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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wal-Mart Stores, Inc. v. WalMart Careers, Inc.

Case No. D2012-0285

1. The Parties

The Complainant is Wal-Mart Stores, Inc. of Bentonville, Arkansas, United States of America, represented by FairWinds Partners, LLC, United States.

The Respondent is WalMart Careers, Inc. of Inchon, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <walmartcareers.com> is registered with INames corp. (Korea) (the “Registrar).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2012. On February 14, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 15, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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”).

On February 16, 2012, the Center notified the parties in both English and Korean that the language of the Registration Agreement in this case was Korean. On February 20, 2012, the Complainant confirmed its request in the Complaint that English be the language of the proceeding. The Respondent did not make any request.

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 February 22, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 13, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 14, 2012.

The Center appointed Dae-Hee Lee as the sole Panelist in this matter on March 28, 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.

4. Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, 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. However, the Panel may determine otherwise taking into consideration the circumstances of the administrative proceeding.

According to paragraph of the Rules mentioned above, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of the agreement between the parties, the language of the registration agreement shall be the language of the proceeding. However, the Panel has discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised 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 must not be prejudicial to either of the parties in its ability to articulate the arguments for the case. International Data Group, Inc. v. Lingjun, WIPO Case No. D2004-0398.

The Complainant initially filed its Complaint in English. The Registrar indicated that the language of the Registration Agreement for the disputed domain name is Korean. On February 16, 2012, the Center issued a notice regarding the applicable language of the proceeding. The Complainant requested that the language of the administrative proceeding be English. Although the Respondent could indicate why the proceeding should not be conducted in English, it has neither indicated why nor filed a response.

In support of its argument for the language of the proceeding, the Complainant submits as follows: the Respondent is able to understand English as shown by the fact that the disputed domain name is composed of English words and that the Respondent’s website redirected by the disputed domain name appears entirely in English; the Respondent is the owner of numerous other domain names in the English language which infringe famous trademarks used in English-speaking countries; many UDRP cases have been won against the Respondent relating to English-language domain names and these cases proceeded in English; the Respondent has responded in English in a prior UDRP complaint by the present Complainant; and finally, the Complainant’s business is headquartered in the United States and that it operates in the English language. The Complainant argues that the Respondent is capable of communicating in English, and that it would be equitable to conduct the proceeding in English.

The Panel finds that the Complainant’s arguments are quite persuasive because they are based upon facts, and thus it would be reasonable to assume that the Respondent is sufficient to communicate in English. To rule otherwise would cause substantial delay in the proceeding as well as the additional cost and burden to the Complainant. Based upon this, the Panel hereby decides that English shall be the language of the present administrative proceeding.

4. Factual Background

The Complainant is the owner of the distinctive and world-famous WALMART trademarks and is one of the leading operators of department stores and warehouse stores. The Complainant generates significant sales revenue by advertising and selling at store locations as well as on its various websites such as “www.walmart.com”, “www.wal-mart.com” and others. The Respondent registered the disputed domain name on June 13, 2008. At the time the Complainant filed its Complaint, the disputed domain name was redirecting visitors to another website displaying several links to other websites.

5. Parties’ Contentions

A. Complainant

The Complainant’s legal contentions can be summarized as follows. First, the disputed domain name <walmartcareers.com> is identical or confusingly similar to the Complainant’s mark. The Complainant contends that the addition of generic or other words creates a confusingly similar domain name.

Second, the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant argues that none of circumstances that may demonstrate the Respondent’s rights or legitimate interests to the disputed domain under paragraph 4(c) of the Policy apply to the Respondent in the present dispute.

Third, the disputed domain name has been registered and is being used by the Respondent in bad faith. The Complainant avers that the Respondent intentionally used the Complainant’s mark without its consent, that the Respondent has actual knowledge of the Complainant’s mark, that the Respondent’s use of the disputed domain name is commercial because the various companies linked to the directory sites of the <walmartcareers.com> domain name benefit from the subsequent interest and purchases which result from those searches, and finally that the Respondent intentionally used WALMART mark to attract Internet searchers by creating a likelihood of confusion with the Complainant’s mark.

Based upon these contentions, the Complainant requests that the disputed domain name be transferred to it.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to get a decision that the disputed domain name be transferred to it, it carries the burden of proving that each of the following three elements is present under paragraph 4(a) of the Policy:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) The 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 by the Respondent.

