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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Walmart Inc. v. Payam Avarane Khorshid Co.

Case No. DIR2021-0004

1. The Parties

The Complainant is Walmart Inc., United States of America (“United States”), represented Al Tamimi & Company, Islamic Republic of Iran (“Iran”).

The Respondent is Payam Avarane Khorshid Co., Iran.

2. The Domain Name and Registrar

The disputed domain name <walmart.ir> is registered with IRNIC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2021. On February 2, 2021, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On February 3, 2021, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On February 8, 2021, the Center sent an email to the Complainant requesting the Complainant’s confirmation regarding the Registrant information. On the same day, the Complainant replied to the Center.

The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir 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 February 12, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was March 4, 2021. On February 13, 2021, the Respondent sent several informal emails to the Center. The Response was filed with the Center on March 1, 2021.

The Center appointed Antony Gold as the sole panelist in this matter on March 25, 2021. 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 multinational retail corporation, with its headquarters in the United States, which operates chains of hypermarkets, discount stores, and grocery stores. As at October 2020, the Complainant operated 11,510 stores in 27 countries.

The Complainant was founded in 1962. Since that date its trading style has been WALMART and its WALMART trade mark has been registered in over 180 countries worldwide, including European Union trade mark WALMART registration No. 008261455 registered on December 11, 2009.

The disputed domain name was registered on October 6, 2007. It presently resolves to a website which comprises solely an image of an Iranian flag and, in Persian script, the words “This site is being updated”.

5. Parties’ Contentions

A. Complainant

The Complainant says that the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights, in that it contains, in full, the Complainant’s WALMART trade mark. Moreover, it is identical to many other domain names owned by the Complainant, including <walmart.com>.

The Complainant says also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence of the Respondent’s use of the disputed domain name or a name corresponding to it, in connection with a bona fide offering of goods and services. The Respondent has not been authorized to use the Complainant’s marks in any way. The term “walmart” has no meaning in Persian and the Respondent does not have any prior rights in the disputed domain name. The Respondent is not currently known, nor has it been known, by the name “walmart” or any similar term. The fact that the disputed domain name is identical to the Complainant’s WALMART trade mark means that it is infeasible for the Respondent to contend that it was intending to develop it for a legitimate activity.

Lastly, the Complainant says the disputed domain name was registered and is being used in bad faith. In view of the international repute of the Complainant’s WALMART trade mark, the Respondent must have known of it as at the date of its registration of the disputed domain name and it was registered by it for the purpose of selling or transferring it to the Complainant for valuable consideration. In this respect, the Respondent has previously engaged in a pattern of similar activity by registering a domain name which related to a well-known hotel brand, ACCOR. This registration has been the subject of an earlier irDRP panel decision under the Policy; see ACCOR v. Payam Avarane Khorshid Co. and Nextone Media Limited, WIPO Case No. DIR2010-0001. The disputed domain name does not lead to any active webpage and has not done since it was registered in 2018. The fact that it is displaying a blank page increases the confusion to Internet users and is likely to induce them to believe that the disputed domain name has been reserved by the Complainant for future use, for example, once the sanctions against Iran are lifted.

B. Respondent

The Respondent says that the disputed domain name was first registered in 2007 and that the Complainant and its website <walmart.com> is scarcely known in Iran. The trade mark WALMART is registered in Iran, but the Complainant is not the owner of it and it has no rights to use “Walmart” in Iran. The Registration Agreement provides that the governing law is that of Iran and the Policy also stipulates that the laws of Iran apply to its provisions.

The Respondent says also that the Complainant has no rights or legitimate interests in using the disputed domain name. Whilst the Complainant has asserted that “Walmart” has no meaning in Persian, “almart” is an Arabic word and can be combined with “Wa” for emphasis, so that the combined word will be “WalMart”.

