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Wal-Mart Stores, Inc. v. walmarts [2005] GENDND 1430 (29 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wal-Mart Stores, Inc. v. walmarts

Case No. D2005-0706

1. The Parties

The Complainant is Wal-Mart Stores, Inc., Debra Hughes, Senior Counsel, Bentonville, Arkansas, United States of America, represented by Kirkpatrick & Lockhart Nicholson Graham LLP, United States of America.

The Respondent is walmarts, Web Master, General Delivery, Georgetown, Grand Cayman, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <walmarts.com> is registered with Address Creation.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2005. On July 6, 2005, the Center transmitted by email to Address Creation a request for registrar verification in connection with the domain name at issue. On July 7, 2005, Address Creation 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 July 18, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 8, 2005.

The Center appointed Jacques A. Léger, Q.C. as the sole panelist in this matter on August 15, 2005. 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

As it appears from the evidence, the Panel’s understanding is that Complainant is a well known retailer which owns multiple stores or Super centers around the world and employs more than 1.6 million employees also referred to as associates. In addition to in-store retailing, it uses the website <walmart.com> for online shopping. Complainant has registered its trademarks in many countries, particularly in the United States and the United Kingdom where Respondent is domiciled.

5. Parties’ Contentions

A. Complainant

Complainant contends Respondent’s domain name <walmarts.com> is virtually identical to Complainant’s mark WAL-MART and Complainant’s web site <walmart.com>, with the only difference being the addition of the letter “s” after the second level domain name, which creates a common misspelling of Complainant’s trademark. Thus, it contends the disputed domain name is confusingly similar to its trademark and that Respondent is engaging in typosquatting.

Complainant has been using one or more WAL-MART marks since 1962. Complainant claims that its efforts in developing a strong business with a strong brand have permitted the acquisition of world wide fame. Respondent, on the contrary, is not commonly known by the name since it does not own a WALMARTS trademark and does not use the latter term in the course of trade. Complainant contends Respondent has no rights or legitimate interest in the disputed domain name since it is using <walmarts.com> with the intent of misleadingly diverting Complainant’s consumers to its website and therefore disrupting Complainant’s business. Furthermore, the Complainant maintains that the Respondent’s use of the domain name is not connected to a bona fide offering of goods or services.

Complainant contends Respondent registered the domain name knowing that Complainant held rights in the mark. Furthermore, the presence on Respondent’s site of various commercial links demonstrates its intentional attempt to attract Internet users to its website by creating a likelihood of confusion with Complainant’s trademark. Hence registering and using the disputed domain name has been registered and used in bad faith.

B. Respondent

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

6. Discussion and Findings

In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove cumulatively that each of the three following elements is satisfied:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

2. The Respondent has no rights or legitimate interests in respect of the domain name; and

3. The domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.

Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel may draw negative inferences therefrom, as it considers appropriate.

A. Identical or Confusingly Similar

This question raises two issues: (1) does the Complainant have rights in a trademark or a service mark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.

As to the first question, the record confirms that the Complainant owns the registered trademark WAL-MART at least in the United Kingdom where the Respondent resides. In any case, for the purpose of the Policy, the location of the registered mark is not relevant in establishing rights in a trademark. Complainant is the owner of a valid trademark. Hence, the Panel finds that the Complainant has rights in the mark WAL-MART.

As to the second question, the Panel finds that the domain name <walmarts.com> is confusingly similar to the Complainant’s mark. Indeed, the addition of the letter “s” to Complainant’s mark does not change the substance of the latter’s trademark. Respondent’s domain name is simply a common misspelling of the Complainant’s trademark. Numerous decisions under the Policy have already considered that this conduct, commonly referred to as “typosquatting”, leads to the inference of a confusingly similar domain name under paragraph 4(a)(i) of the Policy (see World Wrestling Federation Entertainment, Inc. v. Matthew Bessette, WIPO Case No. D2000-0256, Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc., WIPO Case No. D2000-0587).

For the abovementioned reasons, the Panel is of the view Respondent’s domain name is confusingly similar to Complainant’s trademark.

B. Rights or Legitimate Interests

The Panel agrees with the analysis pertaining to a bona fide offering of goods in Scania CV AB v. Leif Westlye, WIPO Case No. D2000-0169 wherein the Panel found: “…the use of the expression “bona fide” in Paragraph 4 c (i) is sufficient to prevent a respondent who knowingly adopted another’s well known mark as a domain name from claiming the benefit of mere use of or demonstrable preparations to use the domain name in connection with the offering of goods or services prior to notice of a dispute”.

