the procedural issues of the late Response and supplemental filing by the Complainant.
A. Late Response and Supplemental filing
As noted above, the Respondent filed a late and administratively deficient response. The Complainant then made a supplemental filing in reply. As noted by the Center in acknowledging these communications, neither the Policy nor the Rules include express provision for such submissions.
A panel has the discretion to admit or invite filings under paragraphs 10(a), (b), (d), and 12 of the Rules, including further filings to a party’s main submission.
The circumstances in which UDRP panels have allowed late responses was set out in AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc./Corporation Texas v. Guillermo Lozada, Jr., WIPO Case No. D2005-0485. The circumstances where a late response was allowed, include where the lateness did not delay the decision, where a response was late by only one day, or where there would otherwise have been a miscarriage of justice. Here, the lateness of the informal Response, or its administrative deficiency, has not materially affected progress of this case. The informal Response is short and the Panel considers that it should be considered in the interests of fairness.
The next issue is whether the Panel should consider the Complainant’s supplemental submission. In general, previous UDRP panels have considered that supplemental filings should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the material when it made its primary submission; that if further material is admitted, it should be limited so as to minimize prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself. See Mejeriforeningen Danish Dairy Board v. Cykon Technology Limited, WIPO Case No. D2010-0776. The Panel does not consider there are such exceptional circumstances in this case. The Response is brief, and does not introduce any substantial new material. While the Response makes an argument that the Complainant may not have anticipated (his claim to the reasons for the registration of the disputed domain name), it is one squarely and already addressed by the Complaint’s general argument as to the Respondent’s lack of rights or legitimate interests and bad faith. The Complainant’s supplemental submission otherwise seeks to reargue matters raised in its primary submission. For these reasons, the Panel has not considered it in this decision.
B. Identical or Confusingly Similar
The Complainant has provided copies of a large number of registration certificates for the mark on which it relies. As such, the Complainant has demonstrated that it has rights in a trademark for the purposes of paragraph 4(a) of the Policy.
The Complainant’s mark is entirely incorporated in the disputed domain name, with the addition of the suffix “.club” gTLD. It is a common circumstance under the Policy to find that the entire incorporation of a mark in a domain name, including a domain name that adds a generic word, may be sufficient for a finding of confusing similarity. See e.g. AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758, and the cases cited in that one; Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102. The Panel does not consider that there is any logical reason to change this approach where the added word is the gTLD itself.
C. Rights or Legitimate Interests
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The issue is whether the Respondent has sufficiently rebutted this case.
The Respondent says he has a legitimate interest in the disputed domain name because he registered it in connection with an “African Societies Direct Action Club”. The Respondent gives no evidence for this bare claim. The Respondent provides no evidence of, for example, any preparations to legitimately use the disputed domain name for such a purpose, or explanation of why he was motivated to this purpose. Neither is this purpose explained in any prior communication between the Respondent and Complainant, contained in the case file.
In the absence of such evidence, the Panel is skeptical of the Respondent’s claim. It is also a claim that must be considered against the reputation of the Complainant’s mark. The Complainant’s business is widely based in the United Kingdom. The Respondent is also resident there. Given the Complainant’s widespread reputation, it seems likely that the Respondent was aware of the Complainant and its mark. While such an awareness would not, by itself, preclude the potential for the Respondent to establish a right or legitimate interest, it further stretches the plausibility of the Respondent’s claim. There is otherwise no evidence in the case file that suggests the Respondent has the rights it claims.
In these circumstances, the Panel finds that the Complainant’s prima facie case has not been rebutted by the Respondent.
D. Registered and Used in Bad Faith
The Complainant must also establish that the Respondent registered and has used the disputed domain name in bad faith.
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The disputed domain name does not resolve to an active website. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”) paragraph 3.2 states that “The lack of active use of the domain name does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name”.
The Complainant argues that the Respondent has relevantly acted in bad faith because he had at least constructive notice of the Complainant’s mark. The Complainant also says that the Respondent had likely actual notice of its Complainant’s mark, and that this, combined with the registration of a confusingly similar domain name, is indicative of bad faith. The Complainant also argues that the Respondent’s willingness to offer the disputed domain name for sale suggests bad faith for the purpose of paragraph 4(b)(i) of the Policy.
In relation to the issue of constructive notice, this Panel is aware that some panels have found constructive bad faith, based on a Complainant’s registered mark with the USPTO and in cases where both are resident in the USA. However, as noted in the “WIPO Overview 2.0, UDRP panels have mostly declined to introduce the US concept of constructive (deemed) notice per se into the UDRP. This Panel takes a similar approach.
In relation to whether the Respondent had actual notice of the Complainant’s mark, the Complainant has provided evidence of its wide-spread reputation in the United Kingdom. The disputed domain name wholly incorporates the Complainant’s mark and is confusingly similar to it. The Respondent gave no evidence of having a legitimate purpose for registering the disputed domain name. From this, the Panel considers that the Respondent was well-aware of the Complainant’s mark when he registered and then held the disputed domain name. In the circumstances of this case, the Panel considers it reasonable to infer that the Respondent intended to obtain some advantage by unfairly exploiting an association with the Complainant’s mark. The Respondent’s invitation to the Complainant to bid for the disputed domain name reinforces this inference.
For these reasons, the Panel finds that the disputed domain name was registered and has been used in bad faith.
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, <asda.club>, be transferred to the Complainant, Wal-Mart Stores, Inc.
James A. Barker
Date: March 2, 2014