The Complainant is Wal-Mart Stores, Inc., United States of America, represented by Haynes and Boone, LLP, United States of America.
The Respondent is Hostmaster Hostmaster, Domain Park Limited, Germany.
The disputed domain names <walmaetemployment.com>, <walmartbenbefits.com>, <walmartcreditcadr.com>, <walmart-digitalcams.com>, <walmartdistrubutioncenter.com>, <wal-mart-electronics.com>, <wal-martequiserve.com>, <walmarthire.com>, <wammmart.com> are registered with Moniker Online Services, LLC.
The disputed domain names <walmairt.com>, <walmartbenerfits.com>, <walmartperpaid.com>, <waltmartpharmacy.com>, <walmartschoolsupplies.com>, <wwwalmartbenefits.com> are registered with Rebel.com Services Corp.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2008. On July 30, 2008, the Center transmitted by email to Moniker Online Services and Rebel.com Services Corp requests for registrar verification in connection with the domain names at issue. On July 30, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and also advising the Center that it was not the registrar for the following domain names <walmairt.com>, <walmartbenerfits.com>, <walmartperpaid.com>, <waltmartpharmacy.com>, <walmartschoolsupplies.com>, <wwwalmartbenefits.com>. On July 31, 2008 Rebel.com Services Corp transmitted by email to the Center its verification response for the following domain names: <walmairt.com>, <walmartbenerfits.com>, <walmartperpaid.com>, <waltmartpharmacy.com>, <walmartschoolsupplies.com>, <wwwalmartbenefits.com>. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 7, 2008. The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 August 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 7, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 8, 2008.
The Center appointed Adam Taylor as the sole panelist in this matter on September 26, 2008. 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 Complainant is the world's largest retailer, as well as one of the fifteen largest companies in the world, with more than $370 billion in sales last year. Wal-Mart operates more than 3,500 stores worldwide under the WAL-MART mark. Through both retail and online stores, the company offers a wide variety of products and services in the electronics, financial, clothing, food, toys, sports, fitness, books, music, furniture, pharmacy, home products, automotive, and other industries.
The Complainant owns numerous registered trade marks for WAL-MART in many countries including U.S. Registration Number 1,322,750, registered February 26, 1985, U.S. Registration Number 1,783,039, registered July 20, 1993, and U.S. Registration Number 2,891,003, registered October 5, 2004
The Complainant makes further use of the mark WAL-MART and variations thereof on the Internet, including in relation to many websites such as those located at <www.walmart.com>, <www.wal-mart.com>, <walmartbenefits.com>, <wal-martcorporate.com>, and <www.walmartstores.com>.
The Respondent registered the disputed domain names on the following dates:
|
Domain Name |
Creation Date |
|
<wal-mart-electronics.com> |
September 13, 2007 |
|
<walmartcreditcadr.com> |
September 5, 2007 |
|
<wammmart.com> |
August 31, 2007 |
|
<walmart-digitalcams.com> |
August 17, 2007 |
|
<walmarthire.com> |
September 3, 2007 |
|
<walmartdistrubutioncenter.com> |
August 17, 2007 |
|
<walmaetemployment.com> |
October 19, 2007 |
|
<wal-martequiserve.com> |
September 2, 2007 |
|
<walmartbenbefits.com> |
August 21, 2007 |
|
<waltmartpharmacy.com> |
January 7, 2008 |
|
<walmairt.com> |
January 6, 2008 |
|
<wwwalmartbenefits.com> |
September 4, 2007 |
|
<walmartschoolsupplies.com> |
August 9, 2007 |
|
<walmartperpaid.com> |
August 25, 2007 |
|
<walmartbenerfits.com> |
September 5, 2007 |
In May 2008, all of the disputed domain names resolved to websites consisting of sponsored links to and pop-up advertisements for sites offering a range of products and services competing with those of the Complainant and in most cases including links to the Complainant's own sites.
