Complainant is Wal-Mart Stores, Inc. of Bentonville, Arkansas, United States of America (“U.S.”) represented by Drinker, Biddle & Reath, LLP, U.S.
Respondent is UFCW International Union of Washington, District of Columbia, U.S.
The Disputed Domain Names <walmartat50.com>, <walmartat50.net> and <walmartat50.org> are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2012. The Complaint listed Domains by Proxy, LLC of Scottsdale, Arizona as the respondent. On July 31, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On August 1, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 2, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 3, 2012, naming UFCW International Union as Respondent and removing Domains by Proxy, LLC as a named respondent.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on August 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 27, 2012. The Response was filed with the Center on August 27, 2012.
The Center appointed Michael A. Albert as the sole panelist in this matter on September 5, 2012. 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.
Complainant’s business was established in 1962 and is now one of the world’s largest companies. For fiscal year 2011, it had approximately USD 444 billion in sales. Complainant employs more than 2 million associates, serves retail customers over 200 million times per week, and operates 10,130 retail stores in 27 countries.
Complainant owns at least three federal incontestable trademark registrations for the mark WALMART in the United States. In connection with its retail store services, Complainant has continuously used its WALMART mark since at least 1962. In addition to the WALMART mark, Complainant owns numerous other registered marks that incorporate the WALMART mark. Complainant has also registered various domain names incorporating the WALMART mark, including <walmart.com> and <walmart50.com>.
Complainant registered <walmart50.com> in 2010 and, on July 11, 2011, launched a website commemorating Complainant’s fifty years in business. The site communicates historical information and information about anniversary celebrations and activities to Complainant’s employees and to the general public. It also allows employees to upload videos and stories, and read stories posted by other employees throughout the world.
The Disputed Domain Names were created on March 27, 2012. All three Disputed Domain Names lead to the same website. The bottom of the website includes reference to a group that calls itself “OURWalmart” and a group called “Making Change at Walmart” with connecting links to the groups’ websites. These groups are affiliated with Respondent. Neither Respondent nor these groups, however, are affiliated with Complainant in any way, and they have not received license or consent to use any of Complainant’s WALMART marks.
Complainant argues that the Disputed Domain Names are confusingly similar to its WALMART mark because the mark is well known, the Disputed Domain Names wholly incorporate the mark, and the only difference between the Disputed Domain Names and the mark is the addition of the generic term, “at” and a term associated with Complainant and its 50th business anniversary, “50.”
Complainant asserts that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because Respondent is not affiliated with Complainant and does not have a license or permission to use the WALMART mark. Complainant also argues that Respondent is not making a protected noncommercial or fair use of the Disputed Domain Names because, regardless of the underlying goals of Respondent and its affiliated groups, Respondent chose confusingly similar domain names in furtherance of a bad-faith attempt to create and capitalize on confusion. Specifically, Complainant alleges that Respondent has purposely used the website to create confusion as to whether it is affiliated with Complainant. Complainant contends that Respondent’s use is commercial because Respondent is attempting to gain financial advantage by engaging in activities that will lead to collection of dues and other payments to Respondent. As evidence of Respondent’s attempt to collect dues and other payments, Complainant has submitted the declaration of Karen Casey, Senior Vice President of Labor Relations for Complainant, as well as flyers and membership cards distributed by the group OURWalmart to Complainant’s employees.
Complainant argues that Respondent used the Disputed Domain Names in bad faith because the Disputed Domain Names were specifically chosen to create the false impression of an affiliation between Complainant and Respondent, because Complainant’s federal registration of the WALMART mark put Respondent on notice of Complainant’s rights to the mark, because the WALMART mark is famous and distinctive, and because Respondent’s website that is operated at the Disputed Domain Names seeks to extract payments from Complainant’s employees and associates.
Complainant requests that the Disputed Domain Names be transferred to Complainant.
Respondent asserts that the Disputed Domain Names are not confusingly similar to Complainant’s WALMART mark and argues that Complainant is comparing the Disputed Domain Names to Complainant’s domain name <walmart50.com>, rather than making the appropriate comparison to the WALMART mark.
Respondent argues that it has rights and legitimate interests with respect to the Disputed Domain Names because they do not result in financial gain for Respondent and because the website operated at the Disputed Domain Names is a complaint website, which is a legitimate interest. Respondent also argues that it has legitimate interests because it is in an entirely separate market, and would therefore not benefit financially from any losses suffered by Complainant.
