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Dolce International Holdings, Inc. v. Dolce Hotels [2005] GENDND 459 (21 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wal-Mart Stores, Inc. and Mrs. Helen Walton v. Bestinfo/David Webb

Case No. D2005-0086

1. The Parties

The Complainants are Wal-Mart Stores, Inc. and Mrs. Helen Walton of Bentonville, Arkansas, United States of America, represented by Venable, LLP of Washington, D.C., United States of America. Unless hereinafter specifically indicated to the contrary, the Panel will refer to the Complainant’s jointly and severally as “Complainant.”

The Respondent is Bestinfo/David Webb of Richardson Texas, United States of America.

2. The Domain Name and Registrar

The disputed domain name <samwalton.com> is registered with R&K Global Business Services, Inc., d/b/a 000Domains.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2005. On January 26, 2005, the Center transmitted by email to R&K Global Business Services, Inc. d/b/a 000Domains.com a request for registrar verification in connection with the domain name at issue. On January 26, 2005, R&K Global Business Services, Inc. d/b/a 000Domains.com 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 February 10, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 2, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 4, 2005.

The Center appointed M. Scott Donahey as the sole panelist in this matter on March 11, 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 Wal-Mart Stores, Inc. is the world’s largest retailer. Complaint, Annex C. The late Sam Walton was its founder and CEO. He has been the subject of at least six books and many articles. Complaint, Annexes D, E, and F. The University of Arkansas has named its business school after Mr. Walton. Complaint, Annex G. Prior to his death Mr. Walton was on the cover of Fortune Magazine, and he has received many posthumous awards and honors.

Complainant Wal-Mart Stores, Inc. uses SAM WALTON as a common law trademark for toy trucks that it markets, in connection with its “Sam’s Club” subsidiary which operates 500 membership retail stores in the United States, and in connection with its SAM’S CHOICE line of groceries, on which Sam Walton’s name, business philosophy, and signature appear. Complaint, Annexes J, K, and L.

Respondent registered the domain name at issue on August 22, 2004. Complaint, Annex A. Respondent uses the domain name at issue to resolve to a web site which serves as a link farm service. Complaint, Annex O. The web site also contains links to Complainant’s web sites.

Respondent has registered numerous domain names which are the trademarks or service marks of others. Complaint, Annex N.

On November 19, 2004, Complainant sent Respondent a cease and desist letter. Respondent did not reply to this letter. Complaint, Annex P.

5. Parties’ Contentions

A. Complainant

Complainant contends that the domain name at issue is confusingly similar or identical to a service mark or trademark in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that 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

Procedural Issue as to Standing

Complainant argues that during his lifetime Sam Walton acquired a common law service mark in his name. Complainant cites several cases in which a prominent businessperson has acquired a common law mark in his name. The Panel has no doubt that Mr. Walton acquired a common law service mark in his name during his lifetime. However, the essential difference between the cases cited by Complainant and the present case is that the common law mark holder was the Complainant in the cited cases. In the instant case, Mr. Walton is deceased. Thus, it is necessary for the Panel to determine whether the rights in the mark passed by will or by operation of law, and, if so, to whom.

Complainant Mrs. Helen Walton is the widow of the late Sam Walton. When a Panel is asked to consider the use of the name of a deceased personality or the common law mark rights that may have been created during the life of that personality, it is necessary to determine under the applicable law who has rights to the use of the deceased’s name or whether the common law trademark rights were effectively passed by a bequest. In the latter case, this can be done by examining the deceased’s will. See The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616 (determining that Albert Einstein did not will to the Complainant his common law trademark rights, if any existed). In the former case, one would look to the law of the deceased’s residence. See Estate of Stanley Getz aka Stan Getz v. Peter Vogel, WIPO Case No. D2000-0773 (finding that California Civil Code Section 3344.1 provided that the use of the name of a deceased personality passes through his estate and could not be used absent the express consent of his heirs). The Panel assumes that the law of the deceased’s residence would be the laws of the State of Arkansas. However, no showing has been made either as to what the applicable law or as to what Mr. Walton’s will, if any, provides. Without such a showing, the Panel cannot make a determination that Mrs. Helen Walton has standing to bring this action. When the Panel analyses the first of the three elements that a Complainant must prove, the Panel will proceed to evaluate whether Wal-Mart Stores, Inc., through it use of SAM WALTON, has a common law trademark in the mark SAM WALTON.

Substantive Issues to be Determined

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,

2) that the Respondent has no rights or legitimate interests in respect of the domain name; and,

3) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that Complainant Wal-Mart Stores, Inc. has common law rights in the trademark SAM WALTON by virtue of its prominent and continuous use in conjunction with its SAM’S CHOICE brand of products. Because Respondent’s domain name incorporates Complainant’s trademark, the Panel finds that the domain name at issue is confusingly similar to the trademark in which Complainant has rights. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.

B. Rights or Legitimate Interests

Complainant has alleged that Respondent has no rights or legitimate interests in respect of the domain name at issue. Respondent has failed to respond. The Panel is entitled to infer that Respondent has no rights or legitimate interests in respect of the domain name at issue. Parfums Christian Dior v. QTR Corporation, WIPO Case No. D2000-0023.

C. Registered and Used in Bad Faith

When the Respondent registered the domain name at issue, Respondent had to know of the fame Complainant’s name had achieved in the business world and must have assumed that Complainant had acquired common law rights in the mark SAM WALTON. Respondent has used the domain name at issue to resolve to a web site at which a link farm service operates. Respondent undoubtedly receives payment when a user clicks through to an advertiser’s web site. The web site includes a link to Complainant Wal-Mart Stores, Inc.’s web site. Respondent failed to reply to Complainant’s demand letter and failed to reply to the Complaint. The Panel considers such facts to come within the indicia of bad faith, as analyzed by the Panel in Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Accordingly, the Panel finds that Respondent has registered and is using the domain name at issue in bad faith.

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, <samwalton.com> be transferred to Complainant Was-Mart Stores, Inc.

M. Scott Donahey
Sole Panelist

Dated: March 25, 2005