The Complainant is unable to open any branch in Iran and it cannot sell any goods or services to Iranians due to the sanctions which are in place against Iran. Moreover, the Internet archive, the “Wayback Machine”, provides evidence of the disputed domain name having been used previously in connection with a bona fide publishing of religious content. In some periods the website was not reachable, but the technical issues have now been fixed and the website to which the disputed domain name previously resolved is now accessible. The Respondent is therefore making a legitimate noncommercial and fair use of the disputed domain name. The fact that the language of the website to which the disputed domain name resolves is/was in the Persian and Arabic languages prevents any confusion or conflict.

Lastly, the Respondent says that the disputed domain name was not registered, nor is it being used, in bad faith. The disputed domain name was not registered or acquired primarily for the purposes of selling or renting it. The Complainant and the Respondent are not competitors and the disputed domain name was not registered by the Respondent primarily to disrupt the Complainant’s business, nor was it registered in an attempt to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The earlier irDRP proceeding, in which the Respondent was involved in 2010, to which the Complainant has referred, is unrelated to the disputed domain name.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainants prove each of the following three elements in order to succeed in its Complaint:

(i) the disputed domain name is identical or confusingly similar to a trade mark 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 has been registered or is being used in bad faith.

A. Identical or Confusingly Similar

The Panel accepts the Respondent’s submission that both the Registration Agreement and the Policy provide that they are subject to the law of Iran. It should be noted that the language of the Policy closely follows that of the Uniform Dispute Resolution Policy (“UDRP”), save that under the UDRP, the requirements of bad faith registration and bad faith use in respect of the third element are cumulative rather than alternative. Accordingly, where essentially the same wording is under consideration, it can be helpful to consider the approach of UDRP panels towards substantially similar issues.

The Panel additionally accepts that the Complainant cannot presently trade in Iran and that it has not established that it has a registered trade mark in Iran. Specifically, whilst the Complainant has prepared a schedule of its trade marks, which indicates that the Complainant is the owner of a trade mark WALMART in class 1 in Iran, it has not provided a copy of the certificate itself, nor any corroborating details such as the date of registration of the mark or the registration number. Furthermore, the Respondent has produced what appears to be a translation of a trade mark certificate issued in Iran which indicates that a third party with no evident connection with the Complainant has a registration for the mark WALMART (in Latin characters) in classes 29, 30, 35, and 39, these being classes of particular relevance to a retailer, especially of groceries.

The first element under the Policy requires that the Complainant show that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights. There is nothing in this provision nor in the Policy more generally which requires that the Complainant’s mark be registered in Iran for these purposes, nor has the Respondent provided any evidence which might suggest that this is how the requirements of the first element are typically construed by irDRP panels.

The Panel therefore considers that, for the purposes of the first element as is the case under the UDRP, it is appropriate to have regard to the Complainant’s registered trade mark rights more generally. In this respect, the Panel notes that the Complainant is the owner, by way of example only, of European Union Trade Mark, registration number 008261455, for WALMART in classes 35, 40, and 43, registered on December 11, 2009. The registration is in the name of Walmart Apollo, LLC, this being the entity within the Complainant’s corporate group which owns its trade marks.

When undertaking a comparison under the first element, the country code Top-Level Domain (“ccTLD”) “.ir” is disregarded as it is a technical requirement of registration. The disputed domain name accordingly contains the entirety of the Complainant’s trade mark without any additional elements. The Panel therefore finds the disputed domain name is identical to a trade mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides, in summary, that a respondent may demonstrate that it may have rights or legitimate interests in a disputed domain name by demonstrating either that, before any notice to it of the dispute, it has been using or has made demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services or that it has been commonly known by the domain name or that it has been making a legitimate noncommercial or fair use of the domain name.

In view of the conflicting statements by the Complainant and the Respondent as to the content of the website to which the disputed domain name has previously resolved, and presently resolves, the Panel has made some limited investigations in order to clarify the position and ensure that the submissions of both parties can be fully considered. The circumstances in which a panel might typically take this course under the UDRP are outlined at section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); “Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name”.

