The Complainant is Wal-Mart Stores, Inc., Bentonville, Arkansas, United States of America, represented by Welsh & Katz, Ltd. United States of America.
The Respondent is Kani, Hollister, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <walmartcarpetcleaners.com> is registered with
Wild West Domains, Inc.
3. Procedural History
This action (the “Complaint”) was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2006. On January 12, 2006, the Center transmitted by e-mail to Wild West Domains, Inc. the request for registrar verification in connection with the domain name at issue. On the same date, Wild West Domains, Inc. transmitted by e-mail 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 Uniform Domain Name Dispute Policy (the “Rules”); and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “WIPO 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 January 18, 2006. The Center re-notified the Respondent of the Complaint on February 22, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 14, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on March 16, 2006. The Respondent was advised of the consequences of such a default.
The Center appointed John E. Kidd as the sole panelist (the “Panel”) in this matter on March 30, 2006. 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.
Having reviewed the communication records, the Panel
finds that the Center has discharged its responsibilities under paragraph 2(a)
of the Rules “to employ reasonably available means calculated to achieve
actual notice to Respondent.” In the view of the Panel, the proper procedures
have been followed, and it may issue its decision based upon the documents submitted
in accordance with the Policy, the Rules and the Supplemental Rules without
the benefit of a response from the Respondent.
4. Factual Background
The Complainant, Wal-Mart Stores, Inc., is the world’s largest retailer which operates thousands of stores, both in the United States and internationally. The Complainant serves more than 138,000,000 customers weekly in sixteen countries worldwide. In 2005, it had sales of over $285,000,000,000. The Complainant also makes extensive use of the Internet and operates web-sites such as “www.walmart.com”, “www.wal-mart.com” and “www.walmartstores.com”. The Complainant asserts that the web-sites are an important part of the Complainant’s business and contributes to the Complainant’s on-line identity and brand.
The Complainant also owns various United States registered
trademarks, for the brand, WAL-MART. The Complainant has not licensed or authorized
the Respondent to use its name or marks or any variation thereof. On September 22, 2005,
the Complainant sent a cease and desist letter to the Respondent via certified
mail return receipt requested to the Respondent at the address above noted.
The letter was returned and marked “unclaimed.” A second letter
was sent on October 12, 2005. Again, the Respondent failed to acknowledge the
letter or otherwise respond.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the domain name in dispute <walmartcarpetcleaners.com> is likely to confuse consumers and cause them to mistakenly believe that the domain name is associated with the Complainant. More specifically, the Complainant submits that: (i) the domain name is identical or confusingly similar to marks in which the Complainant has rights; (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.
The Complainant also believes that the Respondent’s continued use of the domain name will tarnish the Complainant’s WAL-MART name and mark. The Complainant has offered evidence in support of its allegations, whereas the Respondent has failed to rebut or offer any evidence to rebut the allegations.
The Respondent’s failure to dispute the allegations
permits the inference that the Complainant’s allegations are true. See
William H. Cosby, Jr. v. Sterling Davenport,WIPO
Case No. D2005-0756 and Deutsche Bank A.G. v. Diego-Arturo Bruckner,WIPO Case No. D2000-0277.
Applying the Policy, the Rules and the Supplemental Rules to the issue in this case furthers these inferences.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
In light of the Respondent’s failure to submit
a response, the Panel, pursuant to the Rules, may draw such inferences, including
adverse inferences, as it considers appropriate. See William H. Cosby, Jr.
v. Sterling Davenport,WIPO Case No. D2005-0756
and Charles Jourdan Holding AG v. AAIM,WIPO
Case No. D2000-0403.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain an order that a domain name in dispute should be transferred:
(i) the domain name registered by the Respondent 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 interest with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar Domain Name
The Panel notes, even though more relevant under the
third element of the Policy, that the Complainant’s rights in its mark,
WAL-MART, predate the Respondent’s registration of the domain name in
dispute. The Respondent removed the hyphen from the Complainant’s mark.
This change, in the Panel’s view, is not significant in determining similarity.
The Respondent also added the phrase “carpetcleaners” to the Complainant’s
mark. Neither of these changes avoids a finding by the Panel of identity or
confusing similarity between the domain name and the Complainant’s marks.
See Dr. Ing. h.c.F. Porsche AG v. Vasiliy Terkin,WIPO
Case No. D2003-0888; GA Modefine S.A. v. Armani International Investment,WIPO Case No. D2000-0305; and Beiersdorf AG v. Nivea International,WIPO Case
No. D2001-0178.
The Panel shares the Complainant’s view that in light of the significant fame associated with the WAL-MART mark, the domain name in dispute creates a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the domain name.
B. Respondent’s Rights or Legitimate Interests in the Domain Name in Dispute
The Complainant asserts that the Respondent has no rights or legitimate interests in the domain name in dispute. The Respondent has not denied these assertions. The Respondent does business as FreshX and is not commonly known by the domain name in dispute, paragraph 4(c)(ii) of the Policy. The Respondent has no affiliation with the Complainant, and it is not an authorized licensee of the Complainant’s services.
The Respondent is also not using the domain name in connection with a bona fide offering of goods or services or for a fair and legitimate non-commercial use, paragraph 4(c)(iii) of the Policy. The Panel finds that the Respondent is using the domain name to attract and misleadingly divert internet users to its FreshX web-site for commercial gain.
In the above-mentioned circumstances, and the domain name being the Complainant’s well-known name, a prima facie case is made out, which the Respondent has failed to rebut.
These facts support the Panel’s conclusion that the Respondent has no rights or legitimate interests in the domain name in dispute.
C. Domain Name Registered and Used in Bad Faith
The Complainant asserts that the Respondent acted and is acting in bad faith. The Respondent has not denied the assertion.
The exercise of normal prudence in conducting a trademark
search and domain name search before registering the domain name in dispute
would have put the Respondent on notice of the Complainant’s marks and
web-sites. Notwithstanding the Complainant’s prior rights, the Respondent
deliberately registered a domain name that used the dominant part of the Complainant’s
well-known name and well-known mark. The Panel finds that the Respondent did
so with a view of attracting web browsers to the Respondent’s <walmartcarpetcleaners.com>
web-site (the domain name in dispute) in order to then link the internet
browser to the Respondent’s FreshX web-site. This alone, under the circumstances
of this case, is sufficient to constitute bad faith registration and use. See
Chimmoy Kumar Ghose v. ICD Soft.com and Maria Sliwa,WIPO
Case No. D2003-0248.
By using the domain name in this way, the Panel finds
that the Respondent, in order to reap commercial gain, created a likelihood
of confusion with the Complainant’s mark as to source, sponsorship, affiliation,
or endorsement of the Respondent’s web-site. The Panel finds that this
is clear evidence of registration and use in bad faith of the domain name in
dispute, paragraph 4(b)(iv) of the Policy.
7. Decision
For all of the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name in dispute <walmartcarpetcleaners.com> be transferred to the Complainant.
John E. Kidd
Sole Panelist
Date: April 15, 2006
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