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Wal-Mart Stores, Inc. v. Modern Limited - CaymanWeb Development, Domain Administrator [2005] GENDND 764 (24 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wal-Mart Stores, Inc. v. Modern Limited - Cayman Web Development, Domain Administrator

Case No. D2005-0322

1. The Parties

The Complainant is Wal-Mart Stores, Inc., Bentonville, Arkansas, United States of America, represented by Ms. Janet F. Satterthwaite, of Venable, LLP, Washington DC, United States of America.

The Respondent is Modern Limited - Cayman Web Development, Domain Administrator, of George Town, Grand Cayman GT, Cayman Islands, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name is <wamart.com> registered with eNom, of Bellevue, Wichita, United States of America.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2005, by email, and on April 1, 2005, in hardcopy. On March 31, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. In its response by email eNom transmitted to the Center its verification response, confirming that the Respondent is listed as the registrant, and also as 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 April 7, 2005. The Center sent the notification by courier both to the Respondent’s address as well as to DomainSponsor, an address provided on the website. Pursuant to Rules, paragraph 5(a), the due date for Response was April 27, 2005. On April 13, 2005, the Center received an email from Domain Sponsor, which advised the Center that they were in receipt of the materials, and had advised the owner of <wamart.com> of the Complaint, and had blocked the domain from their domain parking service. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 29, 2005.

The Center appointed Roberto Bianchi as the sole panelist in this matter on May 10, 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

Because Complainant’s contentions of fact are supported by sufficient documentary evidence, and because Respondent has not rebutted these contentions by means of a response or any other submission in these proceedings, the Panel accepts Complainant’s contentions as true.

Complainant is the world’s largest retailer. Wal-Mart Stores operates a substantial number of retail stores in several countries, and holds trademark and service mark registrations in 46 countries. Among other trademarks Complainant owns US registration No. 1,783,039, registered in July 1993, for the mark WAL-MART, for use in retail department store services. This mark is based on first use since July 1, 1962.

The disputed domain name <wamart.com> was registered on June 11, 2001, with eNom.

5. Parties’ Contentions

A. Complainant

Complainant contends the following:

- The second level domain name <wamart.com> is confusingly similar to Complainant’s mark; WAL-MART is a famous mark, which enhances the likelihood of confusion. The domain name is only one letter apart for the mark. By using this mark Complainant engages in intensive advertising of its services and merchandise.

- Respondent lacks rights or legitimate interests in the domain name. Respondent was not authorized by Complainant to use the domain name, which is likely to be confused with Complainant’s mark. Respondent has no rights in “wamart” or in “WAL-MART” in any country.

- The domain name <wamart.com> was registered in bad faith, because Respondent had knowledge that the Complainant held rights in and to its mark WAL-MART. Respondent is clearly partaking in typosquatting. Respondent registered the domain name and used it to list links to companies that offer goods and services competitive to those offered by Complainant. For example, the “furniture” link leads to a link farm page with links to other furniture retailers. By registering <wamart.com> Respondent was deliberately trying to capture web traffic intended for “www.walmart.com”. Furthermore Respondent has enrolled as an affiliate with a company, DomainSponsor, that pays money to websites that direct traffic to other websites. Services such as DomainSponsor are creating incentives for an increase in cybersquatting, by making it simple and profitable. The domain name was acquired in bad faith with the purpose of diverting Complainant’s customers to Respondent’s site. Respondent’s use of the domain name tarnishes Complainant’s mark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions, and is therefore in default.

6. Discussion and Findings

This Panel has jurisdiction to decide the present dispute because the registrant of the domain name – the Respondent in this proceeding - at the time of registration accepted the dispute resolution policy of the Registrar eNom, that is the Policy. Policy paragraph 4(a) provides that the Complainant must prove each of the following three circumstances:

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

B. Respondent lacks rights or legitimate interests in respect of the domain name; and

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

A. Identical or Confusingly Similar

Complainant has evidenced that it has rights in and to the famous WAL-MART mark. The fact that in the domain name the letter “L” is missing does not suffice to distinguish it from the famous mark. See Time Warner Entertainment Company, L.P., and Hanna-Barbera Productions, Inc. v. John Zuccarini, Cupcake Patrol, and The Cupcake Patrol, WIPO Case No. D2001-0184, where the panel found that “[i]n registering the disputed domain names <harypotter.com>, <looneytoones.com>, and <scobydoo.com>, the Respondents have deliberately misspelled the marks, but only slightly: the original mark remains almost intact, both visually, phonetically and orthographically. Thus the disputed domain names are confusingly similar to the Complainants’ marks in violation of the Policy at 4(a)(i).”

