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Wal-Mart Stores, Inc. v. Whois Privacy, Inc. [2005] GENDND 1605 (26 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wal-Mart Stores, Inc. v. Whois Privacy, Inc.

Case No. D2005-0850

1. The Parties

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

Respondent is Whois Privacy, Inc., New York, New York, United States of America.

2. The Domain Name and Registrar

The disputed domain name, <walmartjob.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 August 5, 2005. On August 9, 2005, 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 August 9, 2005, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on August 16, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was September 5, 2005. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 7, 2005.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on September 12, 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

Complainant states in its Complaint that it is the world’s largest retailer; that it owns the famous service mark WAL-MART for retail services in a number of countries; that there are WAL-MART retail stores in several countries, including Argentina, Brazil, Canada, China, Germany, Japan, Korea, Mexico, Puerto Rico, the United States and the United Kingdom; and that it owns registrations for the WAL-MART mark in 98 countries.

Complainant states in its Complaint that, in the United States, it is the owner of U.S. Reg. No. 1,783,039 for the mark WAL-MART for use in connection with retail department store services and that this mark was first used at least as early as July 1, 1962, and it was registered on July 20, 1993.

Complainant states in its Complaint that the WAL-MART mark is famous and that, as of January 31, 2005, it operated 1,353 Wal-Mart stores and 1,713 Wal-Mart Supercenters, among others, in the United States.

Complainant states in its Complaint that it uses its WAL-MART mark in relation to discount retail stores, grocery stores, membership warehouse clubs, pharmacies, deep discount warehouse outlets, in advertising throughout the world, on its websites, its scholarship programs, telethons for children’s hospitals, environmental programs and a variety of community support programs.

Complainant states in its Complaint that it engages in extensive advertising of its services and merchandise in a number of countries and uses the WAL-MART mark in this regard, and that advertising costs were $1.4 billion, $966 million and $676 million in the fiscal years 2005, 2004 and 2003, respectively.

Complainant states in its Complaint that the Internet is also a significant vehicle for Complainant. Complainant has websites located at, among other Internet addresses, “www.walmart.com,” “www.walmartjobs.com,” “www.walmartfoundation.org” and “www.walmartfacts.com.”

Complainant states in its Complaint that the Domain Name was previously registered by “JL inc.” on February 21, 2005, and that this registrant used the Domain Name in connection with a website that provided links to services offered by third parties; printouts of websites using the Domain Name on June 17 and 21, 2005, show references to retailers Kmart, Target and others. Complainant further states in its Complaint that the website using the Domain Name caused “many annoying advertisements to ‘pop up’ in separate browser windows.”

Complainant states in its Complaint that it sent a cease and desist letter to JL Inc. on May 9, 2005. According to copy of the letter provided by Complainant as an exhibit to its Complaint, Complainant informed JL Inc. that its registration and use of the Domain Name violated the “U.S. Anti-Cybersquatter Protection Act Law,” 15 U.S.C. § 1125(d), and Complainant demanded that the registrant transfer registration of the Domain Name to Complainant.

Complainant states in its Complaint that JL Inc. did not respond to its demand letter but instead transferred registration of the Domain Name to “Mo Domains” on July 5, 2005. Complainant states in its Complaint that it sent a cease and desist letter to Mo Domains on July 8, 2005.¹

Complainant states in its Complaint that Mo Domains did not respond to its demand letter but instead transferred registration of the Domain Name to Respondent on July 17, 2005.

5. Parties’ Contentions

A. Complainant

Complainant alleges that the Domain Name is identical and confusingly similar to its own famous WAL-MART mark, only with the addition of the word “job,” which Complainant alleges does not distinguish the Domain Name.

Complainant alleges that Respondent has no rights or legitimate interests in respect of the Domain Name and that, to the best of its knowledge, Respondent has no rights to any trademark consisting of the term “WAL-MART” in any country.

Complainant alleges that the Domain Name was registered in bad faith and that use of the Domain Name by Respondent or by the previous registrants of the Domain Name contacted by Complainant is in bad faith and that repeated transfers of the Domain Name cannot avoid – and, indeed, are further evidence of – bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (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.