With that in mind, the Panel has undertaken the following steps. First, it has visited the website to which the disputed domain name presently resolves and established that it takes the form described in the section 4 above. Second, it has accessed the link to the Wayback Machine which the Respondent provided as evidence of the use which has previously been made of the disputed domain name; the results of that exercise are set out below. Finally, the Panel has visited the European Union Intellectual Property Office website in order to obtain the details of the Complainant’s trade mark referred to at section 6.A above.

The Respondent has asserted that the disputed domain name has previously resolved to a website connected to the publication of religious content. The only evidence it has provided to support its contentions is a single page extract from the Wayback Machine which shows the three calendar dates in 2017 that the archive crawled the disputed domain name. It has not provided any screen prints of the supposedly formerly active website, nor was the Panel was unable to find any archived web pages on the Wayback Machine which might substantiate the Respondent’s contentions. Even now, the disputed domain name resolves to website which contains only an image of an Iranian flag and, in Persian script, the words “This site is being updated”. This does not comprise use in connection with a bona fide offering of services.

The second and third circumstances are inapplicable; there is no evidence that the Respondent has been commonly known by the disputed domain name and the use which it is making of the disputed domain name does not amount to a legitimate noncommercial or fair use of it. In particular, domain names identical to a complainant’s trademark carry a high risk of implied affiliation.

The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered or Used in Bad Faith

The Respondent asserts, as a matter of argument, that it is possible for the word “walmart” in Latin characters, to represent the equivalent of a word which comprises, in Arabic characters, a combination of the words “Almart” and “Wa”. However, the Respondent does not explain what such a word would mean, nor even does it expressly assert that it registered the disputed domain name because of the apparent meaning of such a word.

The Complainant finds the Respondent’s contention inherently implausible. It is more likely on, at least, a balance of probabilities, that the Respondent registered the disputed domain name because it is identical to the Complainant’s well-known WALMART trade mark and it hoped to profit in some way from its registration. The Panel has also considered the earlier proceeding under the Policy, ACCOR v. Payam Avarane Khorshid Co. and Nextone Media Limited, supra which related to the Respondent’s registration of another domain name, <accorhotels.ir>, which incorporated a well-known third party mark and which was found to comprise bad faith registration and use of the domain name. A single earlier instance of what the irDRP panel in those proceedings described as “a classic case of cybersquatting” does not amount to a pattern of conduct nor does it comprise conclusive evidence of bad faith. However, when considered in the context of the Respondent’s inherently implausible explanation for its registration of the disputed domain name, it provides additional support for the Complainant’s contentions. Moreover, registration of a domain name with the knowledge of a complainant’s trademark registration would generally be considered to amount to bad faith.

Whilst the Respondent’s precise motives in registering the disputed domain name are unclear, the most likely explanation is that the Respondent did so in the hope that the Complainant might be prompted to purchase the disputed domain name from it. To that extent, the Respondent’s actions fall within the circumstances outlined at paragraph 4(b)(i) of the Policy, that is, in summary, that the Respondent registered or acquired the disputed domain name primarily for the purpose of selling it to the Complainant for valuable consideration in excess of the Respondent’s costs of registration. It is not, in any event, necessary to be sure of the Respondent’s exact motive as the circumstances set out at paragraph 4(b) of the Policy are expressed to be without limitation. The Panel accordingly finds that the disputed domain name has been registered in bad faith.

As the requirements of bad faith registration and bad faith use are alternative, rather than cumulative, requirements under the Policy, the Complainant has satisfied all three elements. However, the Panel deals briefly with bad faith use. Contrary to the Respondent’s contentions, the only clear evidence of use of the disputed domain name has been to resolve to a “coming soon” page, as described above. Having regard, in particular, to the reputation of the Complainant’s WALMART mark, the failure of the Respondent to provide any evidence of good faith use and the implausibility of any good faith use to which the disputed domain name could be put, the Panel considers the Respondent’s passive holding of the disputed domain name to amount to bad faith use of it.

7. Decision

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 <walmart.ir> be transferred to the Complainant.

Antony Gold
Sole Panelist
Date: April 8, 2021

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