WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wal-Mart Stores, Inc. v. Fred Simmons
Case No. D2015-1809
1. The Parties
Complainant is Wal-Mart Stores, Inc. of Bentonville, Arkansas, United States of America (“United States”), represented by Drinker, Biddle & Reath, LLP, United States.
Respondent is Fred Simmons of Jamaica, New York, United States.
2. The Domain Name and Registrar
The disputed domain name <walmartpickup.com> is 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 9, 2015. On October 12, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 12, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing Respondent’s 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 20, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 9, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 10, 2015.
The Center appointed Martin Schwimmer as the sole panelist in this matter on November 25, 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, Wal-Mart Stores, Inc., is the world’s largest retailer. It provides a wide range of goods and services under the trademark WALMART and WAL-MART (collectively, the “Trademarks”) in many countries. Complainant allows customers to order products online for pickup at its stores, and thus uses the phrase “store pickup” to describe such services.
Complainant owns incontestable registered trademark rights in the Trademarks, with use dating back to at least July 1962.
The date of creation of the disputed domain name is October 30, 2013.
The Panel has no information about Respondent other than the registrant information contained in the WhoIs, which shows that the registrant’s name is Fred Simmons and provides an address in Jamaica, New York.
5. Parties’ Contentions
In summary, Complainant alleges as follows:
Complainant owns the internationally famous WAL-MART and WALMART trademarks. It is the largest retailer in the world. Its services include grocery pickup services. Complainant utilizes the domain names <walmart.com>, <walmartpickupdelivery.com>, <walmartpickupgrocery.com> and <walmartgrocerypickup.com>.
Respondent is not affiliated with, or approved or sponsored by Complainant. The website to which the disputed domain name resolves contains no content other than the words “website coming soon! Please check back soon to see if the site is available.”
Complainant has twice written to Respondent regarding Complainant’s objections to the disputed domain name, to which Respondent has not replied.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to Complainant’s Trademarks. The disputed domain name incorporates Complainant’s WALMART Trademark in its entirety. The incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to such registered trademark (AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758).
The addition of the term “pickup” only exacerbates the confusion in view of Complainant’s own descriptive use of the term in its own domain names and provision of pickup services. See American Automobile Association, Inc. v. Pablo Palermo, WIPO Case No. D2009-1742 (ordering transfer of <aaatravelreviews.com> due to, inter alia, the term “reviews” being “specifically associated with the Complainant’s area of business”).
Furthermore, it is standard practice by UDRP panels to disregard the generic Top-Level Domain (“gTLD”) suffix “.com”, which does little if any to change the connotation of the second-level name. Therefore, the Panel agrees with Complainant that the disputed domain name is confusingly similar to Complainant’s Trademarks.
B. Rights or Legitimate Interests
The second ground to be demonstrated by Complainant, according to the provisions of the Policy, is Respondent’s absence of any rights or legitimate interests in the disputed domain name, per paragraph 4(c) of the Policy.
Previous UDRP panels have consistently held that it is sufficient for a complainant to prove a prima facie case that the respondent does not hold rights or legitimate interests in the domain name (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). Once a prima facie case is shown, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating its rights or legitimate interests in the disputed domain name.
The Panel is satisfied that Respondent has no connection or affiliation with Complainant and has not received any license or consent to use the Trademarks in a domain name or in any other manner.
Complainant alleges that there is no such connection here. The Panel confirms that the disputed domain names resolve to a page that evidences no legitimate noncommercial or fair use. There is no evidence of a bona fide offering of goods or services.
In addition, Respondent has not submitted any reply to Complainant’s contentions.
Therefore, in light of Complainant’s prima facie case, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
It goes without saying that the WALMART and WAL-MART trademarks are famous. The Panel agrees with Complainant’s observation that, given the addition of the term “pickup”, which term is used by Complainant, “Respondent’s use and registration of the disputed Domain Name indicates an affiliation with Complainant that is, itself, bad faith. By the time viewers of Respondent’s site realize that they have not accessed a genuine WALMART® site, Respondent’s goal of misleading Internet users and diverting traffic away from Complainant’s genuine sites has been achieved.” (See MicroFinancial, Inc. v. Glenn Harrison, WIPO Case No. D2003-0396 (“The policy however does not countenance this ‘initial confusion’”)).
In the context of this case, noting the fame of the Trademarks and the lack of any indication on the part of Respondent to put the disputed domain name to any bona fide use, the Panel finds it more likely than not that Respondent registered and is using the disputed domain name in bad faith.
Add to this the fact that Respondent did not respond to the Complaint, and the Panel therefore finds on the balance of probabilities that Respondent registered and is using the disputed domain name 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 <walmartpickup.com> be transferred to Complainant.
Date: November 27, 2015