A. Identical or Confusingly Similar

Based upon the allegations by Complainant (supported by a copy of the trademark registration certificate for U.S. Reg. No. 1,783,039) that it owns the mark WAL-MART, which was first used at least as early as July 1, 1962, and registered on July 20, 1993 – as well as the alleged longtime, widespread uses Complainant has made of the WAL-MART mark – it is obvious that Complainant has rights in the WAL-MART mark.

As to whether the Domain Name is identical or confusingly similar to Complainant’s WAL-MART mark, the relevant comparison to be made is with the second-level portion of the Domain Name only (i.e., “walmartjob”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. See, e.g., The Forward Association, Inc., v. Enterprises Unlimited, National Arbitration Forum Case No. FA95491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address.”); see also United States Patent and Trademark Office’s Trademark Manual of Examination Procedures (3d ed.) § 1215.02 (“neither the beginning of the URL (‘http://www.’) nor the TLD have any source-indicating significance”).

The Panel agrees with Complainant that inclusion of the word “job” in the domain name <walmartjob.com> does not distinguish the Domain Name from Complainant’s WAL-MART mark, as previous panels have similarly held in considering this same mark. See, e.g., Wal-Mart Stores, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0620 (<walmartbenfits.com>) (“[t]he finding of confusion is further strengthened by the fact that the word Respondent has combined with WAL-MART has a direct connection to Wal-Mart’s own employee services and its pre-existing website”); Wal-Mart Stores, Inc. v. John Clark, WIPO Case No. D2004-0636 (<walmartsurplus.com>); Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056 (23 domain names); Wal-Mart Stores, Inc. v. mike Flynn, WIPO Case No. D2002-1020 (<walmartpharmacy.com>); and Wal-Mart Stores, Inc. v. Brad Tauer, WIPO Case No. D2000-1076 (<walmartrx.com>).

Therefore, the Panel finds that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Complainant alleges that “Respondent has no rights or legitimate interests in respect of the domain name <walmartjob.com>. To the best of Complainant’s knowledge, Respondent has no rights to any trademark consisting of the terms ‘WAL-MART’ in any country.”

“[A] complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1 (“http://arbiter.wipo.int/domains/search/overview/index.html”).

Accordingly, as a result of Complainant’s allegations and without any evidence of Respondent’s rights or legitimate interests in the Domain Name, the Panel is satisfied that the Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for the purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in paragraph 4(b) of the Policy:

(i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or

(ii) the registrant 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 the registrant has engaged in a pattern of such conduct; or

(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s 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 the registrant’s website or location or of a product or service on the registrant’s website or location.

In this case, Complainant has not alleged with specificity in its Complaint which, if any, of these four factors may exist as evidence of bad faith. Instead, Complainant relies on its allegations that previous registrants of the Domain Name contacted by Complainant used the Domain Name in connection with “paid link farm services,” and on the repeated transfers of the Domain Name. The Panel agrees that both actions – independently and, even more so, collectively – constitute bad faith as required by the Policy.

“Paid link farm services,” sometimes known as “monetized parking pages,” have become an increasingly popular way for domain name registrants to profit from their activity with little effort. In some cases, particularly where the links on such a page are not competitive with or disruptive to a relevant trademark owner, or confusing to visitors, such activity may not violate the Policy. However, where, as here, the links are apparently to competitive websites, especially when there is no indication that the links are not sponsored by or affiliated with the relevant trademark owner, such activity indicates bad faith under the Policy. See Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430 (“Respondent is using the disputed domain name to direct visitors to a search engine that provides sponsored links for businesses in the same field as that of the Complainant”).

Further, repeated transfers of a domain name following a demand letter sent by a trademark owner is also a not uncommon practice by some cybersquatters attempting to evade the law or the Policy. Such a practice has been labeled “cyberflight.” See, e.g., Société Française du Radiotéléphone - SFR v. LaPorte Holdings, WIPO Case No. D2004-0926.

Therefore, the Panel is satisfied that Complainant has proven the third element required by 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 <walmartjob.com> be transferred to Complainant.

Douglas M. Isenberg
Sole Panelist

Dated: September 26, 2005