The Complainant is Wal-Mart Stores, Inc., Arkansas, United States of America, represented by Kirkpatrick & Lockhart Preston Gates Ellis LLP, United States of America.
The Respondent is ZJ, Yi Zhang, Zhangyang, Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <benefitswalmart.com> (the “Domain Name”)
is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2007. On January 10, 2007, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On January 11, 2007, Intercosmos Media Group d/b/a directNIC.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 and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 18, 2007. The Center verified that the Complaint together with the amendment to 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 January 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 8, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2007.
The Center appointed Steven A. Maier as the sole panelist
in this matter on February 21, 2007. 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
The Domain Name was registered on November 27, 2005.
The Complainant makes submissions of fact in this matter which, absent any Response or evidence to the contrary, the Panel finds as proven. Those facts may be summarized as follows:
(1) The Complainant is the world’s largest retailer, operating in excess of 6,000 stores in the United States and internationally.
(2) The Complainant owns numerous service marks for the name WAL-MART, including US registration number 1,783,039 registered on July 20, 1993, additional US registrations and a registration in China.
(3) The Complainant makes extensive use of the Internet and operates websites at “www.walmart.com” and at related URLs.
(4) The Complainant has 1.8 million employees worldwide. It maintains a benefits website for those employees at “www.walmartbenefits.com”.
(5) The Respondent is using the Domain Name to link to a website at “www.benefitswalmart.com”.
(6) The content on the Respondent’s website includes both a search engine and links to commercial websites offering goods similar to those sold by the Complainant.
(7) The Respondent’s website also includes categories related to payroll and benefits information, similar to categories that appear on the Complainant’s benefits site.
(8) The Complainant sent a demand letter to the Respondent on December 12, 2006 but the Respondent had made no reply to that letter.
5. Parties’ Contentions
A. Complainant
The Complainant submits that the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
The Complainant relies on its service mark registrations referred to above and on its website at “www.walmartbenefits.com”. The Complainant submits that by virtue of its registration and use of the domain name <walmartbenefits.com> for its website it has gained (unregistered) trade mark rights in that name for employee services.
The Complainant submits that the Domain Name is merely a combination of the terms “walmart” and “benefits”. This is confusingly similar to the Complainant’s WALMART mark because it amounts to no more than an addition of a descriptive or common term to that distinctive mark. It is also confusingly similar to the Complainant’s “walmartbenefits” mark as it is simply the two elements of that mark reversed.
The Complainant next submits that the Respondent has no rights or legitimate interests in the Domain Name.
In particular, the Complainant submits that the Respondent has no rights in any trade mark including the terms “walmart” or “walmartbenefits” and is not commonly known by those names.
The Complainant states that it did not authorize the Respondent to use any domain name that was likely to be confused with its WALMART or WALMARTBENEFITS marks.
The Complainant submits that the Respondent does not use those terms in the course of trade or in connection with any bona fide offering of goods or services. The Respondent’s use of those terms to provide links to websites including those of the Complainant’s competitors does not constitute legitimate use.
Finally the Complainant submits that the Domain Name was registered and is being used in bad faith.
The Complainant submits that the Respondent registered the Domain Name with actual or constructive knowledge of the Complainant’s marks WAL-MART and “walmartbenefits”. Moreover the Respondent’s website includes a link to the Complainant’s website at “www.walmart.com”, demonstrating the Respondent’s knowledge of that site.
The Complainant submits that the Respondent’s use of the Domain Name for its website in the circumstances described above creates a likelihood of confusion in the minds of both consumers and its employees.
The Complainant further relies on the Respondent’s use of the Domain Name to link to a website hosting a search engine. The Complainant submits that the Respondent is using the search engine to collect financial remuneration on a click-through basis.
Further, the Complainant submits that the Respondent is clearly targeting the misguided Wal-Mart employee who is looking for the Complainant’s benefits site. Employees who are attracted to the Respondent’s site are also likely to be attracted by the financial services offered on that site and may be confused as to whether or not those services are sponsored or endorsed by the Complainant. In this regard, the Respondent’s use of the Domain Name is merely a form of “typosquatting”.
In summary, the Complainant submits that the Domain Name was acquired in bad faith, primarily for the purpose of diverting the Complainant’s customers to the Respondent’s site or preventing the Complainant from using that name for its own business.
The Complainant requests a transfer of the Domain Name.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established that it owns registered trade mark or service mark rights in the name WAL-MART.
The Complainant has also established to the satisfaction of the Panel that it has rights in the term “walmartbenefits”, although these rights are unregistered in nature. The Panel finds that the term is distinctive of the Complainant’s employee services and would be recognised by a substantial number of the Complainant’s employees, of whom there are 1.8 million worldwide.
The Panel finds that the addition of the generic term “benefits” to the Complainant’s distinctive mark “walmart” is insufficient to prevent the Domain Name from being confusingly similar to the Complaint’s said mark and that confusing similarity exists.
Further, the Panel finds that the Domain Name is manifestly similar to the Complainant’s unregistered mark WALMARTBENEFITS.
Accordingly the Panel finds in favor of the Complainant on the first element required by paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
For the reasons given by the Complainant in its submission, the Panel finds that the Respondent has no rights or legitimate interest in the Domain Name. The Panel notes that the Respondent has declined the opportunity to respond to the Complaint and to make any counter-assertion in this regard.
Accordingly the Panel finds in favor of the Complainant on the second element required by paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
From the facts stated by the Complainant, which the Respondent has not contradicted, the Panel infers the following:
(1) That the Respondent was aware of the Complainant’s distinctive mark WAL-MART at the date of registration of the Domain Name.
(2) That the Respondent established a website at “www.benefitswalmart.com” which was intended or was likely to confuse employees of the Complainant into believing it was a site operated by the Complainant in connection with its employee benefits services.
(3) That the Respondent sought to take advantage of such “initial interest confusion” on the part of the Complainant’s employees by offering financial services that were similar to and/or competing with the corresponding services offered by the Complainant.
(4) That the Respondent unfairly gained or intended to gain a financial advantage from its said activities.
(5) That the Respondent’s actions took unfair advantage of the Complainant’s goodwill and/or damaged, or were likely to damage, the interests of the Complainant by causing confusion to its employees.
The Panel finds that the matters referred to above plainly amounted to registration and use by the Respondent of the Domain Name in bad faith and, in particular, in the circumstances contemplated by paragraph 4(b)(iv) of the Policy.
Accordingly the Panel finds in favor of the Complainant on the third element required by paragraph 4(a) of the Policy.
In the circumstances, the Complainant has established all three elements of
the test set out in paragraph 4(a) of the Policy and this Complaint succeeds.
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 <benefitswalmart.com> be transferred to the Complainant.
Steven A. Maier
Sole Panelist
Dated: March 7, 2007
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