WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wal-Mart Stores, Inc. v. Wang Yulong

Case No. D2013-2157

1. The Parties

The Complainant is Wal-Mart Stores, Inc. of Bentonville, Arkansas, United States of America (“US”), represented by Drinker, Biddle & Reath, LLP, US.

The Respondent is Wang Yulong of China.

2. The Domain Names and Registrars

The disputed domain names <c9walmart.com>, <diablowalmart.com>, <d3walmart.com>, <gamewalmart.com>, <ncwalmart.com>, <pso2walmart.com>, <runescapewalmart.com> and

<titanwalmart.com> are registered with Xin Net Technology Corp. and Beijing Innovative Linkage Technology Ltd. dba dns.com.cn. (the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2013. On December 13, 2013, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On December 16, 2013, the Registrars transmitted by email to the Center their verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On December 18, 2014, the Center transmitted an email to the parties in both English and Chinese regarding the language of the proceeding. On December 20, 2014, the Complainant submitted its request that English be the language of the proceeding by email to the Center. The Respondent did not submit any comments on the language of the proceeding.

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 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 28, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 29, 2014.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on February 11, 2014. 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’s business was established in 1962 and is one of the world’s largest companies and the world’s largest retailer with approximately USD 466.1 billion in sales for the fiscal year 2012. The Complainant operates more than 10,800 stores in 27 countries around the world. The Complainant operates over 4,600 facilities in sixteen markets worldwide. Through its retail stores, the Complainant offers a wide variety of consumer products and services, including, without limitation, consumer electronics, toys, video games, gaming systems, a wide variety of personal media devices, and thousands of other products. The Complainant’s reputation for offering a wide variety of high quality retail products and services at consistently low prices has made the trademark WALMART a household name, not only in the US, but around the world.

The Complainant also offers retail store services at its website at <walmart.com> in addition to its other websites, including <walmartstore.com>, <walmartstores.com> and <corporatewalmart.com>. The Complainant’s websites are a vital part of its business, and contribute to its online identity and brand. Furthermore, the Complainant offers for sale many of the games referenced in the disputed domain names, and/or offers for sale games produced by the relevant game manufacturers.

The Complainant has been using the WALMART mark in connection with retail store services since at least as early as 1962. In addition to long standing common law trademark rights in its WALMART mark, the Complainant owns numerous trademark registrations throughout the world, including, for example, the following representative US trademark registrations:

- Incontestable Registration No. 1,322,750 – WAL-MART covering “retail department store services” in Class 42; registered on February 26, 1985; based on use since July 1, 1962.

- Incontestable Registration No. 1,783,039 – WAL-MART covering “retail department store services” in Class 42; registered on July 20, 1993; based on use since July 1, 1962.

- Incontestable Registration No. 2,891,003 – WAL MART & Design covering “retail department store services” in Class 35; registered October 5, 2004; based on use since March 1992.

- Registration No. 3,211,768 – WAL-MART.COM JUST A CLICK AWAY covering “on-line retail department store services; on-line retail store services featuring downloadable prerecorded music and video” in Class 35; registered on February 20, 2007; based on use since March 14, 2004.

- Registration No. 4,180,335 – WALMART.COM covering “on-line retail store services featuring a wide variety of consumer goods of others,” registered July 24, 2012; based on use since January 31, 2000.

- Registration No. 3,505,969 – SAVE MONEY. LIVE BETTER. covering “online retail department store services; retail department store services” in Class 35; registered on September 23, 2008; based on use since at least as early as September 11, 2007.

The Complainant has also been using its various registered domain names incorporating the WALMART mark, including <walmart.com>, <walmartcontacts.com>, <walmartpharmacy.com>, <mywalmart.com> and <walmartcorporate.com> to offer for sale a wide variety of consumer products and services.

