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Wal-Mart Stores, Inc. v. Horoshiy, Inc. [2004] GENDND 1186 (27 September 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wal-Mart Stores, Inc. v. Horoshiy, Inc.

Case No. D2004-0620

1. The Parties

The Complainant is Wal-Mart Stores, Inc., Bentonville, Arkansas, United States of America, represented by Venable, LLP, United States of America.

The Respondent is Horoshiy, Inc., Curacao, Netherlands Antilles.

2. The Domain Name and Registrar

The disputed domain name <walmartbenfits.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 an employee benefits website, “My Benefits” at “www.walmartbenefits.com.” This site is available to over one million Wal-Mart employees (Complainant’s Submission, Annex D).

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 B). Use of the trademark in commerce appears to have commenced as early as 1962. Wal-Mart owns registrations for the mark in 46 countries.

Wal-Mart is also known in Netherlands and owns a Benelux (Belgium, Netherlands and Luxembourg) trademark registration (Complainant’s Submission, Annex B).

5. Parties’ Contentions

A. Complainant

The Complainant’s submissions can be summarized as follows:

(i) The domain name <walmartbenfits.com> is confusingly similar to Wal-Mart’s service marks. The second level domain name “Walmartbenfits” is a combination of two words, “Walmart” and the misspelled word “Benfits.” The first word “Walmart” is virtually identical to the Complainant’s famous mark WAL-MART. Complainant also asserts that it owns the service mark WAL-MART BENEFITS, by virtue of its use of the domain name <walmartbenefits.com>, in association with a site for its employees. The disputed domain name is said to be identical to the WAL-MART BENEFITS service mark.

(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. The disputed domain name was registered after the Complainant began using its own “www.walmartbenefits.com” site.

(iii) The domain name was registered and is being used in bad faith. The Respondent is using <walmartsbenfits.com> to divert Complainant’s employees and other potential users to its website, disrupting the Complainant’s business and tarnishing the Complainant’s image. Respondent is alleged to have engaged in typosquatting, seeking to benefit from users who intend to access the Complainant’s website but who are instead directed to the Respondent’s site because of the user’s typographical error.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed the 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

Based on the Complainant’s submissions and evidence, the Panel finds that the WAL-MART Mark is famous, and therefore entitled to a wide ambit of protection. The Complainant makes extensive use of the 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. Although, the Complainant has established significant trademark rights and goodwill in the WAL-MART mark, it has not filed any substantial evidence to support its allegation of common law rights in the service mark WALMART BENEFITS. As a result, the Panel declines to make any findings with respect to rights in the unregistered WALMART BENEFITS mark.

The Panel, however, finds that the disputed domain name is confusingly similar with the mark WAL-MART. The domain name in question <walmartbenfits.com> comprises the highly distinctive trademark itself, combined with the suffix “benfits.com.” Where a domain name incorporates a complainant’s mark in its entirety the addition of another descriptive word does not obviate the likelihood of confusion. (Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095, “credit” added to EXPERIAN, Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102, “girls” added to NOKIA, Louis Vuitton Malletier v. Enrico Villa, WIPO Case No. D2000-0721, “cup” added to LOUIS VUITTON). The first and dominant element in the disputed domain name is WALMART, and that clearly supports a conclusion of confusing similarity.

The finding of confusion is further strengthened by the fact that the word the Respondent has combined with WAL-MART has a direct connection to Wal-Mart’s own employee services and its pre-existing website. (See Harrods Limited v. Peter Pierre, WIPO Case No. D2001-0456). The misspelling of “benefits” is regarded by the panel as a transparent attempt to register a domain name with the smallest possible difference from the Complainant’s website. 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 <walmartbenfits.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 web-site which redirects users to companies that will pay cash advances on paychecks (Complainant’s Submission, Annex G). It is clear that the Respondent only registered the disputed domain name after the Complainant registered and began using its <walmartbenefits.com> domain name in connection with an employee assistance website. The Panel, therefore, finds that the Complainant has met the requirement of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that the Respondent has registered and is using the domain name in bad faith, to attract, for commercial gain, Internet users to this website by creating a likelihood of confusion with the Complainant. The Complainant’s evidence demonstrates the Respondent is engaging in “typosquatting.” The registration of this domain name serves no other purpose but to target Wal-Mart employees and other potential users who mistakenly or inadvertently enter an incorrectly spelled version of the Wal-Mart Employees Benefit Site (See DaimlerChrysler Corporation v. Worshiping, Chrisler and Chr, aka Dream Media and aka Peter Conover, WIPO Case No. D2000-1272.) Accordingly, the Panel finds that the Complainant has met the requirements of paragraph 4(a)(iii) 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 <walmartbenfits.com> be transferred to the Complainant.

Christopher J. Pibus
Sole Panelist

Dated: September 27, 2004