The Complainant is Wal-Mart Stores, Inc. of Bentonville, Arkansas, United States of America, represented by Drinker, Biddle & Reath, LLP, United States of America.
The Respondent is Minds and Machines Limited (Ireland) of Dublin, Ireland / Maurice Stephens, DataCol Technology of Los Angeles, California, United States of America.
The disputed domain name <walmart.beer> (the “Domain Name”) is registered with Minds + Machines Registrar Limited (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2015. On July 1, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 6, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 8, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 10, 2015.
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 the Respondent of the Complaint, and the proceedings commenced on July 15, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2015.
The Center appointed Ellen B. Shankman as the sole panelist in this matter on August 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.
The date of the Domain Name registration was confirmed by the Registrar to be March 18, 2015. The Complainant provided evidence of multiple trademark registrations for the mark WAL-MART and WALMART.COM including, inter alia, United States Trademark, No. 1,322,750, (registered on February 26, 1985) and United States Trademark, No. 4,180,335, (registered on July 24, 2012) that predate the date of the Domain Name registration for a variety of related goods services.
The Panel also conducted an independent search to determine that the Domain Name resolves to an unavailable webpage.
Since the Respondent did not respond, the facts regarding the use and fame of the Complainant’s mark are taken from the Complaint and are generally accepted as true in the circumstances of this case.
The Complainant alleges that it is the world’s largest retailer with approximately USD 473 billion in sales for fiscal year 2014. The Complainant’s international operations include more than 11,000 retail units in 27 countries, with e-commerce in 10 countries, and serve more than 245 million customers weekly.
The Complainant further alleges that it has used its WAL-MART mark since at least as early as 1962 in connection with retail store services and has expanded its uses to numerous goods and service, including sales of beer.
The Complainant also alleges that as a result of its longstanding and international use, the WAL-MART mark and the Complainant’s various domain names that include that mark, e.g.,<walmart.com>, <mywalmart.com> and <corporate.walmart.com> among others (collectively, the “WALMART Domain Names”), have become famous and distinctive indicators of source, affiliation or sponsorship by the Complainant.
In addition, the Complainant alleges that its use of the WALMART Domain Names includes usages of “beer” within the web addresses, such as, e.g., at “www.walmart.com/browse/food/beer”.
To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark WAL-MART, in respect of a wide range of goods and services. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the new generic Top-Level Domain (“gTLD”) “.beer” to the Second-Level-Domain “walmart” does not prevent a finding of confusing similarity. Therefore, the Domain Name <walmart.beer> could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for WALMART.COM and WAL-MART.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Further, the Panel finds that the addition of the new gTLD “.beer” or the omission of the hyphen in the Domain Name does not change the overall impression of the designation as being connected to the trademark of the Complainant. It does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark and if anything, enhances it.
See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating “[t]he incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark.”
Likewise, recent UDRP panel decisions affirm that new gTLDs such as “.beer” generally have the same impact as other gTLDs on confusing similarity, namely no impact at all, or may actually increase the potential for confusing similarity. See, e.g., Canyon Bicycles GmbH v. Domains by Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206 (transferring <canyon.bike>, since “.bike” “exacerbates confusing similarity because it describes a core product of the complainant”); Hultafors Group AB v. my domain limited, WIPO Case No. D2014-0597 (transferring <snickers.clothing>, since “.clothing” was “directly and closely associated with Complainant’s principal product line” while noting that the consideration of “.clothing” should not suggest that the outcome would have been different if the panel had not considered the gTLD); Zions Bancorporation v. Mohammed Akik Miah, WIPO Case No. D2014-0269 (transferring <zionsbank.holdings>, as “.holdings” did not prevent a finding that the domain name was identical or confusingly similar to the ZIONS BANK mark).
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name <walmart.beer> and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its marks.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.
Given the distinctiveness of the Complainant’s trademark and reputation, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trademark WALMART and uses it for the purpose of misleading and diverting Internet traffic.
The Respondent chose to register a domain name that fully incorporates the Complainant’s well-known trademark WALMART with the new gTLD “.beer”, beer being one of many products sold at the Complainant’s retail store. The Respondent also registered the domain name <walmart.vodka>1 on the same day as the Domain Name. The Panel finds compelling factual and circumstantial evidence in the record that the Respondent likely knew of the Complainant’s mark when it registered the Domain Name.
It has been held in previous UDRP cases that knowledge of a corresponding mark at the time of the domain name’s registration suggests bad faith (LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; Caixa D’Estalvis i Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464), and the lack of active use (passive holding) does not prevent a finding of bad faith (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 3.2 (“WIPO Overview 2.0”)).
Given the evidence of the Complainant’s prior rights in a well-known mark, the timing of the registration of at least two domain names incorporating the Complainant’s mark, the Respondent’s concealment of identity through a privacy service, and the lack of any explanation from the Respondent, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <walmart.beer>, be transferred to the Complainant.
Ellen B. Shankman
Sole Panelist
Date: September 7, 2015
1 See, Wal-Mart Stores, Inc. v. Minds and Machines Limited (Ireland) / Maurice Stephens, DataCol Technonology, WIPO Case No. D2015-1127.