The Respondent acquired the first of the disputed domain names on or around April 3, 2011, which post-dates the Complainant’s adoption of its WALMART mark by nearly fifty (50) years. Throughout 2011, 2012, and 2013 the Respondent registered the additional disputed domain names. The Respondent uses seven of the eight disputed domain names to resolve to websites purporting to sell virtual items or virtual currency used in Massively Multiplayer Online Role-Playing Games (“MMORPGs”). Specifically, the Respondent purports to sell items for use in the following MMORPGs: Diablo III, Runescape, Continent of the Ninth, Phantasy Star Online 2, Tibia, and Titan (a Blizzard Entertainment game not yet in production). The disputed domain names <ncwalmart.com> resolves to a website selling items for the dame Blade & Soul created by “NC Soft” – a manufacturer whose MMORPG Guild Wars 2 is offered for sale by the Complainant. Finally, the disputed domain name <gamewalmart.com> resolves to the Respondent’s website <okaygoods.com>, which offers the same game-related goods and services, but for a wider variety of video games – many of which are also sold by the Complainant. Notably, <titanwalmart.com> does not resolve to an active site or page.

On October 18, 2012, November 30, 2012, January 18, 2013, May 23, 2013, and finally again on October 18, 2013 the Complainant sent cease and desist letters, via certified mail and email, to the Respondent stating that the use and registration of the disputed domain names infringe the Complainant’s rights in the famous WALMART mark and demanding transfer of the disputed domain names. In apparent response to the Complainant’s cease and desist letters, the Respondent registered an additional one of the disputed domain names, <titanwalmart.com>, which was registered on April 1, 2013. Indeed, the Respondent has renewed nearly all of the disputed domain names in 2013, even though the Complainant had already notified the Respondent of its clear rights to each of the disputed domain names. At all relevant times, the majority of the disputed domain names have resolved to websites prominently featuring Complainant’s WALMART mark and famous slogan, and offering for sale goods and services related to and/or in direct competition with products offered for sale by the Complainant. At all relevant times, the domain names <titanwalmart.com> and <pso2walmart.com>have been parked by the Respondent, and the Respondent has made no bona fide noncommercial use of the disputed domain names. The <pso2walmart.com> resolves to a pay-per-click site.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are identical or confusingly similar to the Complainant’s trademark on the following grounds:

Complainant’s incontestable U.S. trademark registrations for the WALMART mark are conclusive evidence of the validity of the mark, Complainant’s ownership therein, and Complainant’s exclusive right to use the mark in connection with an expansive array of retail store services and other goods and services.

1. The only differences between the disputed domain names and Complainant’s famous WALMART mark are: (i) the addition of the generic Top-Level Domain (gTLD) “.com” or “.net” and (ii) the addition of a third-party trademark, numbers, letters, and/or a generic term. The disputed domain names otherwise include the Complainant’s mark, in its entirety, as the dominant element of the disputed domain names. The differences are, therefore, inconsequential.

2. It is well settled that addition of a gTLDis insignificant to the issue of confusing similarity. Previous UDRP panels have held that the addition of a third-party trademark does not diminish the confusing similarity; indeed, it may increase the likelihood of confusion.

3. Further, the addition of numbers, letters and/or generic terms does not diminish confusing similarity.

4. Respondent’s addition of third-party marks identifying MMORPGs, such as DIABLO,”and TIBIA or abbreviated trademark signifiers, e.g., “d3” for DIABLO 3 , “ NC ” for the game producer NC Soft , and “ c9 ” for Continent of the Ninth does not diminish the confusing similarity between Complainant’s WALMART mark and the disputed domain names. In fact, it may create even more grave opportunities for confusion given the Complainant’s sale of MMORPGs in its brick-and-mortar and online retail stores.