Lastly, Respondent contends that it registered and is using the Disputed Domain Names in good faith. Respondent argues that good faith is evidenced by the fact that it has no intention of selling the Disputed Domain Names to Complainant and because it is not in a competitive commercial relationship with Complainant. Respondent further argues it uses the Disputed Domain Names in good faith because it has in no way attempted to attract Internet users for its own commercial gain.
Respondent requests that the Panel ignore Complainant’s Exhibit L to the Complaint, the declaration of Karen Cassidy, because the majority of the declaration consists of hearsay and because Respondent did not have a chance to question the declarant or the employees relied upon by the declarant.
Pursuant to paragraph 4(a) of the Policy, for each domain name in dispute, Complainant must prove each of the following:
(i) the Disputed 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 Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Disputed Domain Names in this case are <walmartat50.com>, <walmartat50.net>, and <walmartat50.org>. Each of the Disputed Domain Names incorporates Complainant’s WALMART mark entirely, with the only difference between Complainant’s mark and the Disputed Domain Names being the addition of the words “at,” and “50,” and the addition of a generic top-level domain (gTLD) for each (“.com,” “.org,” and “.net”).
Prior UDRP panels have found where a domain name wholly incorporates a complainant’s registered trademark, that alone can be sufficient to establish that the domain name is confusingly similar under the Policy, despite the addition of other words. See, e.g., Dell Inc. v. George Dell and Dell Net Solutions, WIPO Case No. D2004-0512; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. It is also well established that a gTLD is “completely without legal significance” for purposes of determining whether a domain name is identical or confusingly similar to a particular trademark or service mark. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696.
Moreover, the addition of a generic word such as “at” or a number such as “50” does not detract from the confusing similarity, particularly where the number “50” is also used in conjunction with Complainant’s mark in its own registered domain name <walmart50.com>. See eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307.
The Panel finds that the Disputed Domain Names <walmartat50.com>, <walmartat50.org>, and <walmartat50.net> are confusingly similar to Complainant’s WALMART mark.
The burden rests with Complainant to establish that Respondent has no rights or legitimate interests in the Disputed Domain Names. Advance Magazine Publishers Inc. v. Vanilla Limited/Domain Finance Ltd. / Minakumari Periasany, WIPO Case No. D2004-1068. Where a mark is as famous and well known as the WALMART mark, there is a presumption that no one but Complainant has any rights or legitimate interests in using a domain name that incorporates it. See Wal-Mart Stores, Inc. v. OUR Walmart, WIPO Case No. D2011-0783. However, paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances which would, if established by Respondent with concrete evidence, be sufficient to demonstrate that Respondent does have rights or legitimate interests in the Disputed Domain Names. This list includes Respondent’s “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.”
Complainant has proven, and Respondent does not contest, that Respondent has no affiliation with Complainant and has not received a license or consent to use the WALMART mark. Instead, Respondent contends that it has rights or legitimate interests in the Disputed Domain Names because it is making a legitimate noncommercial or fair use without intent to mislead customers or tarnish the trademark for commercial gain.
Respondent argues that it does not seek to gain any commercial benefit from its use of the Disputed Domain Names, but rather seeks only to provide Complainant’s employees with a free, open forum to fully describe their experiences with Complainant. Specifically, Respondent contends that it uses the Disputed Domain Names to provide a “complaint website,” which has been recognized as a legitimate interest even where the domain name incorporates a complainant’s trademark. See Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers, WIPO Case No. D2000-0190. Complainant argues that Respondent’s use is commercial because Respondent seeks to collect dues and payments to Respondent.
Even if the Panel were to accept Respondent’s position that its use of the Disputed Domain Names is noncommercial, but rather is complaint or criticism oriented that is not necessarily the end of the matter.. Bonneterie Cevenole S.A.R.L. v. Sanyouhuagong, WIPO Case No. D2001-1309, and more recently the decision in Sutherland Institute v. Continuative LLC, WIPO Case No. D2009-0693. Specifically, in this case, there is also a question in this Panel’s view as to whether the particular use of the Disputed Domain Names contributes to an impermissible likelihood of confusion which may preclude the Respondent from claiming a safe-harbor defense based on a positive right or legitimate interest under the second element of the Policy.