The Respondent has been the respondent in at least 31 previous UDRP cases in which it was ordered to transfer the domain names in issue. These included two previous cases by the Complainant against the Respondent involving over 70 domain names. See Wal-Mart Stores, Inc. v. Domain Park Limited, NAF Case No. FA 1076255 (Nat. Arb. For. October 31, 2007) and Wal-Mart Stores, Inc. v. “Wal-Mart Stores,” WIPO Case No. D2007-1811 (WIPO February 12, 2008).
Identical or Confusingly Similar
The disputed domain names are confusingly similar to the WAL-MART marks because they incorporate (and are visually and phonetically similar to) the Complainant's well-known and distinctive WAL-MART marks in their entirety.
Many of the disputed domain names consist primarily of the term WAL-MART or a misspelling thereof, combined with generic or descriptive term. It has been well-established that a domain name that wholly incorporates a complainant's registered mark is particularly likely to be confusingly similar where additional words in the domain are generic.
The Respondent's combination of the use of the WAL-MART marks with generic or descriptive terms such as “electronics,” “hire,” “digital-cams,” “schoolsupplies,” “pharmacy,” and “benefits” and displaying links to electronic goods, prepaid cards and other products and services which are similar to those promoted and offered under the Complainant's WAL-MART marks only heightens the confusion in the minds of consumers.
UDRP panels have consistently found that the practice of “typosquatting” does not serve to distinguish a domain name from a complainant's trademark. Several of the disputed domain names demonstrate typosquatting activity by the Respondent. The domain <walmartperpaid.com> contains the WAL-MART mark in conjunction with a typographical variation of the generic word “pre-paid,” a word that has obvious relationship to the pre-paid cards offered under the WAL-MART marks through the Complainant and its affiliates. Similarly, <walmartcreditcadr.com>, <walmartbenerfit.com>, <walmartbenbefits.com>, and <walmartdistrubutioncenter.com> contain the WAL-MART mark together with typographical variations of generic words such as “stores,” “credit cards,” “benefits,” and “distribution center” that call to mind a retailer such as the Complainant. The domains <walmaetemployment.com>, <walmairt.com>, and <waltmartpharmacy> contain typing errors of the WAL-MART mark.
Accordingly, <walmartperpaid.com>, <walmartcreditcadr.com>, <walmartbenerfit.com>, <walmartbenbefits.com>, <walmartdistrubutioncenter.com>, <walmaetemployment.com>, <walmairt.com>, and <waltmartpharmacy.com> are confusingly similar to the WAL-MART marks.
In regard to <wammart.com> and <walmairt.com>, prior panels have found that phonetic similarity can render a domain name confusingly similar to a trademark. <wammart.com> and <walmairt.com> are confusingly similar to the mark WAL-MART.
With respect to <wal-martequiserve.com>, the Respondent has joined the WAL-MART mark with the name of Equiserve (now Computershare), which is the transfer agent for the Complainant's publicly traded shares. Because of the connection between the Complainant and Equiserve, users of the Internet are likely to be confused that the domain <wal-martequiserve.com> is affiliated with the Complainant. Domain names consisting of a mere combination of two trademarks are considered as confusingly similar to such trademarks, especially when the overall impression suggests the domain names belong to the trademark owners.
Inclusion of additional “w”s cannot negate a finding that a domain name is otherwise confusingly similar to a trademark.
Removal of the dash in the WAL-MART marks is insufficient to eliminate the similarity between the disputed domain names and the WAL-MART marks.
It is evident that all of the disputed domain names are confusingly similar to the WAL-MART marks.
The Respondent has no rights or bona fide interest in the disputed domain names. The Respondent does not own a trademark registration for the WAL-MART marks, is not known by the name Wal-Mart, does not operate a business or other organization under the name Wal-Mart, and is not otherwise authorized to use the WAL-MART marks.