5. The disputed domain names wholly subsume the Complainant’s WALMART mark. As such, the average Internet user will wrongly assume that the Respondent is affiliated with, sponsored by, or otherwise related to the Complainant.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names on the following grounds:

1. The mere registration of a domain name does not establish rights or legitimate interests in that name.

2. Under the Policy, the Respondent bears the burden of proving that it has rights or a legitimate interest in the disputed domain names. The Respondent cannot overcome this burden for at least two reasons: (i) the Respondent has no rights in the WALMART mark, and (ii) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Complainant has not granted the Respondent a license or any other authorization to use or register its WALMART mark as part of a domain name or otherwise. Moreover, the Respondent admitted in its email communications with the Complainant that it was aware of the Complainant’s WALMART mark when the disputed domain names were registered. This knowledge is further evidenced by the Respondent’s intentional copying of the Complainant’s additional indicia of source the “Save Money. Live Better” slogan at <c9walmart.com>, <diablowalmart.com>, and <ncwalmart.com>. The Respondent is identified in the WhoIs records as Wang Yulong. Nothing in the WhoIs records for the disputed domain names indicates that the Respondent is commonly known by the disputed domain names or the WALMART trademark.

3. The Respondent has not, and could not have, therefore, used the disputed domain names to make a bona fide offering of goods or services prior to receiving notice of the Complainant’s dispute or to make legitimate use of the disputed domain names for noncommercial purposes.

4. Instead, seven of the eight disputed domain names resolve to active sites, from which the Respondent profits from the goodwill associated with the Complainant’s WALMART mark. Each of these disputed domain names resolves to a website that uses the famous WALMART mark in the domain name and most use the WALMART mark in the website header. Some of these sites even display infringing versions of the Complainant’s registered trademark SAVE MONEY. LIVE BETTER. Moreover, each of these active sites sells products for the Respondent’s commercial gain, or provides click-through links that likewise profit the Respondent. The remaining domain name does not resolve to an active site, and, therefore, contains nooffering of goods or services, nor is it used for a legitimate noncommercial purpose.

The Complainant contends that the disputed domain names were registered and are being used in bad faith on the following grounds:

1. The Complainant’s incontestable federal registrations for the WALMART mark provide constructive notice of the Complainant’s rights therein, and the Complainant’s federal registrations predate the registration date of the disputed domain names. Accordingly, the Respondent had constructive knowledge of the Complainant’s rights in the WALMART mark when it registered the disputed domain names.

2. The Respondent admits to having actualknowledge of the Complainant’s WALMART mark at the time the Respondent registered the disputed domain names.

3. It would be implausible to find that the Respondent did not have actual knowledge given the worldwide fame of the Complainant’s trademark and the fact that the Respondent used the WALMART mark and mimicked the Complainant’s well known slogan “Save Money. Live Better” on a number of the underlying websites.

4. Such website content has been deemed deceptive and likely to cause confusion by leading consumers into believing that the disputed domain names are registered to, or connected with, the Complainant.

5. The Respondent’s registration of the disputed domain names with knowledge, both constructive and actual, of the Complainant’s rights in the identical WALMART mark evidences bad faith.

6. The Respondent’s failure to use the disputed domain name <titanwalmart.com> to identify an active website constitutes passive holding and demonstrates bad faith use of a registered domain name under the Policy.

7. Further, the Respondent has been using the disputed domain names to generate revenue both from the sale of products are related to, if not directly competitive with, those sold by the Complainant under its WALMART mark, and through pay-per-click advertising on <pso2walmart.com>, which feature links to third party websites promoting and selling goods and services that compete directly with the goods and services that the Complainant markets in connection with its WALMART mark.

8. The Respondent’s registration of a number of domain names incorporating Complainant’s WALMART mark supports a conclusion that the Respondent registered and has used the disputed domain names in bad faith to trade off the goodwill associated with the WALMART mark. This is particularly true, where, as here, the Respondent has previously been the subject of an adverse UDRP proceeding in connection with misuse of the Complainant’s WALMART mark.

9. The Respondent continues to maintain the disputed domain names, despite the Complainant’s stop-use letters demanding that the Respondent refrain from continuing to infringe upon the Complainant’s famous WALMART trademarks. UDRP panels have found that these circumstances also evidence bad faith under the Policy.

