The Complainant is Wal-Mart Stores, Inc., Bentonville, Arkansas, United States of America, represented by Venable, LLP, United States of America.
The Respondent is Alvaro Collazo, Tarariras, Colonia, Uruguay.
2. The Domain Name and Registrar
The disputed domain name <walmartmusicdownload.com> is registered with
iHoldings.com Inc. d/b/a DotRegistrar.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2004. On August 9, 2004, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On August 9, 2004, iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the 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 13, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 2, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 3, 2004.
The Center appointed Christopher J. Pibus as the Sole
Panelist in this matter on September 16, 2004. 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
Complainant is the world’s largest retailer, operating retail stores in several countries, including Argentina, Brazil, Canada, China, Germany, Japan, Korea, Mexico, Puerto Rico, the United States and the United Kingdom. Complainant also operates a music download website, entitled “Wal-Mart Music Downloads” at “www.musicdownloads.walmart.com.” It is the second most popular music download site on the Internet (Complainant’s Submission, Annex D and E).
Complainant is identified as the owner of the registered
service mark WAL-MART, registered under the United States Patent and Trademark
Office Registration No. 1,783,039 for retail department store services (Complainant’s
Submission Annex E). Use of the trademark in commerce appears to have commenced
as early as 1962. Wal-Mart owns registrations for the mark in 46 countries,
including Uruguay. Complainant operates 22 stores in Brazil and 11 stores in
Argentina, both countries bordering Uruguay. (Complainant’s Submission
Annex B).
5. Parties’ Contentions
A. Complainant
The Complainant’s submissions can be summarized as follows:
(i) The domain name <walmartmusicdownload.com> is confusingly similar to Wal-Mart’s service marks. The second level domain name “Walmartmusicdownload” is a combination of three words, “Walmart,” “Music” and “Download.” The first word “Walmart” is virtually identical to the Complainant’s primary mark WAL-MART. Complainant also claims ownership of the derivative mark WAL-MART MUSIC DOWNLOADS by virtue of its recently opened online music site bearing that name. The disputed domain name is said to be identical to Wal-Mart’s WAL-MART MUSIC DOWNLOADS service mark and confusingly similar to its domain name for that website.
(ii) The Respondent has no rights or legitimate interests in the domain name. The Respondent has no rights to any trademark consisting of the term “Wal-Mart” in any country.
(iii) The domain name was registered and is being used in bad faith. The Respondent is using <walmartmusicdownload.com> to divert Complainant’s consumers to its website, disrupting the Complainant’s business and tarnishing the Complainant’s image.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, a Complainant must establish each of the following elements:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established rights in the WAL-MART trademark, and the related service mark WAL-MART MUSIC DOWNLOADS. The Complainant makes extensive use of the WAL-MART mark in many countries through the sheer number of its retail stores, its huge volume of retail sales, and its substantial promotional efforts, which include conventional advertising and an active Internet presence.
The Panel finds that the disputed domain name is confusingly
similar to the famous WAL-MART trademark, and the derivative mark WAL-MART MUSIC
DOWNLOADS. The domain name in question <walmartmusicdownload.com> comprises
the trademark itself, and the suffix “musicdownload.com.” It is
well established “where a domain name incorporates a complainant’s
mark in its entirety, it is confusingly similar to the mark despite the addition
of other words.” (Experian Information Solutions, Inc. v. Credit Research,
Inc., WIPO Case No. D2002-0095, “credit”
was added to EXPERIAN.)
The finding of confusion is strengthened by the fact
that the words the Respondent has combined with WALMART have a direct connection
to Wal-Mart’s services and its highly successful online music website.
A reasonable consumer would expect the Respondent’s site to provide music
downloads from Wal-Mart. Where a generic word has been added to a well-known
trademark and the generic word identifies goods or services that the trademark
owner also provides, confusing similarity between the mark and domain name is
inevitable. (Harrods Limited v. Peter Pierre, WIPO
Case No. D2001-0456, “stores” was added to HARRODS, Wal-Mart
Stores v. Mike Flynn, WIPO Case No. D2002-1020,
“pharmacy” was added to WAL-MART.)
The Panel, therefore, finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
There is no evidence that the Respondent ever had any legitimate right or interest in the <walmartmusicdownload.com> domain name. The Respondent is not using the domain name in connection with a bona fide offering of goods or services. The evidence shows the Respondent operates a skeletal website which redirects users to unrelated third party vendors. Respondent’s domain name was only registered after the Complainant had launched its website, garnering significant publicity and sales. The Panel finds the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Panel agrees with the Complainant’s contention
that the Respondent has registered and is using the domain name in bad faith.
In all the circumstances, particularly the significant success of the Complainant’s
online music site, and the famous status of the WAL-MART mark, the Panel finds
that the Respondent knew or should have known of the registration and use of
the Complainant’s marks prior to registering the domain name (Yahoo!
Inc. v. Yahoosexy.com, Yahoo-sexy.com, Yahoosexy.net, Yahousexy.com and Benjamin
Benhamou, WIPO Case No. D2001-1188).
Prior knowledge of the Complainant’s marks creates a presumption of bad
faith, which the Respondent has failed to rebut, having filed no evidence in
this proceeding. (see Autosales Incoroporated, dba Summit Racing Equipment
v. Domain Active Pty. Ltd., WIPO Case No. D2004-0459).
The Panel finds that the Respondent is using a confusingly similar domain name for purposes of commercial gain and that Respondent has thereby intentionally attempted to attract Internet users who intended to access Wal-Mart’s music site. Although the website itself has little content, it is clear that Respondent is engaged in a program for redirecting traffic to other advertised websites. The Panel finds that this is sufficient to establish the Respondent’s commercial purpose.
The Panel, therefore, finds that the Complainant has satisfied the third requirement
of paragraph 4(a) of the Policy.
7. Decision
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 name <walmartmusicdownload.com> be transferred to the Complainant.
Christopher J. Pibus Sole Panelist
Dated: September 27, 2004
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