To the best of the Complainant's knowledge, the Respondent also has never used the disputed domain names for any bona fide, non-commercial use. It is well established that use of a domain name that resolves to a commercial link website “is not a bona fide offering of goods or services capable of giving rise to a right or legitimate interest in the domain name.” This is certainly true where the domain names at issue, as in the case here, resolve to sites offering links to third-party commercial websites grouped under a variety of headings, many of which relate to the Complainant's field of business.
The Respondent's demonstrated purpose and use of the disputed domain names is to confuse and divert consumers to its sites in order to aggregate advertising revenue through the use of sponsored links, thereby exploiting the WAL-MART marks for the Respondent's own profit. Such use is not a legitimate noncommercial or fair use of the disputed domain names.
Panels have recognized that when a domain name contains a complainant's well-known and world-famous mark in its entirety, such as the WAL-MART marks in the case at hand, it is virtually impossible that a respondent could demonstrate any legitimate use of the domain name.
For the above reasons, the Respondent clearly is not making any legitimate use of the disputed domain names. Nor does the Respondent have any rights or legitimate interests in the disputed domain names.
The Respondent has a well-documented pattern of knowingly registering domain names that are confusingly similar or identical to distinctive or famous marks, which supports a finding that the Respondent's registration and use of the offending Domain Name is in bad faith. See Policy, paragraph 4(b)(ii).
The Respondent has knowingly registered numerous domain names incorporating famous marks and has been the respondent in many (at least 31) proceedings brought under the UDRP. A prior panel concluded that Domain Park Limited's activity “establishes a pattern of registering domain names that incorporate third-party marks and is evidence of The Respondent's bad faith pursuant to Policy paragraph 4(b)(ii).” Morgan Stanley v. Domain Park Limited, NAF Case No. FA 1045852 (Nat. Arb. For. September 10, 2007). The complainants in all of those 31 proceedings satisfied all three elements required under the Policy.
The Respondent's intent to divert customers from the Complainant's legitimate sites for commercial gain, by creating confusion with the WAL-MART marks, constitutes evidence of bad faith registration and use of the disputed domain names. See Policy, para 4(b)(iv).
The Respondent's registration and use of the disputed domain names is in bad faith because the disputed domain names unlawfully trade on the name, recognition and goodwill associated with the WAL-MART marks.
The Respondent uses the disputed domain names to provide links to websites that sell products and services competing with those offered by the Complainant. Consumers searching for information concerning the Complainant are likely to become confused as to whether the Respondent is affiliated or associated with, or sponsored or endorsed by, the Complainant.
The presence of third-party links on the sites, the pop-up advertising, and the fact that the web pages at the offending disputed domain names offer new and different links each time they are accessed or refreshed show that the Respondent receives a financial benefit from its diversion of the Complainant's potential customers to its sites.
By intentionally creating a likelihood of confusion with the WAL-MART marks through unlawfully capitalizing on the name recognition and goodwill thereof to accrue advertising click-through revenue, the Respondent has undoubtedly registered and is using the disputed domain names in bad faith.
The fame of the Complainant's WAL-MART marks supports a finding of bad faith.
The Respondent is trading off the worldwide fame of the WAL-MART marks in the disputed domain names and on the corresponding websites to divert Internet traffic to sites competing with the Complainant to aggregate advertising revenue. The Complainant's distinctive and unique WAL-MART marks were coined by the Complainant and they have been used by the Complainant-one of the largest corporations in the world-for more than forty years. The marks had achieved a high level of global fame before the Respondent registered the disputed domain names.
The Respondent must have been aware of the Complainant's rights in its WAL-MART marks. It is inconceivable that the Respondent did not have knowledge of the Complainant's WAL-MART marks before the Respondent registered the disputed domain names.
The Respondent appears to have acquired the disputed domain names not only for generating advertising revenue, but also for potentially selling them for an amount greater than the costs directly related to the domain names, which evidences bad faith. See Policy, paragraph 4(b)(i).