10. Finally, the WALMART mark is famous and distinctive and has been used by one of the largest corporations in the world for over fifty years. The WALMART mark and WALMART domain names were used and registered well before the Respondent registered the disputed domain names. In fact, at least one previous UDRP panel has determined that in light of the fact that the WALMART mark is “well-known,” a respondent could not have been unaware of the existence of the mark, and therefore, the disputed domain names could only have been registered in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

According to the information received by the Center from the Registrars, the language of the registration agreement for the disputed domain names is in Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the case file, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be in English. Complying with the instructions from the Center, the Complainant has submitted a request that the proceeding should be in English, to which the Respondent has not objected.

After considering the circumstances of the present case and the submission of the Complainant’s request, the Panel is of the opinion that the language of the present proceeding shall be English and the decision will be rendered in English. The Panel based its decision on the following reasons:

(i) The Panel’s discretion under the Policy

Paragraph 11 of the Rules provides:

“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.”

Thus, the parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.

(ii) The circumstances of this proceeding

One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.

In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, the Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest in the interests of fairness, the language of the proceeding ought to be English. In particular, the Panel notes that (a) the disputed domain names are made up of letters in Ascii-Script and could be pronounced phonetically in English; (b) the websites to which the disputed domain name were pointed were in English which suggests that the Respondent understands English; (c) the Respondent has demonstrated repeatedly that he has sufficient capacity to present his case in English as he has responded to the Complainant’s email communications in English; (c) the Center has notified the Respondent of the proceeding in both Chinese and English. The Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. The Panel is of the view that if the Respondent had experienced difficulty with the English language, it could have communicated this to the Center and the Panel would have ruled accordingly. However, the Respondent has chosen not to respond to the Complainant’s allegations. Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.

In considering the circumstances of the present case, the Panel decides that the language of the proceeding shall be English and the decision will be rendered in English.

6.2. Substantive Elements of the Policy

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain names, the Complainant must establish that each of the three following elements is satisfied:

1. the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

2. the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

3. the disputed domain names have been registered and are being used in bad faith.

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.

Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the WALMART trademark for retail services in many countries in the world. The Panel finds that the Complainant’s WALMART mark is a widely-known mark for retail services offered by the Complainant.

In assessing the degree of similarity between the Complainant’s trademark and the disputed domain names, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s trademark and the disputed domain names is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet user seeking to purchase or download information about the Complainant’s products.

The disputed domain names consist of the Complainant’s trademark WALMART in its entirety, the addition of a third-party trademark, numbers, letters, and/or a generic term and the generic Top-Level Domain (gTLD) suffix “.com”. The Panel is of the view that the most prominent and distinctive part of the disputed domain names is the term “walmart” which for all intents and purposes is identical to the Complainant’s registered trademark WALMART. Given the fame and notoriety of the Complainant’s WALMART trademark, the addition of a third-party trademark, numbers, letters, and/or a generic term and the addition of suffixes such as “.mobi”; “.com” or “.net” being the gTLD is not a distinguishing factor. The Panel accepts the contention that the addition of third-party marks identifying MMORPGs, such as DIABLO and TIBIA or abbreviated trademark signifiers, e.g., “d3” for DIABLO 3 “NC” for the game producer NC Soft, and “c9” for Continent of the Ninth does not diminish the confusing similarity between Complainant’s WALMART mark and the disputed domain names. On the contrary, it may create more opportunities for confusion given the Complainant’s sale of MMORPGs in its brick-and-mortar and online retail stores.

Bearing in mind the following factors, in particular (a) the widespread reputation and high degree of recognition of the Complainant’s WALMART trademark as a result of its fame and notoriety and (b) the distinctive character of the Complainant’s WALMART trademark, the Panel therefore finds that the disputed domain names are confusingly similar to the WALMART trademark in which the Complainant has rights.

The Panel finds for the Complainant on the first part of the test.

B. Rights or Legitimate Interests

Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:

(1) there is no evidence of a legitimate use by the Respondent of the disputed domain names or reasons to justify the choice of the term “walmart” in its business operations;

(2) there is no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the WALMART trademark;

(3) there is no indication whatsoever that the Respondent is commonly known by the disputed domain names and/or is using the disputed domain names in connection with a bona fide offering of goods or services;

(4) the Complainant and its WALMART trademark enjoy a widespread reputation and high degree of recognition as a result of its fame and notoriety in the retail services market and is a registered trademark in many countries all over the world. Consequently, in the Panel’s view, in the absence of contrary evidence from the Respondent, the WALMART trademark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.