Thus, the Panel accepts that Complainant’s mark is a well known mark and accordingly takes the view that Respondent would have been unlikely to have been unaware of the fame of Complainant’s mark WAL-MART in the retail industry before adopting its domain name <walmarts.com>. Consequently, the Panel finds that Respondent is not using <walmarts.com> in connection with a bona fide offering of goods or services as per section 4 (c) (i) of the Policy.

Complainant has not licensed or permitted in any manner Respondent’s use of the Complainant’s trademark WAL-MART. Its trademark is known worldwide, making it implausible that the Respondent be commonly known or recognized as a separate party by his domain name.

There is a commercial activity on Respondent’s site which appears to be confusingly similar and competitive with the Complainant’s activities, thus intentionally diverting consumers from Complainant’s site. Indeed, many of the links refer the consumer to Complainant’s competitor Kmart. The Panel in Deutsche Telekom AG v. WWW Enterprise, Inc., WIPO Case No. D2004-1078 recalled “It [is] now a well-known practice to display on a web page or search engine various links to other commercial websites: every link activated by an Internet user enables the host of the search engine to collect a financial remuneration proportional to the number of connections.” Consequently, Respondent’s actions defeat any excusatory argument based on section 4 (c) (iii) of the Policy. 

In the absence of any effort by Respondent to rebut the Complainant’s contentions as to the absence of rights and legitimate interest, the Panel finds Complainant has satisfactorily met its burden of proof. The Panel finds in favour of Complainant on this element.

C. Registered and Used in Bad Faith

Complainant bases its argument of bad faith on subparagraph 4(b)(iv) of the Policy.

Commercial intent was established (see under “Legitimate Interest”, above). This leaves the question whether the Respondent had the intention to attract Internet users to his website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product.

No case of actual confusion was brought to the Panel’s attention. That said, the Policy requires only a likelihood of confusion. Is there such a likelihood of confusion in the instant case?

In Société pour l’œuvre et la mémoire d’Antoine de Saint Exupéry- Succession Saint Exupéry - D’Agay v. The Holding Company, WIPO Case No. D2005- 0165, the Panel found that the mere use of Complainant’s mark in Respondent’s domain name constitutes a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site by Complainant:

“An Internet user looking for the products of Complainant using a conventional search engine will find Respondent’s web site addresses incorporating Complainant’s mark (in the disputed domain names). An average Internet user is likely to assume that a web site identified by Complainant’s mark is operated by or on behalf of Complainant, and will visit that site. This establishes initial interest confusion with respect to the consumer. Respondent will have accomplished much of its purpose in using Complainant’s mark by initially drawing consumers to its web site.”

Consequently, it is clear to the present Panel that the use of Complainant’s trademark in Respondent’s domain name demonstrates the intention of attracting, for commercial gain, internet users to Respondent’s site.

In any case, the Panel has already decided in AltaVista Co. v. Saeid Yomtobian, WIPO Case No. D2000-0937, that misspellings alone, such as that used by Respondent, “are sufficient to prove bad faith under paragraph 4(b)(iv) of the Policy”.

The Panel’s understanding of the Policy is that, although the initial burden to prove Respondent’s bad faith in the registration and the use of the disputed domain name lies squarely on the shoulders of the Complainant, once a case of bad faith has been made by the Complainant, it is up to the Respondent to either justify its conduct, explain it, or demonstrate satisfactorily the contrary.  See to this effect The Royal Bank of Scotland Group and National Westminster Bank v. Pedro Lopez and A&A System Solutions and Alberto Rodriguez (WIPO Case No: D2002-0823); AT&T Corp. v. Linux Security Systems (WIPO Case No. DRO2002-0002). Since Respondent has made no effort to explain its domain name or rebut Complainant’s contentions, in the circumstances of this case, the Panel finds Complainant has satisfactorily met the burden required by section 4 (a) of the Policy as to bad faith registration and hence finds in favour of the Complainant on that criterion.

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 names, <walmarts.com> be transferred to the Complainant.

Jacques A. Léger, Q.C.
Sole Panelist

Dated: August 29, 2005