In particular, the website linked to the Disputed Domain Names uses not just the WALMART mark but also the same or similar colors and font used by Complainant in conjunction with its use of the mark. Nowhere does the website disclose or clearly disclaim that Respondent and the other groups featured on the website are not affiliated with Complainant. To the contrary, an Internet user may have to click on one of the logos for OURWalmart or Making Change at Walmart linking to the groups’ respective websites to discover that the groups and, accordingly, the website are not associated with Complainant. While on a closer reading it becomes increasingly apparent that the content is of a critical nature, the website at first glance appears to this Panel to be associated with Complainant.
Moreover, nothing in the Disputed Domain Names themselves alerts Internet users to the fact that they are visiting a criticism site. Bonneterie, supra. Especially in light of Complainant’s 50th business anniversary website, Internet users may well expect to be visiting a site of Complainant. Given that there is no disclaimer anywhere on the website associated with the Disputed Domain Names, and that the hyperlinks to websites for OURWalmart or Making Change at Walmart are small and located at the bottom of the website, it is plausible to this Panel that an Internet user visiting Respondent’s website may well not (at least not before undertaking a closer reading) discover that it is not associated with Complainant. This raises questions of whether the degree of confusion created is permissible under the second element of the Policy.
For reasons which the Panel discusses further below under bad faith, this Panel is therefore reluctant to make any affirmative finding in Respondent’s favor of rights or legitimate interests in the Disputed Domain Names, following the approach in Sutherland, supra.
Lastly, Complainant must establish that the Disputed Domain Names were both registered in bad faith and are used in bad faith. Paragraph 4(b) of the Policy presents a non-exhaustive list of circumstances considered sufficient to demonstrate registration and use in bad faith. The Panel can also look to other circumstances, including the renown of Complainant’s trademark. Polaroid Corporation v. Jay Strommen, WIPO Case No. D2005-1005.
Complainant first argues that the renown of the WALMART mark establishes that the Disputed Domain Names were registered, and are used, in bad faith. Complainant also asserts that Respondent used a privacy service to mask its identity as the registrant, and that this is further evidence that Respondent registered and uses the Disputed Domain Names in bad faith. Even assuming the renown of the WALMART mark and the use of a privacy service to mask the registrant’s identity could evidence bad faith in the registration of the Disputed Domain Names, these facts alone do not establish that the Disputed Domain Names were also used in bad faith.
Complainant argues that Respondent uses the Disputed Domain Names in bad faith by capitalizing on Complainant’s goodwill to extract payments from Complainant’s employees and associates. However, while Complainant submits evidence, which Respondent urges the Panel not to consider, purporting to demonstrate that Respondent engages in other commercial activities involving interactions with Complainant’s employees, Complainant does not submit any evidence that Respondent actually uses the Disputed Domain Names themselves for a commercial purpose. Indeed, no commercial purpose is apparent from the website associated with the Disputed Domain Names.
The only activity that appears to have any possible commercial purpose is the group OURWalmart’s handing out membership cards to Complainant’s employees. Although the membership cards request banking information for the purpose of dues payments, the cards do not list any of the Disputed Domain Names and do not even indicate an affiliation with Respondent. Further, as Respondent aptly notes, actions taken by OURWalmart in furtherance of its membership campaign are separate from any actions relating to the Disputed Domain Names.
Although above the Panel declined to find that Respondent has affirmative rights or legitimate interests in the Disputed Domain Names, the Panel nonetheless finds that Complainant has failed to establish that Respondent has used the Disputed Domain Names in bad faith in the circumstances of this use. While the fact that Respondent’s use may be neither legitimate nor fair because of the degree of impermissible confusion created is probative of bad faith, it is not dispositive in this case. The Panel finds it particularly significant that Respondent is not in competition with Complainant, and is not using the Disputed Domain Names to its own commercial advantage; there is neither advertising nor requests for financial support on Respondent’s website. Respondent has targeted its websites principally at providing a forum to share criticism of Complainant, and appears to have genuinely used them as such. That there is a significant risk of confusion as to whether the Disputed Domain Names are affiliated with Complainant suffices to establish a lack of rights or legitimate interests in the Disputed Domain Names, but alone is not necessarily sufficient to establish that Respondent uses the Disputed Domain Names in bad faith. Sutherland Institute v. Continuative LLC, supra. No other facts cited by Complainant indicate that the Disputed Domain Names are used in bad faith. The Panel, therefore, finds that Complainant has failed to establish that Respondent has used the Disputed Domain Names in bad faith.
For the foregoing reasons, the Complaint is denied.
Michael A. Albert
Sole Panelist
Dated: September 19, 2012