Complainant is Walmark, a.s., Czech Republic, represented by Osborne Clarke, Germany.
Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Horák Tomáš, United States.
The disputed domain name <walmarkcz.com> (the “Domain Name”) is registered with Wild West Domains, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2020. On November 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 19, 2020, the Registrar transmitted by email to the Center its verification response confirming that 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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 16, 2020.
The Center appointed Marina Perraki as the sole panelist in this matter on December 23, 2020. 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.
Per Complaint, Complainant is seated in the Czech Republic and is a well-known international manufacturer of high quality pharmaceuticals and health related products in Eastern Europe (including the Czech Republic, Slovakia, Poland and Hungary) and 40 other markets globally, including markets in the Middle East, South East Asia and Africa. Complainant is part of the “STADA Group”, which also operates internationally in the field of pharmaceuticals. Complainant’s main website operates at “www.walkmark.cz”.
Complainant is the owner of numerous trademarks consisting of or containing the term “Walmark”, including
- International Trademark Registration No. 667746 WALMARK (word), registered on July 25, 1996 for goods in international classes 3, 5, 29, 31 and 32;
- International Trademark Registration No. 715308 WALMARK (word & device), registered on March 29, 1999 for goods in international classes 3, 5 and 31; and
- Czech Trademark Registration No 192564 WALMARK (word), filed on October 11, 1995, registered on July 25, 1996 for goods in class 5.
Complainant is also the owner of the domain name <walkmark.cz> registered on April 13, 1997.
The Domain Name was registered on June 23, 2020 and leads to an inactive website. According to Complainant, it was used to create an email address and send fraudulent spoofing emails to Complainant, the corporate group it is part of STADA Group, and its clients.
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for the transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions.
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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 Domain Name incorporates Complainant’s mark WALMARK in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).
The addition of the letters “cz”, the country code for the Czech Republic, does not prevent a finding of confusing similarity as the WALMARK mark remains clearly distinguishable (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).
The Panel finds that the Domain Name is confusingly similar to the WALMARK mark of Complainant.
Complainant has established Policy, paragraph 4(a)(i).
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) 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 or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name.
Respondent has not demonstrated any preparations to use, or has not used the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.
On the contrary, as Complainant demonstrated, the Domain Name leads to an inactive page.
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Lastly, per Complainant, the Domain Name was used to create an email address and send fraudulent emails. Use of the Domain Name for an illegal activity such as constructing an email composition containing the Domain Name for deceiving purposes would not confer rights or legitimate interests on Respondent (L’Oréalv. CimpressSchweizGmbH, WIPO Case No. DCO2017-0021; Twitter, Inc. v. Moniker Privacy Services/ accueil des solutions inc, WIPO Case No. D2013-0062).
Complainant has established Policy, paragraph 4(a)(ii).
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. As per Complaint, Complainant’s mark WALMARK is well-known in the field of pharmaceuticals. Because the WALMARK mark had been used and registered at the time of the Domain Name registration by Respondent, the Panel finds that Respondent had Complainant’s mark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Diorv.Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
Respondent should have known about Complainant’s rights, as such knowledge is readily obtainable through a simple browser search due to Complainant’s wide use of WALMARK mark on the Internet, and through its website “www.walmark.cz” (Caesars World, Inc. v. Forum LLC., WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462).
Furthermore, Respondent could have conducted a trademark search and would have found Complainant’s prior registrations in respect of WALMARK (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338).
The Domain Name incorporates in whole Complainant’s mark plus the additional letters “cz” that correspond to the country where Complainant is seated, while they are identical to the domain name of Complainant <walmark.cz>. The use of the letters “cz” in the Domain Name therefore creates a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Domain Name. This further indicates that Respondent knew of Complainant and chose the Domain Name with knowledge of Complainant and its industry.
The Domain Name currently leads to an inactive website. The non-use of a domain name would not prevent a finding of bad faith (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; WIPO Overview 3.0, section 3.3).
Under these circumstances and on this record, the Panel finds that Respondent has registered and used the Domain Name in bad faith.
Lastly, per Complainant, the Domain Name was used to create an email address and send fraudulent emails to Complainant, the corporate group it is part of STADA Group, and its clients. Use of a domain name for purposes other than to host a website may also constitute bad faith. Such purposes include sending deceptive emails, phishing, identity theft, or malware distribution (WIPO Overview 3.0, section 3.4). This pattern can support a finding of bad faith registration and use (Arla Foods Amba v. Michael Guthrie, M. Guthrie Building Solutions, WIPO Case No. D2016-2213).
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <walmarkcz.com>, be transferred to Complainant.
Date: January 6, 2021
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