WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wal-Mart Stores, Inc. v. Private Registration, WhoisGuardService.com
Case No. D2016-1760
1. The Parties
The Complainant is Wal-Mart Stores, Inc. of Bentonville, Arkansas, United States of America ("United States"), represented by Drinker, Biddle & Reath, LLP, United States of America.
The Respondent is Private Registration, WhoisGuardService.com of Nanjing, Jiangsu, China.
2. The Domain Names and Registrar
The disputed domain names <cialisoverthe-counteratwalmart.com> and <cialisoverthecounteratwalmart.com> are registered with Nanjing Imperiosus Technology Co. Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on August 26, 2016. On August 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 1, 2016, 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 September 6, 2016, the Center transmitted by email in both English and Chinese to the Parties a request for comment on the language of the proceeding. The Complainant submitted a request for English to be the language of the proceeding on September 8, 2016. 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 and 4, the Center formally notified the Respondent of the Complaint in both English and Chinese, and the proceedings commenced on September 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 5, 2016.
The Center appointed Douglas Clark as the sole panelist in this matter on October 13, 2016. 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.
The Panel noted that due to an administrative oversight, it appears that the document entitled "Notification of Complaint and Commencement of Administrative Proceeding" was not copied to an email address present on the website at the disputed domain name. On October 26, 2016, the Panel issued Procedural Order No. 1, notifying the Respondent of the document entitled "Notification of Complaint and Commencement of Administrative Proceeding", and the Complaint (including annexes), and allowing the Respondent a period of five days to indicate whether it wished to submit a response. As the Respondent did not respond to the Panel's Procedural Order No. 1, the Panel has proceeded to render its decision.
4. Factual Background
The Complainant, founded in 1962 is a leading retail corporation that operates department stores and grocery stores in over 27 countries and e-commerce in 10 countries in the world. The Complainant serves more than 245 million customers weekly.
The Complainant owns numerous trademark registrations for WALMART, including United States trademark registration No. 1,322,750, No. 1,783,039, No. 2,891,003 and No. 4,180,335; Hong Kong trademark registration No. 200102701; international trademark registration No. 1269030 and European Union trade mark registration No. 008261604. The earliest of these trademarks was registered on February 26, 1985.
The disputed domain names were registered on March 31, 2015 and June 14, 2015. Both disputed domain names resolve to websites in English that appear to be online platforms that sell a prescription medicine Cialis.
5. Parties' Contentions
The Complainant contends as follows:
Identical or confusingly similar
The Complainant contends that the disputed domain names <cialisoverthecounteratwalmart.com> and <cialisoverthe-counteratwalmart.com> are confusingly similar to the Complainant's registered trademark WALMART as the disputed domain names incorporate the Complainant's WALMART trademark.
The Complainant further contends that the disputed domain names not only incorporate the Complainant's trademark, but also added the CIALIS trademark owned by Eli Lilly & Company of Indiana, United States.
The inclusion of non-distinctive and/or descriptive term ("over the counter") does not avoid the finding of confusing similarity.
No rights or legitimate interests
The Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any license or trademark registrations for WALMART. It, therefore, has no rights or legitimate interests in the disputed domain names.
Registered and used in bad faith
Before acquiring the disputed domain names, it is highly likely that the Respondent knew of the Complainant's rights in the WALMART mark because of their worldwide reputation. The Complainant contends that the Respondent acquired the disputed domain names to attract Internet users to its website for commercial gain.
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 in Chinese. Paragraph 11(a) of the Rules provides that:
"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
The Complainant requested the language of the proceeding be English on the grounds that the Respondent has been actively conducting business in English through its English only websites and if the Complainant were to translate documents in Chinese, the proceeding may be delayed and the Complainant would incur unnecessary expense.
The Center made a preliminary determination to:
(1) accept the Complaint as filed in English;
(2) accept a Response in either English or Chinese;
(3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with the Panel.
The Panel determines that the language of the proceeding should be English.
On the facts of this case, the Panel does not consider it appropriate to require the Complainant to translate the Complaint as it will unnecessarily delay the proceeding. The content of the websites under the disputed domain names is wholly in English, the Panel therefore considers that the Respondent has a good knowledge of English.
Further, the Respondent did not respond to the Center's preliminary determination. This Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent's failure to respond to a preliminary determination by the Center as to the language of the proceeding "should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint".
6.2 Substantive issues
A. Identical or Confusingly Similar
The disputed domain names <cialisoverthecounteratwalmart.com> and <cialisoverthe-counteratwalmart.com> are confusingly similar to the Complainant's WALMARK trademark.
The disputed domain names are also composed of another trademark CIALIS, which is owned by Eli Lilly & Company of Indiana, United States. Previous UDRP panels have found that when two trademarks are incorporated into a domain name, the domain name is confusingly similar to both marks. In MasterCard International Incorporated v. Abadaba S.A., Administrador de dominios, WIPO Case No. D2008-0325, a case involving the domain name <chasemastercard.com> the panel found:
"A domain name containing two trade marks of different entities does not mean its owner has created a new name but rather it means the domain name is confusingly similar to both of the trade marks."