Nor can the absence of the hyphen in the domain name suffice to distinguish it from Complainant’s mark, which includes a hyphen. See Wal-Mart Stores, Inc. v. Brad Tauer, WIPO Case No. D2000-1076, finding that “[t]he deletion of a hyphen […] has little, if any, legal significance”. Furthermore Complainant’s own main website is located at ”www.walmart.com”, where the second level domain name also lacks the hyphen. In sum this appears to be a clear case of “typosquatting”, or “typo-piracy”, as it was called in Neuberger Berman Inc. v. Alfred Jacobsen, WIPO Case No. D2000-0323, where the acting panel found that “[c] omplainant has produced convincing evidence regarding the practice of “typo-piracy” whereby bad faith operators deliberately misspell a famous […] trademark in hopes of luring search engines to their site in conjunction with searches for the famous name website.”

The Panel considers that the first element of the Policy has been proved.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights to or legitimate interests in the domain name. Respondent failed to allege or evidence any facts in support of an inference that it might have at least some rights or interests to the domain name.

On May 18, 2005, by using a browser this Panel tried to connect its computer to Respondent’s website under the disputed domain name at “http://www.wamart.com”. The only result of this attempt was a wholly blank page, but this does not make Complainant’s assertion less credible, that Respondent was affiliated with DomainSponsor, and that through DomainSponsor’s systems Internet users were re-directed to the websites of several competitors of Complainant. Complainant supported this contention by enclosing as Annex I to the Complaint a website printout corresponding to Respondent’s website. The printout shows that Domainsponsor.com links Respondent’s website to various other links. This cannot be regarded as evidence of rights or legitimate interests in the domain name. The Panel finds that Complainant has adequately proved the second element of the Policy.

C. Registered and Used in Bad Faith

WAL-MART is a famous mark. See for instance Wal-Mart Stores, Inc. v. Urfin Juice, WIPO Case No. D2004-0028, where the panel considered the “WAL-MART” mark to be “famous worldwide”. It would be highly unlikely that Respondent, while registering <wamart.com> as domain name, did not know of Complainant’s mark. The obviously intentional omission of the letter “L” by Respondent created a domain name that conveniently imitates Complainant’s mark. Because of this, Complainant’s actual or potential customers wishing to connect to “www.walmart.com” are connected to another website when they fail to type the “L” letter, i.e. they are being led to third parties’ websites, even to competitors of Complainant, for Respondent’s profit. This use of the website under the domain name at issue – consisting of parking the domain name with DomainSponsor and linking the website or at least some of the links therein to websites of competitors to the Complainant - shows bad faith in that Respondent “registered the domain name primarily for the purpose of disrupting the business of a competitor” (Policy, paragraph 4(b)(iii)), and “by using the domain name […] intentionally attempt[ing] to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [its] web site or location or of a product or service on [its] web site or location” (Policy, paragraph 4(b)(iv)).

According to the printout of “http://www.domainsponsor.com/whatis_how.html” dated March 29, 2005, enclosed as Annex I to the Complaint, DomainSponsor apparently pays money to affiliated websites when they are apt to derive Internet traffic to third parties’ websites, by using “Pay Per Click as the primary means of generating revenue”. This fact strongly supports Complainant’s contention that Respondent is using the Domain Name for the purpose of making a profit. As the acting panel said in Mizuno Kabushiki Kaisha Corporation and Mizuno USA, Inc. v. Henry Chan, WIPO Case No. D2004-0255, “[i]n the current proceeding, the Complainant has raised important arguments and has filed significant evidence, in order to show that Respondent is using the Domain Name for the purpose of making a profit. In principle, the fact that Respondent has used the website for a number of links cannot be necessarily conclusive of the foregoing. However, the fact that Respondent might be doing business with “DomainSponsor.com” should definitively shift that first approach by at least inferring that Respondent is pursuing a commercial gain. Under that rationale, it would, in the end, be possible to determine the transgression to paragraph 4(b)(iv) of the Policy.”

The present case also closely ressembles Southern Communications Services, Inc. d/b/a Southern LINC v. Henry Chan, WIPO Case No. D2004-0214, where the panel found that “the Respondent incorporates the Complainant’s uncontestable trademark and service mark in the disputed domain name, and intentionally drops the letter “N” from the SOUTHERN LINC mark, in a conduct known as typosquatting. It is the Panel’s opinion that the Respondent registered the domain name southerlinc.com, with full previous knowledge of the Complainant’s rights over the SOUTHERN LINC mark, and with the purpose of attracting Internet users looking for the Complainant’s official website, to the Respondent’s website, creating a likelihood of confusion with the Complainant and misappropriating the Complainant’s prestige. Due to the nature of the Complainant’s mark, it is not likely that the Respondent chose the particular domain name coincidentally without prior knowledge of the Complainant’s rights over the mark. To the contrary, the Panel concludes that the Respondent registered and used the domain name being fully aware of the existence of the Complainant and its marks, and hence, the Respondent decided to use the domain name in connection with a website offering links and information regarding the telephone business, which is the same business of the Complainant. No other explanation can be found, considering that the Respondent registered the domain name in conflict many years after the Complainant began using it in commerce, and also many years after the Complainant registered its marks before the United States Patent and Trademark Office.”

Considering the above, the Panel concludes that the domain name was registered and is being used 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 <wamart.com> be transferred to the Complainant.

Roberto Bianchi
Sole Panelist

Dated: May 24, 2005