The Complainant is Wal-Mart Stores, Inc., of Arkansas, United States of America, represented by Haynes and Boone, LLP, of United States of America.
The Respondent is “Wal-Mart Stores”, of California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <wal-mart-uniqueoffers.com> (the “Domain Name”) is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2007. On December 10, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On December 14, 2007, Moniker Online Services, LLC 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”), 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 December 17, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2008.
The Center appointed Michelle Brownlee as the sole panelist in this matter on January 29, 2008. 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 Complainant owns U.S. Registration No. 1,783,039 for the mark WAL-MART and Registration Nos. 1,322,750 and 2,891,003 for WAL-MART & design all in connection with retail department store services. The Complainant has used the WAL-MART mark since at least as early as July 1, 1962.
5. Parties’ Contentions
A. Complainant
The Complainant is the world’s largest retailer, and one of the fifteen largest companies in the world, with more than $340 billion in sales in its last fiscal year. The Complainant operates approximately 3,535 retail outlets under the WAL-MART mark within the United States and another 3,010 retail outlets under the mark outside the U.S. The Complainant uses its mark on the Internet, in the domain names <walmart.com>, <wal-mart.com>, <wal-martcorporate.com>, and <walmartstores.com>.
The Respondent is using the Domain Name in connection with a referral page that provides links to other websites. Clicking on links on the sites triggers third party pop-up advertisements, including some that offer gift cards to the Complainant’s stores. Respondent’s web page states (as on November 26, 2007, Complainant’s annex 13) at the top of the page “WAL-MART-UNIQUEOFFERS.COM. This domain may be for sale by its owner!”. The Complainant has not authorized the Respondent to use the Domain Name.
In at least fifteen other UDRP proceedings, domain names owned by the Respondent were ordered to be transferred to trademark owners. The Respondent has registered domain names that were confusingly similar to the Complainant’s trademarks in the past. In one case, the Respondent was ordered to transfer more than 70 domain names to the Complainant, including <walmarteyecenter.com>, <aboutwalmart.com>, <walmartgroceries.com>, among others.
The Complainant submits that the Domain Name is confusingly similar to the Complainant’s WAL-MART mark, that the Respondent does not have any rights or legitimate interests in the Domain Name, and that the Respondent has registered and is using the Domain Name in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three 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 Domain Name pairs the Complainant’s well-known WAL-MART trademark with the term “unique offers”. Use of the Complainant’s famous WAL-MART trademark with a non-distinctive term such as “unique offers” is confusingly similar to the WAL-MART mark, as it is likely to lead Internet users to believe that the Domain Name is affiliated with the Complainant. Other panels have found confusing similarity under similar circumstances. See, e.g., Parfums Christian Dior v. 1 Netpower, Inc.,
WIPO Case No. D2000-0022 (<christiandiorcosmetics.com> and <christiandiorfashions.com> confusingly similar to CHRISTIAN DIOR); Toyota MotorSales USA, Inc. v. Rafi Hamid dba ABC Automobile Buyer,
WIPO Case No. D2001-0032 (<leasinglexus.com> and <lexuselite.com> confusingly similar to LEXUS).
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent can demonstrate a right or legitimate interest in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark at issue.
The Respondent has not provided any evidence of rights or legitimate interest in the Domain Name. Although the Respondent’s identity in WhoIs at the time the Complaint was filed was given as “Wal-Mart Stores”, the WhoIs record stated that the owner’s name was “Domain Park Limited” at the time the Complainant first discovered the Respondent’s use of the Domain Name. Thus, the Respondent’s current WhoIs-listed name does not provide any persuasive evidence of right or legitimate interest. Further, the Respondent’s current use of the Domain Name simply to provide links to websites (a practice that is typically engaged in to collect click-through referral fees) cannot be in the circumstances considered a bona fide offering of goods or services, or a noncommercial or fair use. See PRL USA Holdings, Inc. v. LucasCobb,
WIPO Case No. D2006-0162. Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
The Complainant has established bad faith under paragraph 4(b)(iv) of the Policy. The Respondent’s apparent use of the Domain Name to earn referral fees by linking to other websites and generating pop-up advertisements attracts Internet users to the Respondent’s site by creating confusion as to source and results in commercial gain to the Respondent.
The Complainant has provided ample evidence that the Respondent has engaged in a pattern of this type of activity, since at least fifteen UDRP complaints filed against the Respondent have resulted in transfers to the trademark owner, including one case involving more than 70 domain names using the Complainant’s trademarks. Accordingly, the Complainant has demonstrated that the Respondent has repeatedly engaged in bad faith registration and use of domain names, which serves to reinforce the Panel’s decision that the Respondent’s use and registration in this case is in bad faith in violation of paragraph 4(b)(iv) of the Policy.
Furthermore, the Complainant has also established Respondent’s bad faith under paragraph 4(b)(i) of the Policy, as the statement that the Domain Name may be for sale by its owner, is evidence that the Respondent registered the Domain Name primarily for the purpose of selling it to the Complainant for consideration in excess of out-of-pocket costs.
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 <wal-mart-uniqueoffers.com> be transferred to the Complainant.
Michelle Brownlee Sole Panelist
Dated: February 12, 2008
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