The Panel notes the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. Based on the above reasons, the Panel finds that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, 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 name or a name corresponding to the domain name 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 name, 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 name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain names. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against it. In particular, the Respondent has failed to make submissions to demonstrate that it has rights or legitimate interests in the disputed domain name.

In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent appears to be unable to adduce evidence of any rights to or legitimate interests in the disputed domain name.

The Panel finds for the Complainant on the second part of the test.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:

(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 the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the 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 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 the respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service of the respondent’s website or location.

The above circumstances are indicative of registration and use of a domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of a domain name in bad faith by a respondent in appropriate cases.

One important consideration in the Panel’s assessment of whether the Respondent has registered and is using the disputed domain names in bad faith is prior knowledge on the part of the Respondent of the Complainant’s rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders. Taking into account the worldwide reputation of the Complainant and its WALMART trademark, as well as the market presence of the Complainant in numerous countries, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain names. In fact, the Complainant has adduced evidence to show that the Respondent has admitted to having actual knowledge of Complainant’s WALMART mark at the time Respondent registered the disputed domain names. Furthermore, the Complainant’s WALMART brand is widely available on the Internet via its many other websites and domain names as stated above. A simple search on the Internet would reveal the presence of the Complainant’s trademark and domain names. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain names. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain names, failing which the Panel draws the conclusion that the disputed domain names were registered in bad faith with intent to create an impression of association with the Complainant and its products.

Where the Respondent has chosen to register disputed domain names that are identical or confusingly similar to the Complainant’s trademark and where the trademark in question has through substantial use acquired worldwide fame, reputation and notoriety, a reasonable conclusion is that the trademark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, the burden on the Respondent to show that the choice of the disputed domain names were made legitimately and in good faith for the genuine offering of goods or services on the Internet is a very heavy one. There is no evidence that the Respondent has used or intends to use to the disputed domain names for purposes of bona fide offering of goods and services over the Internet. On the contrary, the Complainant has adduced evidence to show that Respondent has been using the disputed domain names to generate revenue both from the sale of products related to, if not directly competitive with, those sold by the Complainant, and through pay-per-click advertising on <pso2walmart.com>, which features links to third party websites promoting and selling goods and services that compete directly with the goods and services that the Complainant markets in connection with its WALMART mark. In this regard, the Panel finds that the Respondent has not provided any plausible explanation for its conduct.

The Panel finds that the Complainant has adduced evidence and proved that by using confusingly similar disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s websites under paragraph 4(b)(iv) of the Policy. The Panel finds that given the widespread fame of the Complainant’s WALMART trademark and a lack of plausible explanation for the choice of incorporating the Complainant’s famous trademark in the disputed domain names, the use of the disputed domain names to generate revenue both from the sale of products that are related to, if not directly competitive with, those sold by the Complainant, and through pay-per-click advertising on <pso2walmart.com>, which features links to third party websites promoting and selling goods and services that compete directly with the goods and services that the Complainant markets in connection with its WALMART mark are certainly relevant factors indicating bad faith registration and use.

Thus, the Panel finds for the Complainant on the third part of the test.

D. Requested Remedy

The Panel notes that some of the disputed domain names contain third party trademarks. There is no evidence in the case file which indicate that the consent of the owners of such trademarks, who have a potential interest in the transferred domain names, has been obtained. However, neither the Policy nor the Rules expressly require such consent and the Panel accepts the Complainant’s request for transfer of the disputed domain names, noting that such an order is made expressly without prejudice to any rights which may be asserted by the third party trademark owners.

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 names <c9walmart.com>, <diablowalmart.com>, <d3walmart.com>, <gamewalmart.com>, <ncwalmart.com>, <pso2walmart.com>, <runescapewalmart.com> and <titanwalmart.com> be transferred to the Complainant.

Susanna H.S. Leong
Sole Panelist
Date: February 25, 2014