WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wal-Mart Stores, Inc. v. Domains by Proxy, LLC / Ryan Durso, Three Phoenix
Case No. D2015-1889
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 Domains by Proxy, LLC of Scottsdale, Arizona, United States of America / Ryan Durso, Three Phoenix of Dallas, Texas, United States of America.
2. The Domain Names and Registrar
The disputed domain names <nearestwalmart.com> and <walmartreviews.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2015. On October 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 24, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 27, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2015. This due date was extended to November 27, 2015 based on a request by Respondent to which Complainant consented. Respondent did not submit any response by the extended due date. Accordingly, the Center notified Respondent’s default on December 1, 2015.
The Center appointed Robert A. Badgley as the sole panelist in this matter on December 8, 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.
4. Factual Background
Complainant is the world’s largest retailer, with roughly USD 473 billion in sales for the fiscal year 2014. Complainant has used its WALMART and WAL-MART marks for decades, and some of these marks date back to 1962. Complainant holds numerous registrations of the WALMART and WAL-MART trademarks, and operates various websites including “www.walmart.com”.
Respondent registered both Domain Names on April 11, 2015. At the time the Complaint was filed, the Domain Names did not resolve to active websites. Since that time, however, the Panel has observed that the sites resolve to a rudimentary landing page which features a cartoon drawing of two bearded men standing arm in arm, with the phrases “We are best friends!” and “I love reviews!” suspended above the men. At the bottom of the page is a “Disclaimer Notice” in very small type. The purported disclaimer states that the website has no affiliation with Complainant, and that the site is “curated by characters Wal M. and Art.” The stated intent of the site is “not to influence but solely to educate.”
On September 11, 2015, Complainant’s counsel sent a cease-and-desist letter to Respondent. Three days later, Respondent sent separate emails to Complainant for each Domain Name. Respondent’s emails were similar in content. Both emails indicated that the Domain Name in question was currently not for sale, and that Respondent was “actively developing on it [sic] for purposes unrelated to ‘Wal-Mart.’” Respondent went on in each email to state that, if Complainant wished, Respondent could add Complainant to its list of persons whom Respondent would notify in the event the Domain Name became available.
5. Parties’ Contentions
Complainant maintains that it has established all three elements required under the Policy for the transfer of the Domain Names.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant holds rights, through registration and extensive use, in the mark WALMART. Further, the Panel concludes that the Domain Names are confusingly similar to that mark. The addition of the generic words “nearest” and “reviews” does not diminish the confusing similarity between the mark and the Domain Names. The fact remains that the dominant feature within each Domain Name is the widely known mark WALMART.
The Panel concludes that Complainant has established paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Names, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Names or names corresponding to the Domain Names in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Names, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant has not authorized Respondent to use its famous WALMART marks in a domain name. As noted above, Respondent did not respond to the Complaint in this proceeding, and, in response to Complainant’s cease-and-desist letters, Respondent merely stated that he was “actively developing” the Domain Names “for purposes unrelated to ‘Wal-Mart.’” As such, Respondent has not come forward with any assertion, much less evidence, of any bona fide basis for having registered the Domain Names, and the Panel on this record can discern no such legitimate interest.
The Panel also finds that the post-Complaint content on the website to which the Domain Names resolve falls well short of investing Respondent with a legitimate interest in the Domain Names. Respondent does not claim that he is engaged in the exercise of his free-speech rights, and provides no explanation of how Respondent, having “curated the characters Wal M. and Art,” intends to exploit them in a manner that avoids infringing or tarnishing Complainant’s famous WALMART family of marks. Absent any explanation or evidence from Respondent, this post-Complaint website content appears to be little more than a prank.
The Panel concludes that Complainant has established paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that, for each of the Domain Names, the following circumstances, “in particular but without limitation” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Names in bad faith. As respects bad faith registration, the Panel finds it very probable that Respondent had Complainant’s well-known WALMART mark in mind when registering the Domain Names. In response to Complainant’s cease-and-desist letters, Respondent did not deny having knowledge of the WALMART family of marks.
As respects bad faith use, the Panel finds that this case fits within the ambit of the longstanding Telstra doctrine (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). A core principle emerging from Telstra is that, where a respondent has not put a domain name to active use but merely parks it at a blank web page, “it is possible, in certain circumstances, for inactivity by the respondent to amount to the domain name being used in bad faith.”
As in Telstra, Complainant here holds a strong and distinctive mark that has attained a considerable degree of fame. As in Telstra, Respondent here has made no effort to explain, and has provided no evidence of, “any actual or contemplated good faith use by it of the Domain Name.” Before the Complaint was filed, the Domain Names resolved to a blank website. After the Complaint was filed, a rudimentary website with no apparent point was set up. Either way, the Panel concludes that Respondent has put the Domain Names to “passive use” for purposes of the Telstra doctrine.
In sum, based on the record before this Panel but in the words of the Telstra panel, “it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate…”
On this record, the Panel is also prepared to find Respondent in bad faith under Policy paragraph 4(b)(i). Respondent’s September 14, 2015 emails in response to Complainant’s cease-and-desist letter are thinly-veiled attempts to initiate a discussion about the sale of the Domain Names, and it is easy enough to infer that any such contemplated sale would occur at a price above Respondent’s out-of-pocket costs directly related to the Domain Names.
The Panel concludes that Complainant has established 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 Names <walmartreviews.com> and <nearestwalmart.com> be transferred to Complainant.
Robert A. Badgley
Date: December 23, 2015