A. Identical or Confusingly Similar

The disputed domain name <walmartcareers.com> is composed of the Complainant’s mark WALMART and the generic word “careers.” The Panel notes that the addition of the generic word to the mark does not serve to distinguish the domain name from the mark. The Panel thus concurs with previous UDRP decisions holding that the mere addition of the generic word to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Here in the disputed domain name, the generic word “careers” is added to the Complainant’s mark WALMART and, in particular, the Complainant’s mark is the dominant or principal component of the disputed domain name. Furthermore, it is noteworthy that the Complainant’s mark is well-known or famous, and the website redirected by the disputed domain name displays and uses the Complainant’s mark. This strengthens the impression that the disputed domain name belongs to, is affiliated with, or is sponsored or endorsed by the Complainant. The Panel thus finds that the disputed domain name is confusingly similar to the Complainant’s mark, and concludes that paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interest

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant needs to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Since the overall burden of proof rests with the Complainant, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. According to the consensus view of UDRP Panels, if such prima facie case is made, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to come forward with such appropriate allegations or evidence, the Complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. 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, Banco Itau S.A. v. Laercio Teixeira, WIPO Case No. D2007-0912, Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393, and Accor v. Eren Atesmen, WIPO Case No. D2009-0701.

The Panel notes that the Complainant is the owner of the trademark WALMART to the extent that it can legitimately claim its trademark to be well-known mark, and that it can also claim its trademark right in the disputed domain name. The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name by asserting that the Respondent’s actions are not a bona fide offering of goods or services, that the Respondent is not commonly known by the disputed domain name or the name “walmart”, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. In this case, the disputed domain name resolves to a website containing links to other websites. The Complainant asserts that this is not a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, and that the Respondent is using the disputed domain name to confuse and misleadingly divert consumers, or to tarnish the Complainant’s mark. The Panel concurs with the prior UDRP decisions holding that the Respondent is opportunistically taking advantage of the Complainant’s mark for its own commercial purposes when it diverted traffic by creating confusion with the Complainant’s trademark and using link advertisements, or that there is no bona fide offering of goods or services where the disputed domain name resolves to a website containing sponsored links to the Complainant’s competitors. PRL USA Holdings, Inc. v. Louis Zweifach, WIPO Case No. D2009-0118; Deutsche Telekom AG v. Thanh Nguyen, Thanh Nguyen Mobile, WIPO Case No. DBZ2008-0002; Allstate Insurance Company v. Moniker Privacy Services/Guowei Hai Gui, WIPO Case No. D2011-0176; Deutsche Telekom AG v. Dong Wang, WIPO Case No. D2005-0819. Furthermore, the Complainant argues that the Respondent is not commonly known by any of the Complainant’s marks, that the Respondent does not operate a business or other organization under the disputed domain name or the Complainant’s mark, and that the Respondent does not own any trademark or service mark rights. Based upon these findings and arguments, the Panel is of the view that the Complainant has established a prima facie case showing that the Respondent lacks rights to or legitimate interests in the disputed domain name. If such prima facie case is made, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. However, the Respondent has failed to provide the Panel with any evidence set forth in 4(c) of the Policy from which the Panel might conclude the Respondent’s rights or legitimate interests in the disputed domain name.

The Panel concludes that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy illustrates evidence of the registration and use of a domain name in bad faith. According to paragraph 4(b)(iv), if the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the 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 on the Respondent’s website or location, it may be proved that the Respondent has registered and uses the disputed domain name in bad faith.

The Complainant submits that the Respondent had constructive notice of the Complainant’s trademark at the time of the registration of the disputed domain name or thereafter. Constructive notice alone may not be sufficient evidence for bad faith registration; however, it might be sufficient if combined with the bad faith use of the disputed domain name. The disputed domain name was redirecting visitors to another website displaying some links and the Complainant’s mark. The Panel notes that the Complainant’s mark WALMART is very well-known around the world. There had been no consent for use by the Respondent from the Complainant before the Respondent registered the disputed domain name. The Respondent does not present the Panel with any evidence proving that it has any rights or legitimate interests in respect of the disputed domain name. The Panel finds as reasonable the Complainant’s contention that the Respondent is obtaining commercial gain from its use of the website using the disputed domain name, that the Respondent’s use of the disputed domain name and website results in a commercial gain for others by placing links to possible competitors of the Complainant and other individuals, groups or entities on its website, and that the Respondent is intentionally using the Complainant’s mark in the disputed domain name to attract Internet searchers by creating a likelihood of confusion with the Complaint’s mark. Even if the Respondent derives no immediate commercial benefit, it is still taking unfair advantage of the reputation of the Complainant’s mark to divert Internet users to its website through confusion. Google Inc. v. Jeltes Consulting / N. Tea Pty Ltd., WIPO Case No. D2008-0994. This constitutes evidence of registration and use in bad faith under paragraph 4(b)(iv) of the Policy.

Based on findings above, the Panel concludes that paragraph 4(a)(iii) of the Policy has been satisfied.

7. Decision

For the foregoing reasons, in accordance with 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <walmartcareers.com> be transferred to the Complainant.

Dae-Hee Lee
Sole Panelist
Dated: April 11, 2012

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