Because the Respondent is not known by a name similar to Wal-Mart, nor does it have any apparent reason for selecting these disputed domain names besides profiting from the goodwill in the WAL-MART marks, the Respondent also likely selected the disputed domain names with the hope that the Complainant might resolve any potential dispute by offering to purchase them. Indeed, the websites to which the <wal-mart-electronics.com>, <wammart.com> and <wwwalmartbenefits.com> resolve state that they are for sale, and visitors are invited to make an offer to purchase the disputed domain names at <www.sedoparking.com>.
The Respondent's violations of its registration agreements further evidence bad faith.
For the above reasons, the Respondent registered and is using the disputed domain names in bad faith.
The Respondent did not reply to the Complainant's contentions.
The Complainant undoubtedly has rights in the mark WAL-MART by virtue of its many registered trade marks as well as its extensive worldwide trading activities under that name.
All of the disputed domain names include either the Complainant's distinctive trademark WAL-MART or a virtually identical version without the hyphen, WALMART, or a mis-spelling, i.e. “walmaet”, “walmairt”, “wammart”, “waltmart”..
All of the domain names (except <wal-martequiserve.com>, <wammmart.com>, <walmairt.com> and <wwwalmartbenefits.com>) also include one or more generic terms, or obvious mis-spellings of generic terms, which are referable to the Complainant's business, i.e. “employment”, “benbefits”, “creditcadr”, “digitalcams”, “distrubutioncenter”, “electronics”, “hire”, “benerfits”, “prepaid”, “pharmacy”, schoolsupplies, “benefits”.
The domain <wwwalmartbenefits.com> adds “ww” to the Complainant's mark in what is clearly intended to be a typo squatting variation of “www.”.
The domain <wal-martequiserve.com> is a combination of the Complainant's mark and another trademark EQUISERVE, the former name of the transfer agent for the Complainant's publicly traded shares.
All of the disputed domain names (disregarding the respective domain name suffixes) are confusingly similar to the Complainant's trademark for the reasons stated above.
The Panel therefore finds that the Complainant has established the first element of the Policy.
The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests thereby created. See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070.
The Complainant has not licensed or otherwise authorized the Respondent to use its trademark.
As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain names to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant's products and services. Such use of the disputed domain names could not be said to be bona fide.
There is no evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply.
The Panel finds that the Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain names and that the Complainant has therefore established the second element of the Policy.
The Panel has little difficulty in concluding that the disputed domain names were registered and used in bad faith.
It is obvious that the Respondent registered the disputed domain names with the Complainant's distinctive trademark in mind. All of the domain names include the mark, or a version of the mark without the hyphen, or an obvious misspelling of the mark.
Most of the domain names include generic terms (or mis-spellings thereof) relating to the Complainant's business.
The Respondent has been found in two previous UDRP cases to have registered and used in bad faith over 70 other domain names referable to the same mark.
The Respondent has not come forward to deny the Complainant's assertions of bad faith. It is difficult to conceive of any genuine reason why the Respondent would wish to register the disputed domain names and the Respondent has offered no explanation.
All of the disputed domain names have been used for websites consisting of sponsored links to and pop-up advertisements for sites offering a range of products and services competing with those of the Complainant and in most cases including links to the Complainant's own sites.
The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain names in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its websites for commercial gain by creating a likelihood of confusion with the Complainant's trademarks. The Panel therefore finds that the Complainant has established the third element of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <walmaetemployment.com>, <walmartbenbefits.com>, <walmartcreditcadr.com>, <walmart-digitalcams.com>, <walmartdistrubutioncenter.com>, <wal-mart-electronics.com>, <walmarthire.com>, <wammmart.com> <walmairt.com>, <walmartbenerfits.com>, <walmartperpaid.com>, <waltmartpharmacy.com>, <walmartschoolsupplies.com> and <wwwalmartbenefits.com be transferred to the Complainant.
The Panel orders that the domain name <wal-martequiserve.com> be cancelled, as requested by the Complainant.
Adam Taylor
Sole Panelist
Date: October 10, 2008