The Panel agrees with this view as a statement of general principle. There may be times where a new name is created but the Panel does not consider that the use of two trademarks owned by two separate entities will, in general, avoid a finding of confusing similarity. There are issues as to the appropriate remedy to be granted which the Panel discusses below. (See also the discussion in Lilly ICOS LLC v. idesigns,
WIPO Case No. D2005-0482 regarding the issue of confusing similarity and the appropriate remedy.)
The disputed domain names are also composed of the generic terms "over the counter". According to previous UDRP decisions, the "addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP" (see paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")).
The first element of paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP."
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy sets out ways in which a respondent may establish it has rights and legitimate interests. These are:
"(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 organization) have been commonly known by the domain name, even if you have acquired no trademark 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 trademark or service mark at issue."
The Respondent has not responded to the Complaint to present any evidence to establish rights or legitimate interests under these heads. The Panel notes that the disputed domain names and the websites to which they resolve suggest that the Respondent is the Complainant or is somehow affiliated with the Complainant. The Panel finds, based on the available record, there to be no connection between the Parties. As such, the Respondent's use of the disputed domain names cannot be considered a bona fide offering of goods and services under the Policy. None of the other circumstances in paragraph 4(c) of the Policy is present in this case.
As discussed below, the disputed domain name <cialisoverthecounteratwalmart.com> explicitly adopts the Complainant's trademark on the top left corner of the corresponding webpage. Considering the absence of a response by the Respondent and the fact that the Respondent was granted neither a license nor an authorization to make any use of the Complainant's trademark, the Panel finds the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain names.
The second element of paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the disputed domain names <cialisoverthecounteratwalmart.com> and <cialisoverthe-counteratwalmart.com> were registered in bad faith and are being used in bad faith.
This case falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
"(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your website or location."
The websites under the disputed domain names make it clear the Respondent knew of the Complainant. The websites appears to be e-commerce platforms that advertise and sell the prescription medicine Cialis. It is clear that the Respondent knew of the Complainant because the disputed domain name <cialisoverthecounteratwalmart.com> has the Complainant's WALMART trademark on the top left corner of the corresponding website, the trademark is used to mislead and attract potential customers to purchase the prescription medicine Cialis. As mentioned above, the content of the website at the disputed domain name <cialisoverthe-counteratwalmart.com> also creates a false impression that the Respondent is in some way connected to the Complainant. Both e-commerce platforms provide for sale and purchase of the drugs online and ship the items worldwide. The disputed domain names are no doubt being used to attract Internet users for commercial gain.
The Panel has no hesitation in finding that the disputed domain names were registered with the intent to create confusion that the websites under the disputed domain names were in some way related to the Complainant and that the registrations and use were in bad faith.
The third element of paragraph 4(a) of the Policy is therefore satisfied.
The Complainant requests the remedy of transfer. However, the Panel notes that unlike most UDRP cases, the disputed domain names contain a trademark owned by a third party (that is, CIALIS which is owned by Eli Lilly & Company). It is necessary for the Panel to decide whether a transfer or a cancellation is a more appropriate remedy.
In Lilly ICOS LLC v. idesigns, WIPO Case No. D2005-0482, regarding the domain name <great-cialis-viagra.biz> the panel ordered the domain name be cancelled because the third party owner of the VIAGRA trademark (Pfzier) was the Complainant's competitor. In another decision Yahoo! Inc. v. CPIC NET and Syed Hussain, WIPO Case No. D2001-0195, which involved the use of the trademarks YAHOO and EBAY, the panel transferred the disputed domain names to the complainant even though the complainant and the third party were in the same industry. The panel in that case did, however, note:
"Yahoo, Inc. has not shown that it has any rights in the phrase "ebay." Therefore, the Sole Panelist transfers the BulkRegister Domain Names without prejudice to any rights, which might be asserted by eBay, Inc."
See also Guccio Gucci S.p.A. v. Brenda Hawkins, WIPO Case No. D2013-0603.
The Panel is aware that there is an active business in re-registering expired or cancelled domain names. For this reason, on the facts of this case, where the Complainant is not a competitor of the other trademark holder, the Panel considers ordering cancellation of the disputed domain names to be inappropriate.
However, an order for transfer will transfer a domain name incorporating a trademark, CIALIS, which is not owned by the Complainant to the Complainant. The Panel will therefore order the transfer of the disputed domain names without prejudice to any rights which might be asserted by Eli Lilly & Company.
For the foregoing reasons and taking into account the qualification in the preceding paragraph, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <cialisoverthe-counteratwalmart.com> and <cialisoverthecounteratwalmart.com> be transferred to the Complainant.
Date: November 1, 2016